Common use of Licensor Patent Rights Clause in Contracts

Licensor Patent Rights. Licensor shall, within 10 Business Days of learning of such event, inform Licensee of any request for, or filing or declaration of, any interference, opposition, invalidation, 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, reissue or reexamination, Licensor shall have the first right (in its discretion) to initiate, prosecute and/or respond, to such action or proceeding, provided that Licensor shall consult with Licensee with respect to any such action or proceeding and shall not unreasonably reject comments of Licensee. In addition, all strategic decisions shall be made by the consensus of Licensor and Licensee. In the event that Licensor elects to initiate, prosecute and/or respond to any interference, opposition, invalidation, reexamination, or reissue proceeding relating to any Licensor Patent Right, the out-of-pocket costs, fees and expenses thereof shall be reimbursed (and upon request by Licensor, prepaid at least 30 days in advance) by Licensee in the manner comparable to the provisions of the first paragraph of Section 8.2(a), mutatis mutandis. Licensor shall not settle any interference, opposition, invalidation, reissue or reexamination action or proceeding relating to any Licensor Patent Right 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 shall promptly inform Licensee in the event that Licensor elects not to initiate, prosecute and/or respond to any interference, opposition, invalidation, reissue or reexamination relating to any claim in Licensor Patent Rights, and in such case, Licensee shall have the right to do so (in Licensee’s discretion), at its cost and expense. Licensee shall not settle any interference, opposition, invalidation, reissue or reexamination action or proceeding relating to any claim in Licensor Patent Rights 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.

Licensor Patent Rights. Licensor LICENSEE shall, within 10 Business Days of learning of such event, inform Licensee 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, Licensor LICENSEE shall have the first right (in its discretion) to initiate, prosecute and/or respond, to such action or proceeding, provided that Licensor LICENSEE shall consult with Licensee LICENSOR with respect to any such action or proceeding and shall not unreasonably reject comments of LicenseeLICENSOR. In addition, all strategic decisions shall be made by the consensus of Licensor LICENSEE and LicenseeLICENSOR. In the event that Licensor 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-out- of-pocket costs, fees and expenses thereof shall be reimbursed (and upon request by Licensor, prepaid at least 30 days in advance) by Licensee in the manner comparable to the provisions responsibility of the first paragraph of Section 8.2(a), mutatis mutandisLICENSEE. Licensor 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 LicenseeLICENSOR, which consent shall not be unreasonably withheld. Licensor LICENSEE shall keep Licensee LICENSOR informed of developments in any such action or proceeding involving any Licensor Patent Right. Licensor LICENSEE shall promptly inform Licensee LICENSOR in the event that Licensor 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, Licensee LICENSOR shall have the right to do so (in LicenseeLICENSOR’s discretion), at its cost and expense. Licensee 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 LicensorLICENSEE, which consent shall not be unreasonably withheld. Licensee LICENSOR shall keep Licensor LICENSEE informed of developments in any such action or proceeding involving any Licensor Patent Right.

Licensor Patent Rights. Subject to the further terms and conditions hereof, Licensor shallshall have the sole right to control the preparation, within 10 filing, prosecution and maintenance of Licensor Patent Rights in all countries in the Territory where patent applications have been filed by or on behalf of Licensor as of the Effective Date using legal counsel acceptable to and approved by Licensee and shall use Commercially Reasonable Efforts to pursue such preparation, filing, prosecution and maintenance, provided that except to the extent Licensee has notified Licensor that it agrees to abandon any portion of such Licensor Patent Rights, Licensee shall be obligated to reimburse Licensor for all past (including pre-Effective Date), present and future reasonable documented out-of-pocket costs, including the fees and expenses of outside legal counsel, incurred by Licensor and its Affiliates in such preparation, filing, prosecution and maintenance. For the sake of clarity, any such agreement by Licensee to abandon any portion of Licensor Patent Rights (i) may for purposes hereof become effective only on a date (the “Abandonment Effective Date”) that is (A) pursuant to notice given by Licensee after the Effective Date of this Agreement and (B) no earlier than sixty (60) Business Days of learning of such eventafter Licensee’s said notice thereof; (ii) will not erase or reduce Licensee’s aforementioned cost reimbursement obligation for any costs, inform Licensee of any request for, fees or filing or declaration of, any interference, opposition, invalidation, reissue or reexamination expenses relating to claims the abandoned portion of Licensor Patent Rights but arising before the Abandonment Effective Date (whether or not actually paid by that date); and (iii) will not erase or reduce Licensee’s aforementioned cost reimbursement obligation for any costs, fees or expenses arising after the Abandonment Effective Date in connection with any portion of the Licensor Patent Rights issued or pending as that are not the subject of Licensee’s said agreement to abandon. In the first instance, Licensee will pay to Licensor in cash, within five (5) Business Days of the Effective Date, the amount of $[***], consisting of (a) $[***] paid by Licensee and its Affiliates in filing and related costs, fees and expenses to date (including, in the case of foreign countries, local counsel fees and expenses) in each of the United States, Canada, Mexico, the European Patent Office (executive arm of the European Patent Organisation), Japan and China, plus (b) $[***] accrued and unpaid fees and expenses of outside legal counsel. With respect to Licensor shall pay outside legal counsel $[***] within ten (10) Business Days of receiving said payment of $[***] and provide Licensee with proof of such payment. In addition, upon Licensor’s written request, Licensee shall periodically pre-pay any such out-of-pocket expenses, subject to reconciliation to actual costs, against a budget prepared by Licensor and approved by Licensee; provided, however, that if, notwithstanding a request forfrom Licensor, Licensee fails for any reason to prepay by at least 30 days any such costs, fees or filing expenses of preparation, filing, prosecution or declaration ofmaintenance, any interference, opposition, invalidation, reissue or reexamination, then Licensee’s failure to so prepay will relieve Licensor shall have of the first right obligation (in its discretionbut will not extinguish Licensor’s right) to initiateproceed with the said preparation, prosecute and/or respondfiling, prosecution or maintenance and advance the costs of so doing; and provided, further, that Licensor’s so proceeding will not relieve Licensee of the obligation to such action or proceeding, provided that timely reimburse Licensor for the full cost thereof upon Licensor’s subsequent request. Licensor shall consult with Licensee with respect as to the preparation, filing, prosecution and maintenance of Licensor Patent Rights reasonably prior to any such deadline or action or proceeding with any patent office, and shall furnish to Licensee copies of all relevant drafts and documents reasonably in advance of such consultation. Licensor shall keep Licensee reasonably informed of progress with regard to the preparation, filing, prosecution and maintenance of Licensor Patent Rights and shall provide to Licensee copies of all material patent office submissions within a reasonable amount of time following submission thereof by Licensor. Licensor agrees not to unreasonably reject comments of Licensee. In addition, Licensee and that all strategic decisions shall be made by the consensus of Licensor and with Licensee. In the event that Licensor elects desires to initiate, prosecute and/or respond to any interference, opposition, invalidation, reexamination, abandon or reissue proceeding relating to cease prosecution or maintenance of any Licensor Patent Right, the out-of-pocket costs, fees and expenses thereof Licensor shall provide written notice to Licensee of such intention to abandon promptly after Licensor makes such determination (which notice shall be reimbursed (and upon request by Licensor, prepaid at least 30 given no later than 60 days in advance) by Licensee in the manner comparable prior to the provisions of the first paragraph of Section 8.2(a), mutatis mutandis. Licensor shall not settle next deadline for any interference, opposition, invalidation, reissue or reexamination action or proceeding relating that must be taken with respect to any such Licensor Patent Right without in the prior relevant patent office). In such case, upon receipt of a written consent request by Licensee to assume responsibility for prosecution and maintenance 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 shall promptly inform allow Licensee in the event that Licensor elects not at its sole cost and expense and by counsel of its own choice to initiate, prosecute and/or respond to any interference, opposition, invalidation, reissue or reexamination relating to any claim in Licensor Patent Rights, and in assume such caseresponsibility. In addition, Licensee shall have the right sole right, but not the obligation, to do so (in Licensee’s discretion)control the preparation, at its cost filing, prosecution and expense. Licensee shall not settle any interference, opposition, invalidation, reissue or reexamination action or proceeding relating to any claim in maintenance of Licensor Patent Rights without in all countries of the prior written consent Territory where patent filings are not pending as of Licensorthe Effective Date, which consent shall not be unreasonably withheld. Licensee shall keep Licensor informed it being agreed for purposes of developments this sentence that the application pending in any such action or proceeding involving any Licensor the European Patent RightOffice is deemed pending in each and every member state of the European Patent Organisation.

Licensor Patent Rights. Licensor shallSubject to the further terms and conditions hereof, within 10 Business Days LICENSEE, during the term of learning this Agreement, by LICENSEE’s sole expense and by counsel of such eventits choice, inform Licensee will be responsible for the preparation, filing, prosecution and maintenance of any request for, or filing or declaration of, any interference, opposition, invalidation, reissue or reexamination relating to claims of the Licensor Patent Rights issued in all countries in the Territory where patent applications have been filed by or pending on behalf of LICENSOR as of the Effective Date and shall use Commercially Reasonable Efforts to pursue such preparation, filing, prosecution and maintenance, whereby LICENSEE: (a) shall keep LICENSOR informed in writing of all material actions taken in this regard to permit LICENSOR an opportunity to review and comment thereon; (b) shall consider in good faith, take into account and implement the reasonable comments made by LICENSOR; (c) shall not abandon prosecution of any pending patent application or fail to maintain issued patents without providing LICENSOR the opportunity to assume control of prosecution and maintenance of the Patent Rights as provided below; and (d) shall notify LICENSOR no less than thirty (30) business days where reasonably practical prior to any deadline for action set forth by the US Patent and Trademark Office or its foreign counterparts ( a “Patent Office”) and promptly if not reasonably practical. In the event LICENSEE desires to abandon prosecution or maintenance of any Patent Rights filed in a particular country, LICENSEE shall provide LICENSOR with no less than forty-five (45) days written notice prior to the Patent Office deadline for action in which LICENSEE shall document: (i) the patent/patent application number; (ii) the patent/patent application title; (iii) the country in which such patent/patent application is issued/pending. Unless otherwise agreed by the Parties, upon LICENSOR’s receipt of such written notice, any and all exclusive rights granted to LICENSEE by LICENSOR to said patent/patent application in said country shall promptly terminate. For the sake of clarity, any such agreement by LICENSEE to abandon any portion of Licensor Patent Rights (i) may for purposes hereof become effective only on a date (the “Abandonment Effective Date”) that is (A) pursuant to notice given by LICENSEE after the Effective Date of this Agreement and (B) no earlier than sixty (60) Business Days after LICENSEE’s said notice thereof. With For clarity, upon such termination of rights under such patent/patent application, LICENSOR shall be free to license, sell, assign, dispose of, and/or take any other action with respect to any such request forthe rights to said patent/patent application at its sole and absolute discretion and with no obligation to LICENSEE, or filing or declaration of, any interference, opposition, invalidation, reissue or reexamination, Licensor except that LICENSEE shall have the first non-exclusive right to practice under any dominating patents abandoned by LICENSEE. LICENSOR shall provide to LICENSEE reasonable assistance in the prosecution, maintenance and enforcement of the Patent Rights, at LICENSEE’s request and expense. LICENSEE shall diligently prosecute and maintain the Patent Rights using counsel of its choice, which counsel shall be reasonably acceptable to LICENSOR. LICENSEE shall provide LICENSOR with copies of all patent applications amendments, and other filings with the United States Patent and Trademark Office and foreign patent offices (in its discretion) “Patent Offices”). LICENSEE will also provide LICENSOR with copies of office actions and other communications received by LICENSEE from the Patent Offices relating to initiate, prosecute and/or respond, the Patent Rights. LICENSOR agrees to keep such action or proceeding, provided that Licensor information confidential. LICENSEE will provide LICENSOR with a reasonable opportunity for LICENSOR to review and comment on correspondence with Patent Offices. LICENSEE shall consult with Licensee with respect LICENSOR as to the preparation, filing, prosecution and maintenance of Licensor Patent Rights reasonably prior to any such deadline or action or proceeding with any patent office, and shall furnish to LICENSOR copies of all relevant drafts and documents reasonably in advance of such consultation. LICENSEE shall keep LICENSOR reasonably informed of progress with regard to the preparation, filing, prosecution and maintenance of Licensor Patent Rights and shall provide to LICENSOR copies of all material patent office submissions within a reasonable amount of time following submission thereof by LICENSEE. XXXXXXXX agrees not to unreasonably reject comments of Licensee. In addition, LICENSOR and that all strategic decisions shall be made by the consensus of Licensor and Licensee. In the event that Licensor elects to initiate, prosecute and/or respond to any interference, opposition, invalidation, reexamination, or reissue proceeding relating to any Licensor Patent Right, the out-of-pocket costs, fees and expenses thereof shall be reimbursed (and upon request by Licensor, prepaid at least 30 days in advance) by Licensee in the manner comparable to the provisions of the first paragraph of Section 8.2(a), mutatis mutandis. Licensor shall not settle any interference, opposition, invalidation, reissue or reexamination action or proceeding relating to any Licensor Patent Right 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 shall promptly inform Licensee in the event that Licensor elects not to initiate, prosecute and/or respond to any interference, opposition, invalidation, reissue or reexamination relating to any claim in Licensor Patent Rights, and in such case, Licensee shall have the right to do so (in Licensee’s discretion), at its cost and expense. Licensee shall not settle any interference, opposition, invalidation, reissue or reexamination action or proceeding relating to any claim in Licensor Patent Rights 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 Rightwith LICENSOR.