Patent Application Filings during the Term of this Agreement. 4.2.1 University retains the sole and exclusive right to file or otherwise prosecute Licensed Patents and University shall not grant any right to file or otherwise prosecute Licensed Patents to any other Third Party or licensee of the Licensed Patents including, without limitation, Third Party A and Third Party B. As set out in Section A4 of Exhibit A, Company shall pay, or reimburse University for paying, a pro rata share of all reasonable and necessary costs (including attorneys’ and application fees) incurred prior to, on, or after the Effective Date to apply for, prosecute, enforce, and maintain Licensed Patents including the costs of interferences, oppositions, re-examinations, and patent litigation. 4.2.2 University, in consultation with Company, shall determine in which countries University will file, or cause to be filed, Licensed Patents. Subject to Company’s compliance with Section A.4, (i) University shall request patent counsel to inform Company of the status of the prosecution of the Licensed Patents, including delivering to Company written communications from the patent office, (ii) University shall consult with the Company on the prosecution of the Licensed Patents, and (iii) Company’s suggestions and requests regarding patent prosecution, including the countries in which Licensed Patents are filed, will be reasonably considered and included unless University reasonably deems such action(s) to be materially adverse to University’s rights to the Licensed Patents. In no event shall Company file a patent application for a Licensed Patent where all of the inventors are under University policy obligated to assign their rights in such patent application to University. In the event that University inventors and Company inventors invent an invention jointly (as determined by U.S. patent laws), University and Company shall discuss in good faith whether and how to proceed with respect to any corresponding patent applications. 4.2.3 No provision of this Agreement limits, conditions, or otherwise affects University’s right to prosecute Licensed Patents in any country.
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Samples: Patent License Agreement (Genocea Biosciences, Inc.), Patent License Agreement (Genocea Biosciences, Inc.), Patent License Agreement (Genocea Biosciences, Inc.)
Patent Application Filings during the Term of this Agreement. 4.2.1 University retains 4.1.1. As of and after the sole and exclusive right to file or otherwise prosecute Licensed Patents and Effective Date, the University shall not grant any right use its reasonable efforts to file or otherwise prosecute diligently and expeditiously cause Licensed Patents to any other Third Party or licensee of be issued with the Licensed Patents includingbroadest, without limitation, Third Party A and Third Party B. As set out reasonably attainable claim coverage in Section A4 of Exhibit A, Company shall pay, or reimburse University for paying, a pro rata share of all reasonable and necessary costs (including attorneys’ and application fees) incurred prior to, on, or after the Effective Date to apply for, prosecute, enforce, and maintain Licensed Patents including applicable countries; the costs of interferences, oppositions, re-examinations, and patent litigation.
4.2.2 University, in consultation with Company, shall determine in which countries University will file, or cause to be filed, Licensed Patents. Subject to Company’s compliance with Section A.4, (i) University shall request patent counsel to consult with and inform the Company promptly of the status of the prosecution of the Licensed PatentsPatent Applications, including delivering to the Company pertinent notices, written and oral communications from the patent officewith governmental officials, (ii) University and documents, and shall consult with the Company on the prosecution of the Licensed Patents, Patent Applications; and (iii) Company’s suggestions and requests regarding patent prosecutionthe Company shall bear all costs, including the countries in which Licensed Patents are filedapplication and attorneys’ fees, will be reasonably considered of filing and included unless University reasonably deems prosecuting such action(s) to be materially adverse to University’s rights to the Licensed Patents. In no event shall Company file a patent application for Patent Applications and, if a Licensed Patent where all is issued during the term of this Agreement, of maintaining it.
4.1.2. Following the Effective Date, the Company or its designee will be permitted to review/edit and make recommendations for changes regarding the preparation, filing, prosecution and maintenance of the inventors Patent Applications, which the University shall not unreasonably refuse. In connection therewith the University agrees to: (i) use patent counsel reasonably acceptable to the Company; (ii) consult with and keep the Company reasonably informed with respect to such activities including providing the Company a reasonable opportunity to review and comment on all proposed submissions to patent offices before submission. Further, if the USPTO or a foreign counterpart thereof issues a restriction requirement or foreign equivalent thereof requiring the election of one or more genes to be prosecuted, the Company shall have the right to designate which one or more genes are under University policy obligated to assign their rights in be prosecuted. The Company shall be responsible for reasonable costs associated with such preparation, filing, and prosecution with the exception of new patent application to applications requested solely by the University. For clarity, the University shall have the right to control the filing, preparation, prosecution and maintenance of the Licensed Patents and the Patent Applications; provided, however, if the Company elects to not pay for the filing, preparation, prosecution or maintenance or any Patent Application or Licensed Patent or pay any fee related thereto, the Company shall promptly notify the University of such election, but in no case later than sixty (60) days prior to any required action relating to the filing, preparation, prosecution or maintenance of such Patent Application or Licensed Patent. In such event, the event that University inventors and Company inventors invent an invention jointly (as determined by U.S. patent laws)shall have the right, University at its option, to control the filing, preparation, prosecution and/or maintenance of any such Patent Application or Licensed Patent at its own expense and Company shall discuss in good faith whether and how to proceed with respect to any corresponding patent applications.
4.2.3 No provision of have no rights or licenses under this Agreement limits, conditions, under such Patent Applications or otherwise affects University’s right to prosecute Licensed Patents in any countryPatent.
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