Common use of Patent Applications and Costs Clause in Contracts

Patent Applications and Costs. 8.3.1 Each party will promptly disclose to the other party in writing any Subject Invention that it becomes aware of. 8.3.2 Sponsor, in consultation with University, will have the right to control the preparation, filing, and prosecution of each patent application covering a Subject Invention. Sponsor will have three (3) months from receipt of an invention disclosure from University to notify University whether it desires to file a patent application on the disclosed Subject Invention (“Subject Invention Review Period”). If Sponsor files, then Sponsor will diligently pursue filing of the patent application in the name of University with respect to University Subject Inventions and in the name of both University and Sponsor in the case of Joint Subject Inventions. Sponsor will have decision authority in preparation, filing, and prosecution of each patent application that is specific to a Subject Invention and will keep University’s Office for Technology Commercialization informed as to all material matters relevant to the patent prosecution process and decision matters, and the Sponsor will give due consideration to any recommendations made by the University concerning the patent prosecution matters. Sponsor will provide a copy of the draft application and responses to office actions to the University and a reasonable opportunity to review and provide comments on the application and office actions. Further, Sponsor will provide, or direct outside patent counsel to provide, University with all serial numbers and filing dates, together with copies of all applications and patents that issue therefrom, including copies of all office actions, responses and all other substantive communications to and from the U.S. Patent and Trademark Office and the patent offices in any other jurisdictions. Sponsor will be responsible for the full expense of Subject Invention patent application and prosecution. 8.3.3 If Sponsor decides (a) not to prepare, file, or prosecute patent applications specific to a Subject Invention within the Subject Invention Review Period, (b) not to file a patent application in a particular jurisdiction, (c) to discontinue prosecution of a pending application or a particular set of claims of a patent application, or (d) not to pay any required fee to maintain a pending patent application or an issued patent, Sponsor will promptly (but in no event less than 30 days before an action is required) notify University of its decision. In such case, University will have the right to file, prosecute, and maintain patent or patent application, or to file an application directed to the discontinued claim set, at its sole discretion and expense and without further obligation to Sponsor.

Patent Applications and Costs. 8.3.1 Each party will shall promptly disclose to the other party in writing any Subject Invention of which that it party becomes aware ofduring the Term or afterwards. 8.3.2 Sponsor, in consultation with University, will shall have the right to control the preparation, filing, and prosecution of each patent application covering that is specific to a Subject Invention. Sponsor will shall have three (3) months from receipt of an invention disclosure from University to notify University whether it desires to file a patent application on the disclosed Subject Invention (“Subject Invention Review Period”). If Sponsor files, then Sponsor will shall diligently pursue filing of the patent application in the name of University with respect to University Subject Inventions and in the name of both University and Sponsor in the case of Joint Subject Inventions. Although Sponsor will shall have the ultimate decision authority in preparation, filing, and prosecution of each patent application that is specific to a Subject Invention and will Invention, Sponsor shall keep University’s Office office for Technology Commercialization informed as to all material matters relevant to the patent prosecution process and decision mattersmatters at xxxxxxxxx@xxx.xxx, and the Sponsor will shall give due consideration to any recommendations made by the University concerning the patent prosecution matters. Sponsor and Sponsor's counsel will not contact University inventors regarding drafting and prosecution without first contacting University's office for Technology Commercialization Without limiting the foregoing, Sponsor shall provide a copy of the draft application and responses to office actions to the University and a reasonable an opportunity to review and provide comments on the application and office actionssuch application. Further, Sponsor will shall provide, or direct outside patent counsel to provide, University with all serial numbers and filing dates, together with copies of all applications and patents that issue therefrom, including copies of all office actions, responses and all other substantive communications to and from the U.S. Patent and Trademark Office and the patent offices in any other jurisdictionsjurisdictions to xxxxxxxxx@xxx.xxx. Sponsor will shall be responsible for the full expense of Subject Invention patent application and prosecution. 8.3.3 If Sponsor decides (ai) not to prepare, file, or prosecute patent applications specific to a Subject Invention within the Subject Invention Review Period, (bii) not to file a patent an application in a particular jurisdiction, (ciii) to discontinue prosecution of a pending application or a particular set of claims of a patent application, which set is specific to a Subject Invention, or (div) not to pay any required fee to maintain a pending patent application or an issued patent, Sponsor will shall promptly (but in no event less than 30 days before an action is required) notify University of its decision. In such case, University will shall have the right to file, prosecute, and maintain said patent or patent application, or to file an application directed to the discontinued that abandoned claim set, at its sole discretion and expense and without further obligation to Sponsor.

Patent Applications and Costs. 8.3.1 Each party will shall promptly disclose to the other party in writing any Subject Invention of which that it party becomes aware ofduring the Term or afterwards. 8.3.2 Sponsor, in consultation with University, will shall have the right to control the preparation, filing, and prosecution of each patent application covering that is specific to a Subject Invention. Sponsor will shall have three (3) months from receipt of an invention disclosure from University to notify University whether it desires to file a patent application on the disclosed Subject Invention (“Subject Invention Review Period”). If Sponsor files, then Sponsor will shall diligently pursue filing of the patent application in the name of University with respect to University Subject Inventions and in the name of both University and Sponsor in the case of Joint Subject Inventions. Although Sponsor will shall have the ultimate decision authority in preparation, filing, and prosecution of each patent application that is specific to a Subject Invention and will Invention, Sponsor shall keep University’s Office for Technology Commercialization informed as to all material matters relevant to the patent prosecution process and decision matters, and the Sponsor will shall give due consideration to any recommendations made by the University concerning the patent prosecution matters. Without limiting the foregoing, Sponsor will shall provide a copy of the draft application and responses to office actions to the University and a reasonable an opportunity to review and provide comments on the application and office actionssuch application. Further, Sponsor will shall provide, or direct outside patent counsel to provide, University with all serial numbers and filing dates, together with copies of all applications and patents that issue therefrom, including copies of all office actions, responses and all other substantive communications to and from the U.S. Patent and Trademark Office and the patent offices in any other jurisdictions. Sponsor will shall be responsible for the full expense of Subject Invention patent application and prosecution. 8.3.3 If Sponsor decides (ai) not to prepare, file, or prosecute patent applications specific to a Subject Invention within the Subject Invention Review Period, (bii) not to file a patent an application in a particular jurisdiction, (ciii) to discontinue prosecution of a pending application or a particular set of claims of a patent application, which set is specific to a Subject Invention, or (div) not to pay any required fee to maintain a pending patent application or an issued patent, Sponsor will shall promptly (but in no event less than 30 days before an action is required) notify University of its decision. In such case, University will shall have the right to file, prosecute, and maintain said patent or patent application, or to file an application directed to the discontinued that abandoned claim set, at its sole discretion and expense and without further obligation to Sponsor.

Patent Applications and Costs. 8.3.1 Each party will shall promptly disclose to the other party in writing any Subject Invention of which that it party becomes aware ofduring the Term or afterwards. 8.3.2 Sponsor, in consultation with University, will shall have the right to control the preparation, filing, and prosecution of each patent application covering that is specific to a Subject Invention. Sponsor will shall have three (3) months from receipt of an invention disclosure from University to notify University whether it desires to file a patent application on the disclosed Subject Invention (“"Subject Invention Review Period”"). If Sponsor files, then Sponsor will shall diligently pursue filing of the patent application in the name of University with respect to University Subject Inventions and in the name of both University and Sponsor in the case of Joint Subject Inventions. Although Sponsor will shall have the ultimate decision authority in preparation, filing, and prosecution of each patent application that is specific to a Subject Invention and will Invention, Sponsor shall keep University’s Office 's office for Technology Commercialization informed (with copy to xxxxxxxxx@xxx.xxx) as to all material matters relevant to the patent prosecution process and decision matters, and the Sponsor will shall give due consideration to any recommendations made by the University concerning the patent prosecution matters. Sponsor and Xxxxxxx's counsel will not contact University inventors regarding drafting and prosecution without first contacting University's office for Technology Commercialization Without limiting the foregoing, Sponsor or Sponsor's counsel shall provide a copy of the draft application and responses to office actions to the University at xxxxxxxxx@xxx.xxx and a reasonable an opportunity to review and provide comments on the application and office actionssuch application. Further, Sponsor will shall provide, or direct outside patent Sponsor’s counsel to provide, University with all serial numbers and filing dates, together with copies of all applications and patents that issue therefrom, including copies of all office actions, responses and all other substantive communications to and from the U.S. Patent and Trademark Office and the patent offices in any other jurisdictions. Sponsor will shall be responsible for the full expense of Subject Invention patent application and prosecution. 8.3.3 If Sponsor decides (ai) not to prepare, file, or prosecute patent applications specific to a Subject Invention within the Subject Invention Review Period, (bii) not to file a patent an application in a particular jurisdiction, (ciii) to discontinue prosecution of a pending application or a particular set of claims of a patent application, which set is specific to a Subject Invention, or (div) not to pay any required fee to maintain a pending patent application or an issued patent, Sponsor will shall promptly (but in no event less than 30 days before an action is required) notify University of its decision. In such case, University will shall have the right to file, prosecute, and maintain said patent or patent application, or to file an application directed to the discontinued that abandoned claim set, at its sole discretion and expense and without further obligation to Sponsor.