Common use of Patent Applications and Costs Clause in Contracts

Patent Applications and Costs. 8.3.1 Each party shall promptly disclose to the other party in writing any Subject Invention of which that party becomes aware during the Term or afterwards. 8.3.2 Sponsor, in consultation with University, shall have the right to control the preparation, filing, and prosecution of each patent application that is specific to a Subject Invention. Sponsor 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 Subject Invention (“Subject Invention Review Period”). If Sponsor files, then Sponsor 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 shall have the ultimate decision authority in preparation, filing, and prosecution of each patent application that is specific to a Subject 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 at xxxxxxxxx@xxx.xxx, and the Sponsor 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 University and an opportunity to review and provide comments on such application. Further, Sponsor 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 to xxxxxxxxx@xxx.xxx. Sponsor shall be responsible for the full expense of Subject Invention patent application and prosecution. 8.3.3 If Sponsor decides (i) not to prepare, file, or prosecute patent applications specific to a Subject Invention within the Subject Invention Review Period, (ii) not to file an application in a particular jurisdiction, (iii) 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 (iv) not to pay any required fee to maintain a pending patent application or an issued patent, Sponsor shall promptly (but in no event less than 30 days before an action is required) notify University of its decision. In such case, University shall have the right to file, prosecute, and maintain said patent or patent application, or to file an application directed to 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 shall promptly disclose to the other party in writing any Subject Invention of which that party becomes aware during the Term or afterwards. 8.3.2 Sponsor, in consultation with University, shall have the right to control the preparation, filing, and prosecution of each patent application that is specific to a Subject Invention. Sponsor 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 Subject Invention (“Subject Invention Review Period”). If Sponsor files, then Sponsor 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 shall have the ultimate decision authority in preparation, filing, and prosecution of each patent application that is specific to a Subject 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 matters at xxxxxxxxx@xxx.xxxmatters, and the Sponsor 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 University and an opportunity to review and provide comments on such application. Further, Sponsor 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 to xxxxxxxxx@xxx.xxxjurisdictions. Sponsor shall be responsible for the full expense of Subject Invention patent application and prosecution. 8.3.3 If Sponsor decides (i) not to prepare, file, or prosecute patent applications specific to a Subject Invention within the Subject Invention Review Period, (ii) not to file an application in a particular jurisdiction, (iii) 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 (iv) not to pay any required fee to maintain a pending patent application or an issued patent, Sponsor shall promptly (but in no event less than 30 days before an action is required) notify University of its decision. In such case, University shall have the right to file, prosecute, and maintain said patent or patent application, or to file an application directed to 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 shall promptly disclose to the other party in writing any Subject Invention of which that party becomes aware during the Term or afterwards. 8.3.2 Sponsor, in consultation with University, shall have the right to control the preparation, filing, and prosecution of each patent application that is specific to a Subject Invention. Sponsor 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 Subject Invention (“"Subject Invention Review Period”"). If Sponsor files, then Sponsor 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 shall have the ultimate decision authority in preparation, filing, and prosecution of each patent application that is specific to a Subject Invention, Sponsor shall keep University’s '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 at xxxxxxxxx@xxx.xxxmatters, and the Sponsor shall give due consideration to any recommendations made by the University concerning the patent prosecution matters. Sponsor and SponsorXxxxxxx'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 University at xxxxxxxxx@xxx.xxx and an opportunity to review and provide comments on such application. Further, Sponsor 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 to xxxxxxxxx@xxx.xxxjurisdictions. Sponsor shall be responsible for the full expense of Subject Invention patent application and prosecution. 8.3.3 If Sponsor decides (i) not to prepare, file, or prosecute patent applications specific to a Subject Invention within the Subject Invention Review Period, (ii) not to file an application in a particular jurisdiction, (iii) 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 (iv) not to pay any required fee to maintain a pending patent application or an issued patent, Sponsor shall promptly (but in no event less than 30 days before an action is required) notify University of its decision. In such case, University shall have the right to file, prosecute, and maintain said patent or patent application, or to file an application directed to 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 shall will promptly disclose to the other party in writing any Subject Invention of which that party it becomes aware during the Term or afterwardsof. 8.3.2 Sponsor, in consultation with University, shall will have the right to control the preparation, filing, and prosecution of each patent application that is specific to covering a Subject Invention. Sponsor shall 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 shall 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. Although Sponsor shall will have the ultimate decision authority in preparation, filing, and prosecution of each patent application that is specific to a Subject Invention, Sponsor shall Invention and will keep University’s office Office for Technology Commercialization informed as to all material matters relevant to the patent prosecution process and decision matters at xxxxxxxxx@xxx.xxxmatters, and the Sponsor shall will 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 an a reasonable opportunity to review and provide comments on such applicationthe application and office actions. Further, Sponsor shall 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 to xxxxxxxxx@xxx.xxxjurisdictions. Sponsor shall will be responsible for the full expense of Subject Invention patent application and prosecution. 8.3.3 If Sponsor decides (ia) not to prepare, file, or prosecute patent applications specific to a Subject Invention within the Subject Invention Review Period, (iib) not to file an a patent application in a particular jurisdiction, (iiic) 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 (ivd) not to pay any required fee to maintain a pending patent application or an issued patent, Sponsor shall will promptly (but in no event less than 30 days before an action is required) notify University of its decision. In such case, University shall will have the right to file, prosecute, and maintain said patent or patent application, or to file an application directed to that abandoned the discontinued claim set, at its sole discretion and expense and without further obligation to Sponsor.