Patent Counsel. Licensor will work closely with Licensee to develop a suitable strategy for the prosecution and maintenance of all Patents Rights. Licensee may select patent counsel for the prosecution and maintenance of Patent Rights, provided such counsel is reasonably acceptable to Licensor. The selected patent attorney will agree to keep both Licensee and Licensor, as co-clients, equally informed and involved as to all material information, material communications with governmental patent offices, material issues and decisions, and related matters applicable to prosecuting the patent applications for the Specific terms in this exhibit have been redacted because confidential treatment for those terms has been requested. These redacted terms have been marked in this exhibit with three asterisks [***]. An unredacted version of this exhibit has been separately filed with the Securities and Exchange Commission. KUCTC-Reata Confidential [***] Patent Rights and for maintaining the Patent Rights in good standing. Decisions for prosecuting the patent applications will be made so as to obtain the broadest patent protection that is reasonable and practical under the circumstances. Licensee will request that copies of all documents prepared by the patent attorney selected by Licensee be provided to Licensor for review and comment prior to filing to the extent practicable under the circumstances. All patent applications and patents will be in the name of Licensor, owned by Licensor and included as part of the Patent Rights licensed pursuant to this Agreement. Licensee will promptly notify Licensor of its plans to file, revise or drop any patent application or claim which may adversely affect the Patent Rights or the rights or royalties of Licensor in the Licensed Product(s) under this Agreement. Licensee and the selected patent attorney shall not change any inventorship designations and shall not drop or reduce any claim in a pending patent application which may adversely affect the Patent Rights or royalties of Licensor without the written consent of Licensor. Licensee shall notify Licensor at least forty five (45) days prior to abandonment of any patent application and/or patents under Patent Rights.
Appears in 2 contracts
Samples: License Agreement, License Agreement (Reata Pharmaceuticals Inc)
Patent Counsel. Licensor will work closely with Licensee to develop a suitable strategy for the prosecution and maintenance of all Patents Rights. Licensee may select patent counsel for the prosecution and maintenance of Patent Rights, provided such counsel is reasonably acceptable to Licensor. The selected patent attorney will agree to keep both Licensee and Licensor, as co-clients, equally informed and involved as to all material information, material communications with governmental patent offices, material issues and decisions, and related matters applicable to prosecuting the patent applications for the Specific terms in this exhibit have been redacted because confidential treatment for those terms has been requested. These redacted terms have been marked in this exhibit with three asterisks [***]. An unredacted version of this exhibit has been separately filed with the Securities and Exchange Commission. KUCTC-Reata Confidential [***] Patent Rights and for maintaining the Patent Rights in good standing. Decisions for prosecuting the patent applications will be made so as to obtain the broadest patent protection that is reasonable and practical under the circumstances. Licensee will request that copies of all documents prepared by the patent attorney selected by Licensee be provided to Licensor for review and comment prior to filing to the extent practicable under the circumstances. All patent applications and patents will be in the name of Licensor, owned by Licensor and included as part of the Patent Rights licensed pursuant to this Agreement. Licensee will promptly notify Licensor of its plans to file, revise or drop any patent application or claim which may adversely affect the Patent Rights or the rights or royalties of Licensor in the Licensed Product(s) under this Agreement. Licensee and the selected patent attorney shall not change any inventorship designations and shall not drop or reduce any claim in a pending patent application which may adversely affect the Patent Rights or royalties of Licensor without the written consent of Licensor. Licensee shall notify Licensor at least forty five (45) days prior to abandonment of any patent application and/or patents under Patent Rights.. Specific terms in this exhibit have been redacted because confidential treatment for those terms has been requested. These redacted terms have been marked in this exhibit with three asterisks [***]. An unredacted version of this exhibit has been separately filed with the Securities and Exchange Commission. KUCTC-Reata Confidential [***]
Appears in 1 contract
Patent Counsel. Licensor will work closely with agrees to allow Licensee to develop a suitable strategy for select the prosecution patent attorney, with the requirement that Licensor must consent, in writing, to such selected patent attorney, or any subsequent or new patent attorney, which consent shall not be unreasonably withheld. Licensor acknowledges that the Chicago based patent law firm, Wood Xxxxxxxx is acceptable to it and maintenance agrees to transfer to the firm within thirty (30) days of the Effective Date all Patents Rights. Licensee may select patent counsel for of the prosecution and maintenance of files relating to the Patent Rights, provided such counsel is reasonably acceptable to Licensor. The selected patent attorney will agree to keep both licensor and Licensee and Licensor, as co-clients, equally informed and involved as to all material information, material communications with governmental patent offices, material issues and decisions, and related matters applicable to prosecuting the patent applications for the Specific terms in this exhibit have been redacted because confidential treatment for those terms has been requested. These redacted terms have been marked in this exhibit with three asterisks [***]. An unredacted version of this exhibit has been separately filed with the Securities and Exchange Commission. KUCTC-Reata Confidential [***] Patent Rights and for maintaining the Patent Rights in good standing. Decisions for prosecuting the patent applications will be made so as to obtain the broadest patent protection that is reasonable and practical under the circumstances. Licensee will request that copies of all documents prepared by the patent attorney selected by Licensee be provided to Licensor for review and comment prior to filing to the extent practicable under the circumstances. All patent applications and patents will be support, in the name of consultation with Licensor, owned by Licensor its selection of jurisdictions to support and included as part any changes therein in sufficient time to allow licensor to direct Licensee to prosecute and maintain, at Licensor’s expense, some or all of the Patent Rights licensed pursuant to this Agreementin the notified jurisdictions. Licensee will promptly notify shall and shall cause its selected patent attorney to provide Licensor with a copy of its plans to file, revise or drop material communications from any patent application or claim which may adversely affect the Patent Rights or the rights or royalties of authority, shall provide Licensor in the Licensed Product(s) under this Agreementreasonable opportunity to review and comment on such prosecution efforts, and shall receive and reasonably consider Licensor’s timely and commercially practicable comments and requests for changes. Licensee and the selected patent attorney shall not change any inventorship designations and shall not drop or reduce any claim in a pending patent application which may adversely affect the Patent Rights or royalties of Licensor licensor without the written consent of first consulting with Licensor. Licensee shall notify Licensor at least forty five (45) days prior to abandonment of any patent application and/or patents under Patent Rights.
Appears in 1 contract
Patent Counsel. Licensor will work closely with Licensee to develop a suitable strategy for the prosecution and maintenance of all Patents Rights. Licensee may select patent counsel for the prosecution and maintenance of Patent Rights, provided such counsel is reasonably acceptable to Licensor. The selected patent attorney will agree to keep both Licensee and Licensor, as co-clients, equally informed and involved as to all material information, material communications with governmental patent offices, material issues and decisions, and related matters applicable to prosecuting the patent applications for the Specific terms in this exhibit Exhibit have been redacted because confidential treatment for those such terms has been requestedare both not material and are of the type that the Company treats as private or confidential. These redacted terms have been marked in this exhibit Exhibit with three asterisks [***]. An unredacted version of this exhibit has been separately filed with the Securities and Exchange Commission. KUCTC-Reata Confidential [***] Patent Rights and for maintaining the Patent Rights in good standing. Decisions for prosecuting the patent applications will be made so as to obtain the broadest patent protection that is reasonable and practical under the circumstances. Licensee will request that copies of all documents prepared by the patent attorney selected by Licensee be provided to Licensor for review and comment prior to filing to the extent practicable under the circumstances. All patent applications and patents will be in the name of Licensor, owned by Licensor and included as part of the Patent Rights licensed pursuant to this Agreement. Licensee will promptly notify Licensor of its plans to file, revise or drop any patent application or claim which may adversely affect the Patent Rights or the rights or royalties of Licensor in the Licensed Product(s) under this Agreement. Licensee and the selected patent attorney shall not change any inventorship designations and shall not drop or reduce any claim in a pending patent application which may adversely affect the Patent Rights or royalties of Licensor without the written consent of Licensor. Licensee shall notify Licensor at least forty five (45) days prior to abandonment of any patent application and/or patents under Patent Rights.
Appears in 1 contract
