Common use of Patent Filing Procedure Clause in Contracts

Patent Filing Procedure. In all cases, the inventing party shall ----------------------- retain the sole right to determine whether or not Patent applications will be filed, and whether Patents and Patent applications will be maintained, on any such inventions which are conceived by its employees. With regard to inventions conceived jointly by both parties during work under this Agreement and Patents arising from such joint inventions which shall be the joint property of GE and CCSI, each party shall be free to utilize the same and to license third parties of its own choosing thereunder without consultation with the other party, and without an accounting or sharing of licensing income thereby received, if any. The parties agree to select mutually acceptable Patent attorneys to file and prosecute Patent applications based on such joint patentable inventions and to share equally the cost of such services and expenses reasonably incurred by such attorneys, including the payment of Patent maintenance fees, and without further compensation, to give such attorneys all reasonable assistance, to cause all necessary papers to be executed and do all things that may reasonably be required to obtain and maintain Patents on such CONFIDENTIAL TREATMENT REQUESTED [*] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. joint inventions. Each party shall be kept fully advised of the status of the prosecution of each such Patent application and shall be consulted in advance with respect to the advisability of continuing said prosecution in the event of any final rejection, appeal, interference, or the like, and each party may, at any time by ten (10) days' notice to the other party, elect not to continue to pays its share of such services and expenses incurred after the date of said election with respect to any such Patent or Patent application; provided, however, that the party making such election shall, at the time of so notifying the other party, immediately assign to the other party all rights to the Patent or Patent application with respect to which the election is being made. Neither party hereto shall be obligated to make any payments for or on account of proceedings before any court or any other tribunal or agency in connection with the maintenance or assertion of any Patents based on joint inventions.

Appears in 2 contracts

Samples: Collaborative Commercialization and License Agreement (Catalytica Energy Systems Inc), Collaborative Commercialization and License Agreement (Catalytica Energy Systems Inc)

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Patent Filing Procedure. In all cases, the inventing party shall ----------------------- retain the sole right to determine whether or not Patent applications will be filed, and whether Patents and Patent applications will be maintained, on any such inventions which are conceived by its employees. With regard to inventions conceived jointly by both parties during work under this Agreement and Patents arising from such joint inventions which shall be the joint property of GE and CCSI, each party shall be free to utilize the same and to license third parties of its own choosing thereunder without consultation with the other party, and without an accounting or sharing of licensing income thereby received, if any. The parties agree to select mutually acceptable Patent attorneys to file and prosecute Patent applications based on such joint patentable inventions and to share equally the cost of such services and expenses reasonably incurred by such attorneys, including the payment of Patent maintenance fees, and without further compensation, to give such attorneys all reasonable assistance, to cause all necessary papers to be executed and do all things that may reasonably be required to obtain and maintain Patents on such CONFIDENTIAL TREATMENT REQUESTED [*] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. joint inventions. Each party shall be kept fully advised of the status of the prosecution of each such Patent application and shall be consulted in advance with respect to the advisability of continuing said prosecution in the event of any final rejection, appeal, interference, or the like, and each party may, at any time by ten (10) days' notice to the other party, elect not to continue to pays its share of such THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. services and expenses incurred after the date of said election with respect to any such Patent or Patent application; provided, however, that the party making such election shall, at the time of so notifying the other party, immediately assign to the other party all rights to the Patent or Patent application with respect to which the election is being made. Neither party hereto shall be obligated to make any payments for or on account of proceedings before any court or any other tribunal or agency in connection with the maintenance or assertion of any Patents based on joint inventions.

Appears in 1 contract

Samples: Collaborative Commercialization and License Agreement (Catalytica Energy Systems Inc)

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Patent Filing Procedure. In all cases, the inventing party shall retain ----------------------- retain the sole right to determine whether or not Patent applications will be filed, and whether Patents and Patent applications will be maintained, on any such inventions which are conceived by its employees. With regard to inventions conceived jointly by both parties during work under this Agreement and Patents arising from such joint inventions which shall be the joint property of GE and CCSI, each party shall be free to utilize the same and to license third parties of its own choosing thereunder without consultation with the other party, and without an accounting or sharing of licensing income thereby received, if any. The parties agree to select mutually acceptable Patent attorneys to file and prosecute Patent applications based on such joint patentable inventions and to share equally the cost of such services and expenses reasonably incurred by such attorneys, including the payment of Patent maintenance fees, and without further compensation, to give such attorneys all reasonable assistance, to cause all necessary papers to be executed and do all things that may reasonably be required to obtain and maintain Patents on such CONFIDENTIAL TREATMENT REQUESTED [*] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. joint inventions. Each party shall be kept fully advised of the status of the prosecution of each such Patent application and shall be consulted in advance with respect to the advisability of continuing said prosecution in the event of any final rejection, appeal, interference, or the like, and each party may, at any time by ten (10) days' notice to the other party, elect not to continue to pays its share of such services and expenses incurred after the date of said election with respect to any such Patent or Patent application; provided, however, that the party making such election shall, at the time of so notifying the other party, immediately assign to the other party all rights to the Patent or Patent application with respect to which the election is being made. Neither party hereto shall be obligated to make any payments for or on account of proceedings before any court or any other tribunal or agency in connection with the maintenance or assertion of any Patents based on joint inventions.

Appears in 1 contract

Samples: Collaborative Commercialization and License Agreement (Catalytica Combustion Systems Inc)

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