Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee. 7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office. 7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice. 7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 10 contracts
Samples: Patent License Agreement (Kyverna Therapeutics, Inc.), Patent License Agreement (Kyverna Therapeutics, Inc.), Patent License Agreement (Kyverna Therapeutics, Inc.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall shall, on an ongoing basis, furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the ICNIH’s written request, the Licensee shall have the right to assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC NIH may provide the Licensee with written notice that the IC NIH wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICNIH’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each provide sufficient opportunity, when possible, to the other party to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered in good faith by the other party.
Appears in 3 contracts
Samples: Patent License Agreement (Kite Pharma, Inc.), Patent License Agreement (Kite Pharma, Inc.), Patent License Agreement (Kite Pharma, Inc.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related patent‑related documents to the Licensee.
7.2 . Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related patent‑related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 . At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 . Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 3 contracts
Samples: Patent License Agreement, Patent License Agreement, Patent License Agreement
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the ICNIH’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC NIH may provide the Licensee with written notice that the IC NIH wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICNIH’s choice.. NIH Patent License Agreement – Exclusive
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 2 contracts
Samples: Patent License Agreement (Aura Biosciences, Inc.), Patent License Agreement (Aura Biosciences, Inc.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall timely pay all required maintenance and other fees and costs, and, on an ongoing basis, shall furnish copies of all relevant patent-related documents to the Licensee.
7.2 Upon the ICNIH’s written request, and subject to Paragraph 6.8, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC NIH may provide the Licensee with written notice that the IC NIH wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials in Licensee’s possession or control that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICNIH’s choice.
7.4 Each party shall promptly inform the other as to all material matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 2 contracts
Samples: Patent License Agreement (Bavarian Nordic a/S / ADR), Patent License Agreement (Bavarian Nordic a/S / ADR)
Patent Filing Prosecution and Maintenance. 7.1 7.01 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 7.02 Upon the ICPHS’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, shall on an ongoing basis, basis promptly furnish copies of all patent-related documents to the ICPHS. In this such event, the Licensee shall, subject to the prior approval of the ICPHS, select registered patent attorneys or patent agents to provide these such services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action such actions to the patent attorneys or patent agents providing these such services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 7.03 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these assume such responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC PHS deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICPHS’s choice.
7.4 7.04 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filingFiling, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 2 contracts
Samples: Patent License Agreement (Can-Fite BioPharma Ltd.), Patent License Agreement (Can-Fite BioPharma Ltd.)
Patent Filing Prosecution and Maintenance. 7.1 7.01 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-patent related documents to the Licensee.
7.2 7.02 Upon the ICPHS’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, shall on an ongoing basis, basis promptly furnish copies of all patent-patent related documents to the ICPHS. In this such event, the Licensee shall, subject to the prior approval of the ICPHS, select registered patent attorneys or patent agents to provide these such services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action such actions to the patent attorneys or patent agents providing these such services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 7.03 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these assume such responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC VHS deems necessary to undertake such responsibilities. The Licensee If PHS elects to assume control of the preparation, filing, prosecution and maintenance of any and all patent applications or patents included in the Licensed Patent Rights for a reason other than Licensee’s failure to perform under this Agreement, PHS shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICPHS’s choice.
7.4 7.04 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 2 contracts
Samples: Sublicense and License Agreement (Neopharm Inc), Sublicense and License Agreement (Neopharm Inc)
Patent Filing Prosecution and Maintenance. 7.1 7.01 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 7.02 Upon the ICPHS’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, shall on an ongoing basis, basis promptly furnish copies of all patent-related documents to the ICPHS. In this such event, the Licensee shall, subject to the prior approval of the ICPHS, select registered patent attorneys or patent agents to provide these such services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action such actions to the patent attorneys or patent agents providing these such services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 7.03 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these assume such responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, attorneys and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC PHS deems necessary to undertake such responsibilities. The Licensee If PHS elects to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights for a reason other than Licensee’s failure to perform under this Agreement, PHS shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICPHS’s choice.
7.4 7.04 Each party shall promptly inform the other as to 10 all matters that come to its attention that may affect the preparation, filing, . prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance prosecution of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 2 contracts
Samples: Sublicense and License Agreement (Neopharm Inc), Sublicense and License Agreement (Neopharm Inc)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the IC’s PHS' written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICPHS. In this event, the Licensee shall, subject to the prior approval of the ICPHS, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC PHS deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s PHS' choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 2 contracts
Samples: Patent License Agreement (Kinemed Inc), Patent License Agreement (Kinemed Inc)
Patent Filing Prosecution and Maintenance. 7.1 7.01 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 7.02 Upon the IC’s PHS's written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, shall on an ongoing basis, basis promptly furnish copies of all patent-related documents to the ICPHS. In this such event, the Licensee shall, subject to the prior approval of the ICPHS, select registered patent attorneys or patent agents to provide these such services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action such actions to the patent attorneys or patent agents providing these such services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 7.03 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these assume such responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC PHS deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s PHS's choice.
7.4 7.04 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 2 contracts
Samples: Asset Assignment Agreement (Compass Biotechnologies Inc.), Patent License Agreement (Targeted Genetics Corp /Wa/)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights Rights, shall timely pay all required maintenance and other fees and costs, and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the IC’s PHS’ written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Group I Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICPHS. In this event, the Licensee shall, subject to the prior approval of the ICPHS, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Group I Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials in Licensee’s possession or control that the IC PHS deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s PHS’ choice.
7.4 Each party shall promptly inform the other as to all material matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 2 contracts
Samples: Patent License Agreement (Bavarian Nordic a/S / ADR), Patent License Agreement (Bavarian Nordic a/S / ADR)
Patent Filing Prosecution and Maintenance. 7.1 7.01 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to Licensee. At Licensee's request and expense, PHS shall cooperate with Licensee in preparing, filing, prosecuting, and maintaining such patent applications and patents included in the LicenseeLicensed Patent Rights as may be reasonably requested by Licensee from time to time. Notwithstanding the foregoing, PHS will retain Principal Power of Attorney and primary control over the preparation, filing, prosecution, and maintenance of said patent applications and patents. PHS shall provide Licensee with reasonable opportunity to comment on any document PHS intends to file or causes to be filed with the relevant intellectual property or patent office.
7.2 7.02 Upon the IC’s PBS's written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, shall on an ongoing basis, basis promptly furnish copies of all patent-related documents to the ICPAS. In this such event, the Licensee shall, subject to the prior approval of the ICPAS, select registered patent attorneys or patent agents to provide these such services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action such actions to the patent attorneys or patent agents providing these such services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 7.03 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these assume such responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, attorneys and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC PAS deems necessary to undertake such responsibilities. The Licensee shall be responsible for all reasonable costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s PHS's choice.
7.4 7.04 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance prosecution of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.. Model PHS Patent License Agreement--Exclusive—Angiotech Pharmaceuticals, Inc. Form 121895 Page 8 of 27 (L-103-9610) (FINAL) CONFIDENTIAL 19971117
Appears in 1 contract
Samples: Patent License Agreement (Angiotech Pharmaceuticals Inc)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, after Licensee has assumed responsibility for the preparation, filing, prosecution, and maintenance of Licensed Patent Rights as provided in Paragraph 7.2, the IC may provide the Licensee with written notice that the IC wishes to re-assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials in Licensee’s possession or control that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice..
7.4 Each party shall promptly inform the other as to all material matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Samples: Patent License Agreement (Iovance Biotherapeutics, Inc.)
Patent Filing Prosecution and Maintenance. 7.1 7.01 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-–related documents to the Licensee.
7.2 7.02 Upon the ICPHS’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, shall on an ongoing basis, basis promptly furnish copies of all patent-related documents to the ICPHS. In this such event, the Licensee shall, subject to the prior approval of the ICPHS, select registered patent attorneys or patent agents to provide these such services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action such actions to the patent attorneys or patent agents providing these such services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 7.03 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these assume such responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC PHS deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICPHS’s choice.
7.4 7.04 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Patent Filing Prosecution and Maintenance. 7.1 8.01 Except as otherwise provided in this Article 78, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications Patent Applications or patents Patents included in the Licensed Patent Rights and shall furnish copies of cof relevant patentPatent-related documents to the Licensee.
7.2 8.02 Upon the IC’s written requestexecution of this Agreement, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any United States Patent Number 5,635,599 and all patent applications or patents included in the United States Patent Application Serial Numbers 08/722,258 and 08/616,785 of Licensed Patent Rights Rights, including all relevant continuations-in-part, all divisions and shallcontinuations of these continuation in-part; all Patents issuing from such continuation-in-part, divisions, and continuations, and any reissues, reexaminations and extensions of all such Patents, and shall on an ongoing basis, basis promptly furnish copies of all patentPatent-related documents to the ICPHS. In this such event, the Licensee shall, subject to the prior approval of the ICPHS, select registered patent Patent attorneys or patent Patent agents to provide these such services on behalf of the Licensee and the IC. The IC PHS.PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action such actions to the patent Patent attorneys or patent Patent agents providing these such services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications Patent Applications and patents Patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent Patent office.
7.3 At 8.03 If Licensee has assumed control of the Licensed Patent Rights in accordance with Paragraphs 7.10 and 8.02, at any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications Patent Applications or patents Patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these assume such responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, attorneys and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications Patent Applications or patents Patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC PHS deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent Patent prosecution responsibilities to an attorney or agent of the IC’s PHS's choice.
7.4 8.04 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance prosecution of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Samples: Patent License Agreement (Neurocrine Biosciences Inc)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related patent‑related documents to the Licensee.
7.2 . Upon the ICNIH’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related patent‑related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 . At any time, the IC NIH may provide the Licensee with written notice that the IC NIH wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICNIH’s choice.
7.4 . Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Samples: Patent License Agreement
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the ICNIH’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, after Licensee has assumed responsibility for the IC preparation, filing, prosecution, and maintenance of Licensed Patent Rights as provided in Section 7.2, the NIH may provide the Licensee with written notice that the IC NIH wishes to re-assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials in Licensee’s possession or control that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICNIH’s choice.
7.4 Each party shall promptly inform the other as to all material matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.. NIH Patent License Agreement--Exclusive Model 10-2005 (updated 8-2012) Page 8 of 28 Final Lion Biotechnologies, Inc. February 2, 2015
Appears in 1 contract
Samples: Patent License Agreement (Lion Biotechnologies, Inc.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party. A-429-2017 NIH Patent License Agreement-Exclusive [***] Certain confidential information contained in this document, marked by brackets, has been omitted because it is both (i) not material and (ii) would be competitively harmful if publicly disclosed.
Appears in 1 contract
Patent Filing Prosecution and Maintenance. 7.1 7.01 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 7.02 Upon the ICPHS’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, shall on an ongoing basis, basis promptly furnish copies of all patent-related documents to the ICPHS. In this such event, the Licensee shall, subject to the prior approval of the ICPITS, select registered patent attorneys or patent agents to provide these such services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action such actions to the patent attorneys or patent agents providing these such services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 7.03 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these assume such responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC PHS deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICPHS’s choice.
7.4 7.04 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.. PHS Patent License Agreement - Exclusive CONFIDENTIAL (L-216-00/0)
Appears in 1 contract
Patent Filing Prosecution and Maintenance. 7.1 7.01 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 7.02 Upon the ICPHS’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, shall on an ongoing basis, basis promptly furnish copies of all patent-related documents to the ICPHS. In this such event, the Licensee shall, subject to the prior approval of the ICPHS, select registered patent attorneys or patent agents to provide these such services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action such actions to the patent attorneys or patent agents providing these such services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 7.03 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these assume such responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC PHS deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICPHS’s choice.
7.4 7.04 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Samples: Patent License Agreement (Keryx Biopharmaceuticals Inc)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the ICNIH’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, after Licensee has assumed responsibility for the IC preparation, filing, prosecution, and maintenance of Licensed Patent Rights as provided in Section 7.2, the NIH may provide the Licensee with written notice that the IC NIH wishes to re-assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials in Licensee’s possession or control that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICNIH’s choice.
7.4 Each party shall promptly inform the other as to all material matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.. NIH Patent License Agreement--Exclusive Model 10-2005 (updated 8-2012) Page 8 of 28 Final Lion Biotechnologies, Inc. February 2, 2015 03424-0001 266291.2
Appears in 1 contract
Samples: Patent License Agreement (Lion Biotechnologies, Inc.)
Patent Filing Prosecution and Maintenance. 7.1 7.01 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult withconsultwith, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 7.02 Upon the IC’s PHS's written request, the Licensee shall assume the responsibility for the preparation, filing, filing ,prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, shall on an ongoing basis, basis promptly furnish copies of all patent-related documents to the ICPHS. In this such event, the Licensee shall, subject to the prior approval of the ICPHS, select registered patent attorneys or patent agents to provide these such services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action such actions to the patent attorneys or patent agents providing these such services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 7.03 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these assume such responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC PHS deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s PHS's choice.
7.4 7.04 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other partyother.
Appears in 1 contract
Samples: Exclusive License Agreement (Cyplasin Biomedical Ltd.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult in good faith with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall promptly furnish copies of relevant patent-related documents to the Licensee for review and comment, which comments the IC shall consider in good faith. The IC shall, subject to good faith consideration of comments from the Licensee.
7.2 Upon , select registered patent attorneys or patent agents to prepare, file, prosecute and maintain the Licensed Patent Rights on behalf of the IC. Without limiting the foregoing, IC shall provide Licensee with a list of proposed filings (including which countries are being elected, validated or nationalized, and/or filing of continuations or divisionals), at least [***] prior to a filing deadline when practicable, for any and all patent applications or patents included in the Licensed Patent Rights. If Licensee would like an additional filing or a filing in an additional country that is not listed, Licensee will submit such a request in writing to the IC within [***] of receipt of the IC’s written proposed filings. If the IC does not agree with the Licensee’s request and cannot provide the Licensee with a bona fide reason (including without limitation, claims are not patentable) why the IC has elected not to comply with the Licensee’s request, then the Licensee shall may, at its own expense, assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all such requested patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC.
7.2 Upon the IC’s written request or in the event that the IC elects to abandon or otherwise cease the prosecution and maintenance of any Licensed Patent Rights (in which case the IC shall provide the Licensee with prompt written notice, not less than [***] in advance of any applicable filing deadline, when practicable), the Licensee may assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all applicable patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume reassume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee, including drafts of any substantive filing or response. IC shall provide relevant patent-related documents and drafts at least [***] in advance of intended submission and shall reasonably consider and implement Licensee’s comments thereto.
7.2 Upon If the IC’s written requestIC decides not to prepare, file, prosecute, or maintain any patent applications or patents included in the Licensed Patent Rights, and Licensee is in good standing on the payment of patent reimbursement royalties, the IC shall notify Licensee at least [***] prior to any filing, payment, or other deadlines. In such case, the Licensee and any Third Party to an Additional License (e.g. the Co-Exclusive Licensee) that is in good standing on the payment of patent reimbursement royalties shall assume promptly discuss which party shall have the first right, but not the obligation, to assume, at its own expense, the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the such Licensed Patent Rights and Rights. If Licensee assumes such responsibility, it shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.. [***] NIH Patent License Agreement – Exclusive Model 10-2015 Page 11 of 29 [SentiBio] [7-20-2020]
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights Rights, and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Samples: Patent License Agreement (Dynamics Special Purpose Corp.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee, including drafts of any substantive filing or response at least [***] in advance of intended submission when practicable, and shall reasonably consider and implement Licensee’s comments thereto.
7.2 Upon If the IC’s written requestIC decides not to prepare, file, prosecute, or maintain any patent applications or patents included in the Licensed Patent Rights, and Licensee is in good standing on the payment of patent reimbursement royalties, the IC shall notify Licensee at least [***] prior to any filing, payment, or other deadlines when practicable. In such case, the Licensee and any Third Party to an Additional License that is in good standing on the payment of patent reimbursement royalties shall assume promptly discuss which party shall have the right, but not the obligation, to assume, at its own expense, the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the such Licensed Patent Rights and Rights. If Licensee elects to assume such responsibility, it shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Samples: Patent License Agreement (Dynamics Special Purpose Corp.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.. CONFIDENTIAL NIH Patent License Agreement–Exclusive US-DOCS\144314993.1 13
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Samples: Patent License Agreement (CARGO Therapeutics, Inc.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall shall, on an ongoing basis, furnish copies of relevant patent-related patent‑related documents to the Licensee.
7.2 Upon the ICNIH’s written request, the Licensee shall have the right to assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related patent‑related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC NIH may provide the Licensee with written notice that the IC NIH wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICNIH’s choice.. * ***Confidential Treatment Requested A-276-2014 NIH Patent License Agreement - Exclusive Page 10 [Kite Pharma, Inc.] [September 28, 2015]
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each provide sufficient opportunity, when possible, to the other party to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered in good faith by the other party.
Appears in 1 contract
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, for the Licensee in the preparation, filing, prosecution, prosecution and maintenance of any and all the patent applications or patents included listed in Appendix A, which are the Licensed Patent Rights on the Effective Date of this Agreement. If the IC anticipates the possibility of any Extraordinary Expenditures, the IC will send prior written notice to Licensee, and the IC will not be required to incur such Extraordinary Expenditures. At the IC’s sole option, the IC may elect to abandon the patent rights associated with such Extraordinary Expenditures. In such event, the Licensee may request that the IC incur such Extraordinary Expenditures at the Licensee’s expense, which shall require approval by IC. In addition, the Licensee may request further prosecution actions beyond those taken by the IC. Such actions shall be at the sole expense of the Licensee and shall furnish copies of relevant patent-related documents to require approval by the LicenseeIC.
7.2 Upon the IC’s written requestThe IC will not be required to prepare, the Licensee shall assume the responsibility for the preparationfile, filingprosecute, prosecution, and maintenance of any and all or maintain additional patents or patent applications or patents included outside of those listed in the Licensed Patent Rights Appendix A. The Licensee may request filing of future, related patent applications beyond those listed in Appendix A, which shall require approval by IC and shallwill not be unreasonably denied without cause. However, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In in this event, the Licensee shall, subject to shall render direct payment for all related expenses resulting from Licensee’s requests in the prior approval manner described above in Paragraph 6.2. NIH Patent License Agreement--Exclusive Model 10-2015 Page 6 of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.24 [Draft2] [Connectyx] [2020 September]
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and any related patent applications or patents. The IC shall consult with the Licensee on the prosecution and maintenance of the Licensed Patent Rights, and permit each other Licensee to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent RightsRights and related patent applications or patents, which comments and suggestions shall be considered by the other partyIC. The IC shall furnish copies of relevant patent-related documents to the Licensee upon request.
Appears in 1 contract
Samples: Patent License Agreement (Curative Biotechnology Inc)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the ICNIH’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC NIH may provide the Licensee with written notice that the IC NIH wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICNIH’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Samples: Patent License Agreement
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other partyparty in good faith. A-034-2016 NIH Patent License Agreement—Exclusive PORTIONS OF THIS EXHIBIT HAVE BEEN REDACTED AND ARE SUBJECT TO A CONFIDENTIAL INFORMATION REQUEST FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
Appears in 1 contract
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall promptly furnish copies of relevant patent-related patent‑related documents to the Licensee for review and comment, which comments the IC shall consider in good faith. The IC shall, subject to good faith consideration of comments from the Licensee.
7.2 , select registered patent attorneys or patent agents to prepare, file, prosecute and maintain the Licensed Patent Rights on behalf of the IC. Without limiting the foregoing, IC shall provide Licensee with a list of proposed filings (including which countries are being elected, validated or nationalized, and/or filing of continuations or divisionals), at least [***] days prior to a filing deadline when practicable, for any and all patent applications or patents included in the Licensed Patent Rights. If Licensee would like an additional filing or a filing in an additional country that is not listed, Licensee will submit such a request in writing to the IC within the earlier of [***] days of receipt of the IC’s proposed filings, or [***] days in advance from the relevant filing deadline, and the IC shall consider such request in good faith. Upon the IC’s written request, the Licensee shall may assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related patent‑related documents to the IC. .
7.2 In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume reassume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.. A-440-2021 NIH Patent License Agreement--Exclusive Model 10-2015 Page 13 of 28 [Draft v1] [Sana] [12/16/2021]
7.4 Each party shall promptly inform the other as to all material matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each provide sufficient opportunity, when possible, to the other party to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.. Upon Licensee’s notice in accordance with Paragraph 6.13, the IC will discuss in good faith with Licensee whether such Licensed Patent Rights in such country should be abandoned, based on the collective interests of Licensee, the IC and its Additional Licensees under such Licensed Patent Rights
Appears in 1 contract
Samples: Patent License Agreement (Sana Biotechnology, Inc.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the ICNIH’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, after Licensee has assumed responsibility for the IC preparation, filing, prosecution, and maintenance of Licensed Patent Rights as provided in Section 7.2, the NIH may provide the Licensee with written notice that the IC NIH wishes to re-assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials in Licensee’s possession or control that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICNIH’s choice.
7.4 Each party shall promptly inform the other as to all material matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.. CONFIDENTIAL NIH Patent License Agreement--Exclusive Model 10-2005 (updated 8-2012) Page 8 of 28 Final Lion Biotechnologies, Inc. February 2, 2015 03424-0001 266291.2
Appears in 1 contract
Samples: Patent License Agreement
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the ICNIH’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, after Licensee has assumed responsibility for the IC preparation, filing, prosecution, and maintenance of Licensed Patent Rights as provided in Section 7.2, the NIH may provide the Licensee with written notice that the IC NIH wishes to re-assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials in Licensee’s possession or control that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICNIH’s choice.
7.4 Each party shall promptly inform the other as to all material matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.. NIH Patent License Agreement--Exclusive Model 10-2005 (updated 8-2012) Page 10 of 31 Final Lion Biotechnologies, Inc. February 4, 2015 03424-0001 266294.2
Appears in 1 contract
Samples: Patent License Agreement (Lion Biotechnologies, Inc.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related patent‑related documents to the Licensee.
7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related patent‑related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC[***], select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.[***]
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party[***].
Appears in 1 contract
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of [***] the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities[***], the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee [***] shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Samples: Patent License Agreement (Dynamics Special Purpose Corp.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.. NIH Patent License Agreement--Exclusive
Appears in 1 contract
Samples: Patent License Agreement (Atlantic Coastal Acquisition Corp. II)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility forfor the preparation, but to filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. IC shall further consult with, with the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights Groups A, B, C, D and shall E and shall, on an ongoing basis, furnish copies of relevant patent-related documents from these groups to the Licensee.
7.2 Upon the IC’s written request, the Licensee shall have the right to assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each provide sufficient opportunity, when possible, to the other party to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
Appears in 1 contract
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the ICNIH’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, after Licensee has assumed responsibility for the IC preparation, filing, prosecution, and maintenance of Licensed Patent Rights as provided in Section 7.2, the NIH may provide the Licensee with written notice that the IC NIH wishes to re-assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials in Licensee’s possession or control that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the ICNIH’s choice.
7.4 Each party shall promptly inform the other as to all material matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.. NIH Patent License Agreement—Exclusive Model 10-2005 (updated 8-2012) Page 10 of 31 Final Lion Biotechnologies, Inc. February 4, 2015
Appears in 1 contract
Samples: Patent License Agreement (Lion Biotechnologies, Inc.)
Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC NIH agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall shall, on an ongoing basis, furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the ICNIH’s written request, the Licensee shall have the right to assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICNIH. In this event, the Licensee shall, subject to the prior approval of the ICNIH, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICNIH. The IC NIH shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC NIH in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC NIH sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC NIH may provide the Licensee with written notice that the IC NIH wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC NIH elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICNIH, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC NIH with complete copies of any and all documents or other materials that the IC NIH deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation6 ** * ***Confidential Treatment Requested A-563-2014 NIH Patent License Agreement – Exclusive Page 10 [Kite Pharma, filingInc.] [December 18, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.2014]
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Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7VIKING shall retain control over filing, the IC prosecuting, and maintaining all Licensed Patents and Applications. VIKING agrees to take responsibility for, but to consult with, the Licensee exercise diligence in the preparationfiling of patent applications, U.S. and foreign, for its inventions. VIKING shall pay for all costs associated with filing, prosecution, and maintenance of any all Licensed Patents and Applications, including re-examination, re-issuance, and interference proceedings. ISI shall have the right, but not the obligation, at its expense, to review and provide suggested input to all proposed patent applications or patents included application and prosecution work, including re-examination, re-issuance, and interference proceedings. VIKING will consider ISI’s input in good faith, and shall endeavor to achieve maximum claim breadth, including coverage in the Licensed Patent Rights and shall furnish copies Medical Robotics Field, that can reasonably be prosecuted in light of relevant patent-related documents to the Licenseeknown prior art.
7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, (a) VIKING agrees to pay and maintenance of any and continue to pay all patent applications or patents included in fees necessary to maintain the Licensed Patent Rights Patents and shallApplications in force. VIKING may, on an ongoing basisat its discretion, promptly furnish copies of all patent-related documents decline to the IC. In this event, the Licensee shall, subject continue to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on maintain any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance particular one of the Licensed Patents and Applications in any country or region provided that VIKING provides timely notice to ISI of such decision, whereupon ISI may, at ISI’s discretion and with such reasonable assistance as may be required from VIKING, undertake the payment of the fee required to keep the particular Licensed Patent Rights and permit each other in force. Upon payment of the required fee to provide comments and suggestions with respect maintain the particular Licensed Patent in force, ISI assumes VIKING’s ownership or licensed rights to the preparationparticular Licensed Patent.
(b) VIKING agrees to pay and continue to pay all fees and costs to file international and foreign patent applications under the Licensed Patents and Applications. VIKING may, filingat its discretion, prosecution, and maintenance decline to apply for a particular one of the Licensed Patent RightsPatents and Applications in a particular country or region provided that VIKING provides timely notice to ISI of any such determination, which comments whereupon ISI may, at its discretion and suggestions with such reasonable assistance as may be required from VIKING, at its own costs, apply for the particular patent in the particular country or region. Upon applying for the particular patent in the particular country or region, ISI becomes the exclusive owner of all rights in the application for the particular patent in the particular country or region and any patents that are granted therefrom.
(c) For the purposes of Sections 2.4(a) and (b), “timely notice” shall be considered by the other party.mean:
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Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.party in good faith. A-034-2016 NIH Patent License Agreement—Exclusive
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Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility as between Leidos and Licensee, Licensee will be responsible for, but to and consult with, the Licensee Leidos Biomedical in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the LicenseeRights.
7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing a regular basis, promptly furnish copies of all patent-related documents patent filings under Licensed Patent Rights to the ICLeidos Biomedical. In this event, the Licensee shall, subject to the prior approval of the IC, shall select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICLeidos Biomedical. The IC Leidos Biomedical shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC Leidos Biomedical reasonably and as practicable in all aspects of the preparation, filing, prosecution and maintenance of patent applications and CONFIDENTIAL Patent License Agreement – Exclusive Page 8 of 28 [Final] [Theras] [Friday, December 14, 2018] 1 [Page 8 of 28] ● patents included within the Licensed Patent Rights and shall provide the IC Leidos Biomedical with sufficient opportunity to comment on any document patent filing or response to office action that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any timeIn the event Licensee notifies Leidos Biomedical in writing that it decides to discontinue the prosecution or maintenance of certain Licensed Patent Rights, the IC Leidos Biomedical may provide the Licensee with written notice that the IC Leidos Biomedical wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the such Licensed Patent Rights. If the IC Leidos Biomedical elects to reassume assume these responsibilities, the Licensee agrees to cooperate fully with the ICLeidos Biomedical, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the applicable Licensed Patent Rights and to provide the IC Leidos Biomedical with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs of Licensee and Licensee’s patent attorneys associated with transferring patent prosecution responsibilities to an attorney or agent of the ICLeidos Biomedical’s choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may materially affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and, reasonably and as practicable, permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
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Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, the IC PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee.
7.2 Upon the IC’s PHS’ written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the ICPHS. In this event, the Licensee shall, subject to the prior approval of the ICPHS, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the ICPHS. The IC PHS shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC PHS in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC PHS sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
7.3 At any time, the IC PHS may provide the Licensee with written notice that the IC PHS wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC PHS elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the ICPHS, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC PHS with complete copies of any and all documents or other materials that the IC PHS deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s PHS’ choice.
7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.
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Samples: Patent License Agreement (Oculus Innovative Sciences, Inc.)