Patent Prosecution and Costs. Unless otherwise agreed to in the relevant Statement of Work and subject to Section 3.09, the designated owner of the R&D Services Foreground IP arising under a particular Statement of Work shall have the option of preparing, filing, and prosecuting patent applications, and for maintaining all U.S. and foreign patents and patent applications thereon, including the payment of any fees applicable to the foregoing. Each Party shall be responsible for managing its own inventor remuneration program, if it so chooses to have one, including making any payments due to its personnel in connection with any Intellectual Property developed in connection with the Services provided hereunder. Each Party shall remain responsible for inventor remuneration required by local laws for its own inventors in connection with any Intellectual Property developed in connection with the services provided hereunder.
Patent Prosecution and Costs. Article 6 of the Prior Agreement is hereby amended to read in its entirety as follows:
Patent Prosecution and Costs. (i) Licensee agrees to reimburse XXXX for all of the costs incurred by XXXX in filing, prosecuting, and maintaining the Licensed Patents (“Patent Costs”), including those Patent Costs incurred prior to (“Past Patent Costs”) and after (“Future Patent Costs”) the Effective Date, within [***] days of receiving an invoice from XXXX. XXXX will issue an invoice for Past Patent Costs [***] months after execution of this Agreement (which amount is estimated to be at least $[***]) and for Future Patent Costs on a semi-annual basis as such costs are incurred. All invoices for Past Patent Costs and Future Patent Costs will contain supporting information showing reasonable, nonprivileged detail of the Patent Costs incurred and the Licensed Patents to which such Patent Costs pertain. If Licensee fails to pay any Patent Costs by the invoice due date, XXXX will have the right, at its sole discretion, to abandon and/or remove from this Agreement the applicable Licensed Patent(s).
Patent Prosecution and Costs. During the period prior to the expiration or termination of Option Period, Seller shall continue to Prosecute and maintain and shall not abandon any of Seller’s existing Patents covering the A&P Enzymes. Without limiting the foregoing, (a) Seller shall, or shall cause the external law firm prosecuting such Patents to, consult in good faith with Buyer with respect to all material steps to be taken in connection with such Prosecution and maintenance of such Patents (provided, however, that Seller will not be required to disclose any information to Buyer if such disclosure would be reasonably likely to result in any waiver of attorney-client privilege, work product doctrine, joint defense privilege or any other privilege and the parties agree that any disclosure of information pursuant hereto shall not constitute a waiver of any such privilege), and (b) Seller shall promptly provide Buyer with copies of any notices or correspondence received from any Governmental Authority or other Third Party regarding such Patents and consult in good faith with Buyer with respect to any written response or further action in response to such notice. Should any patent applications expire or issue as patents prior to the expiration or termination of the Option Period, prior to the expiration of such patent application or the issuance of such patent, Seller shall, if requested by Xxxxx, file a continuing application claiming priority to such patent to the extent such filing is allowed. Buyer shall, within [***] after Seller’s provision of applicable invoices, reimburse Seller for all reasonable and documented, out-of-pocket costs and expenses of Seller and its Affiliates incurred during the period prior to the expiration or termination of the Option Period for or in connection with the Patent Prosecution and maintenance activities of Seller and its Affiliates in accordance with this Section 9.04; provided that, upon Seller’s written request, Buyer shall pay directly to one or more law firms engaged by Seller or its Affiliates such costs and expenses of such Prosecution. CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED BECAUSE IT IS BOTH (I) NOT MATERIAL AND (II) IS THE TYPE THAT THE REGISTRANT TREATS AS PRIVATE OR CONFIDENTIAL.
Patent Prosecution and Costs. (i) Licensee agrees to reimburse ARRAYJET for pro-rated costs, equitably shared by Licensee and any other licensees of the Licensed Patents (in all fields of use) on a patent/patent application-by-patent/patent application basis, incurred by ARRAYJET in filing, prosecuting and maintaining the Licensed Patents (“Patent Costs”), including those Patent Costs incurred prior to (“Past Patent Costs”) and after (“Future Patent Costs”) the Effective Date, only where such Patent Costs are incurred by virtue of the Licensee requiring ARRAYJET to file, prosecute, or maintain the Licensed Patents in any jurisdiction within the Licensed Territory. Any Patent Costs due in accordance with this clause F(i) shall become due and payable to ARRAYJET within [***] of receiving an invoice from ARRAYJET. Any country for which ARRAYJET files for such patent protection at Licensee’s request and expense shall be included in the Licensed Territory under this Agreement. ARRAYJET reserves the right to file a patent application (including a foreign filing or any continuing U.S. application), at its own expense, in any countries not requested by Licensee pursuant to this clause 4F(i).
Patent Prosecution and Costs
