Common use of Patent Prosecution and Maintenance of Licensee Patents Clause in Contracts

Patent Prosecution and Maintenance of Licensee Patents. Licensee shall have the right, but not the obligation, to prepare, file, prosecute, and maintain the Licensee Patents worldwide, at Licensee’s sole cost and expense. Licensee shall keep Licensor fully informed of all steps with regard to the preparation, filing, prosecution, and maintenance of Licensee Patents, including by providing Licensor with a copy of material communications to and from any patent authority in the Territory regarding such Licensee Patents, and by providing Licensor drafts of any material filings or responses to be made to such patent authorities in the Licensor Territory sufficiently in advance of submitting such filings or responses so as to allow for a reasonable opportunity for Licensor to review and comment thereon. Licensee shall consider in good faith the requests and suggestions of Licensor with respect to such Licensee drafts and with respect to strategies for filing and prosecuting the Licensor Patents in the Licensor Territory. In the event that Licensee decides not to prepare, file, prosecute, or maintain a Licensee Patent in a country in the Licensor Territory, Licensee shall provide reasonable prior written notice to Licensor of such intention (which notice shall, in any event, be given no later than [***] days prior to the next deadline for any action that may be taken with respect to such Licensee Patent in such country), and Licensor shall thereupon have the option, in its sole discretion, to assume the control and direction of the preparation, filing, prosecution, and maintenance of such Licensee Patent in such country. Upon Licensor’s written acceptance of such option, all right and title to such Licensee Patent in such country shall be transferred to Licensor, and thereafter, all costs of such preparation, filing, prosecution, and maintenance shall be the sole responsibility of Licensor. Licensor shall promptly provide Licensee with the appropriate documents for transfer of ownership of such Licensee Patent in such country and Licensee shall promptly execute all such documents at Licensor expense. Notwithstanding the foregoing transfer of ownership, Licensee shall reasonably cooperate with Licensor in such country as provided under Section 7.2.4.

Patent Prosecution and Maintenance of Licensee Patents. (a) Company shall have the sole right to file, prosecute and maintain the Company Patents and the first right to file, prosecute and maintain the Joint Patents (such Company Patents and Joint Patents collectively, the “Licensee Patents”). To the extent that a Company Patent relates to the subject matter of this Agreement and with respect to any Joint Patent, Company shall keep ATSA informed of the course of the filing and prosecution of such Licensee Patents or related proceedings (e.g. interferences, oppositions, re-examinations, reissues, revocations or nullifications) in the Major Markets in a timely manner, and shall take into consideration the advice and recommendations of ATSA in that respect. (b) Company shall bear all costs and expenses of its filing, prosecuting and maintaining the Licensee Patents in the Territory. (c) If Company elects not to file, prosecute or maintain a Joint Patent in a country in the Territory, then it shall notify ATSA in writing at least [***] before any deadline applicable to the filing, prosecution or maintenance of such Joint Patent, as the case may be, or any other date by which an action must be taken to establish or preserve such Joint Patent in such country or possession. In such case, by no later than [***] before any deadline applicable to the filing, prosecution or maintenance of such Joint Patent, or any other date by which an action must be taken to establish or preserve such Joint Patent in such country or possession, ATSA shall have the right, but not the obligation, to prepare, file, prosecute, and maintain pursue the Licensee Patents worldwide, at Licensee’s sole cost and expense. Licensee shall keep Licensor fully informed of all steps with regard to filing or support the preparation, filing, prosecution, and continued prosecution or maintenance of Licensee Patents, including by providing Licensor with a copy of material communications such Joint Patent. If ATSA does not revert to and from any patent authority in the Territory regarding such Licensee Patents, and by providing Licensor drafts of any material filings Company or responses to be made to such patent authorities in the Licensor Territory sufficiently in advance of submitting such filings or responses so as to allow for a reasonable opportunity for Licensor to review and comment thereon. Licensee shall consider in good faith the requests and suggestions of Licensor with respect to such Licensee drafts and with respect to strategies for filing and prosecuting the Licensor Patents in the Licensor Territory. In the event that Licensee decides elects not to prepare, file, prosecute, or maintain a Licensee Patent take such action in a country in the Licensor Territory, Licensee Company shall provide reasonable prior written notice be free to Licensor of such intention (which notice shall, in any event, be given no later than [***] days prior to terminate the next deadline for any action that may be taken with respect to such Licensee Patent in such country), and Licensor shall thereupon have the option, in its sole discretion, to assume the control and direction of the preparation, filing, prosecution, and prosecution or maintenance of such Licensee Patent Joint Patent. If ATSA does elect to take such action in such country. Upon Licensor’s written acceptance a country in the Territory, then it shall notify Company of such option, all right and title to such Licensee Patent in such country shall be transferred to Licensorelection, and thereafterATSA shall have the right at its discretion and expense, all costs to continue prosecution or maintenance of such preparation, filing, prosecution, and maintenance shall be the sole responsibility of Licensor. Licensor shall promptly provide Licensee with the appropriate documents for transfer of ownership of such Licensee Joint Patent in such country and Licensee shall promptly execute all such documents at Licensor expense. Notwithstanding the foregoing transfer of ownership, Licensee Company shall reasonably cooperate with Licensor ATSA in such country as provided under Section 7.2.4this regard.