Patent Prosecution and Maintenance of Licensor Patents. Licensor shall have the right, but not the obligation, through the use of internal or outside counsel reasonably acceptable to Licensee (which shall include Licensor’s current outside counsel as of the Execution Date), to prepare, file, prosecute, and maintain the Licensor Patents worldwide, at Licensor’s sole cost and expense. Licensor shall keep Licensee fully informed of all step with regard to the preparation, filing, prosecution, and maintenance of Licensor Patents, including by providing Licensee with a copy of material communications to and from any patent authority in the Territory regarding such Licensor Patents, and by providing Licensee drafts of any material filings or responses to be made to such patent authorities in the Licensee Territory sufficiently in advance of submitting such filings or responses so as to allow for a reasonable opportunity for Licensee to review and comment thereon. Licensor shall consider in good faith the requests and suggestions of Licensee with respect to such Licensor drafts and with respect to strategies for filing and prosecuting the Licensor Patents in the Licensee Territory. Notwithstanding the foregoing, Licensor shall promptly inform Licensee of any adversarial patent office proceeding or sua sponte filing, including a request for, or filing or declaration of, any interference, opposition, or reexamination relating to a Licensor Patent in the Territory. The Parties shall thereafter consult and cooperate to determine a course of action with respect to any such proceeding in the Licensee Territory and Licensor shall consider in good faith all comments, requests and suggestions provided by Licensee. Licensor shall not initiate any such adversarial patent office proceeding relating to a Licensor Patent in the Licensee Territory without first consulting Licensee. In the event that Licensor decides not to prepare, file, prosecute, or maintain a Licensor Patent in a country in the Licensee Territory, Licensor shall provide reasonable prior written notice to Licensee 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 Licensor Patent in such country), and subject to the rights of Dartmouth and UT under the Dartmouth Agreement and the UT Agreement, Licensee shall thereupon have the option, in its sole discretion, to assume the control and direction of the preparation, filing, prosecution, and maintenance of such Licensor Patent in such country on Licensor’s behalf. Upon Licensee’s written acceptance of such option, Licensee shall assume the responsibility and control for the preparation, filing, prosecution, and maintenance of such specific Licensor Patent, as well as all costs that accrue in connection therewith. In such event, Licensor shall reasonably cooperate with Licensee in such country as provided under Section 7.2.4.
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Samples: License Agreement (Reata Pharmaceuticals Inc), License Agreement (Reata Pharmaceuticals Inc)
Patent Prosecution and Maintenance of Licensor Patents. Licensor shall have the right, but not the obligation, through the use of internal or outside counsel reasonably acceptable to Licensee (which shall include Licensor’s current outside counsel as of the Execution Date), to prepare, file, prosecute, and maintain the Licensor Patents worldwide, at Licensor’s sole cost and expense. Licensor shall keep Licensee fully informed of all step with regard to the preparation, filing, prosecution, and maintenance of Licensor Patents, including by providing Licensee with a copy of material communications to and from any patent authority in the Territory regarding such Licensor Patents, and by providing Licensee drafts of any material filings or responses to be made to such patent authorities in the Licensee Territory sufficiently in advance of submitting such filings or responses so as to allow for a reasonable opportunity for Licensee to review and comment thereon. Licensor shall consider in good faith the requests and suggestions of Licensee with respect to such Licensor drafts and with respect to strategies for filing and prosecuting the Licensor Patents in the Licensee Territory. Notwithstanding the foregoing, Licensor shall promptly inform Licensee of any adversarial patent office proceeding or sua sponte filing, including a request for, or filing or declaration of, any interference, opposition, or reexamination relating to a Licensor Patent in the Territory. The Parties shall thereafter consult and cooperate to determine a course of action with respect to any such proceeding in the Licensee Territory and Licensor shall consider in good faith all comments, requests and suggestions provided by Licensee. Licensor shall not initiate any such adversarial patent office proceeding relating to a Licensor Patent in the Licensee Territory without first consulting Licensee. In the event that Licensor decides not to prepare, file, prosecute, or maintain a Licensor Patent in a country in the Licensee Territory, Licensor shall provide reasonable prior written notice to Licensee 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 Licensor Patent in such country), and subject to the rights of Dartmouth and UT under the Dartmouth Agreement and the UT Agreement, Licensee shall thereupon have the option, in its sole discretion, to assume the control and direction of the preparation, filing, prosecution, and maintenance of such Licensor Patent in such country on Licensor’s behalf. Upon Licensee’s written acceptance of such option, Licensee shall assume the responsibility and control for the preparation, filing, prosecution, and maintenance of such specific Licensor Patent, as well as all costs that accrue in connection therewith. In such event, Licensor shall reasonably cooperate with Licensee in such country as provided under Section 7.2.4.suggestions
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Patent Prosecution and Maintenance of Licensor Patents. Licensor Licensee shall have the right, but not the obligation, through the use of internal or outside counsel reasonably acceptable to Licensee (which shall include Licensor’s current outside counsel as of the Execution Date), to prepare, file, prosecute, and maintain all of the Licensor Patents worldwidein the Territory, which activities shall be at LicensorLicensee’s sole cost and expense. Licensee shall have the right to use counsel of its choice; provided that any such counsel shall be subject to Licensor’ written consent, which shall not be unreasonably withheld, conditioned or delayed. Licensor shall keep provide to Licensee fully informed and its counsel copies of all step prosecution records and official correspondence for Licensor Patents that are not publicly available and are reasonably requested by Licensee within [***] days after the Effective Date; provided Licensor shall have no obligation to provide any material that is privileged. Licensee shall keep Licensor reasonably informed with regard to the preparation, filing, prosecution, and maintenance of all Licensor Patents, including by providing Licensee with a copy of material communications to and from any patent authority in the Territory regarding such . Licensor Patents, and by providing Licensee drafts of any material filings or responses to be made to such patent authorities in the Licensee Territory sufficiently in advance of submitting such filings or responses so as to allow for a reasonable shall have an opportunity for Licensee to review and comment thereon. Licensor upon patent prosecution and filing decisions prior to the submission of filing and correspondences to the patent authorities, and Licensee shall consider Licensor’s comments in good faith the requests and suggestions of Licensee with respect to such Licensor drafts and with respect to strategies for filing and prosecuting the Licensor Patents in the Licensee Territory. Notwithstanding the foregoing, Licensor shall promptly inform Licensee of any adversarial patent office proceeding or sua sponte filing, including a request for, or filing or declaration of, any interference, opposition, or reexamination relating to a Licensor Patent in the Territory. The Parties shall thereafter consult and cooperate to determine a course of action with respect to any such proceeding in the Licensee Territory and Licensor shall consider in good faith all comments, requests and suggestions provided by Licensee. Licensor shall not initiate any such adversarial patent office proceeding relating to a Licensor Patent in the Licensee Territory without first consulting Licenseefaith. In the event that Licensor Licensee decides not to prepare, file, prosecute, or maintain a Licensor Patent in a country in the Country, Licensee Territory, Licensor shall provide reasonable prior written notice to Licensee of such intention (which notice shall, in any event, be given no later than [***] days prior written notice to the next deadline for any action that may be taken with respect to Licensor of such Licensor Patent in such country)intention, and subject to the rights of Dartmouth and UT under the Dartmouth Agreement and the UT Agreement, Licensee 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 Licensor Patent at its expense in such country on Licensor’s behalf. Upon Licensee’s written acceptance of such option, Licensee shall assume the responsibility and control for the preparation, filing, prosecution, and maintenance of such specific Licensor Patent, as well as all costs that accrue in connection therewithCountry. In such an event, Licensee will (a) forgo all right, title, and interest in and to said Licensor Patent and other documentation related thereto (each, a “Reverted Patent”), and (b) Licensee shall reasonably cooperate with Licensee Licensor in such country Country as provided under Section 7.2.45.2.4. The Reverted Patents shall no longer be subject to the license grant under Section 2.1.
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