PATENT PROSECUTION AND PROTECTION. 4.1 The PARTIES are equal owners of INVENTION. 4.2 The PARTIES will jointly select and approve outside counsel prior to incurring any PATENT EXPENSES. 4.3 The PARTIES will each use their best efforts to ensure that JOINT INVENTORS fully cooperate in the preparation, filing, prosecution and maintenance of PATENT RIGHTS. 4.4 UNIVERSITY is responsible for preparing, filing, prosecuting, defending, and maintaining PATENT RIGHTS made in the name of both PARTIES and will consult with and keep XXXX fully informed of PATENT RIGHTS status. UNIVERSITY will copy XXXX on all patent related communications, including, but not limited to, patent applications, office actions, and responses. The PARTIES each have the right to review and comment upon the wording of specifications, claims, and responses to office actions prior to their submission to the appropriate patent office. PATENT RIGHTS will not be abandoned without the written consent of both PARTIES. If UNIVERSITY anticipates extraordinary PATENT EXPENSES arising from the preparation, filing, prosecution, maintenance or defense of any patent application or patent contemplated by this AGREEMENT, then UNIVERSITY will provide XXXX with full details and together the PARTIES will determine a mutually acceptable course of action prior to incurring such expenditures. 4.5 Either PARTY may, upon reasonable written notice to the other PARTY, discontinue paying its portion of the PATENT EXPENSES associated with any particular patent application or patent within any national jurisdiction (Discontinuting PARTY). The Continuing PARTY may continue to pay PATENT EXPENSES and in so doing will own all right, title and interest in and to that patent application or patent within such national jurisdiction. The Discontinuing PARTY will have no further rights in and to that particular patent application or patent within such national jurisdiction and will execute any assignments necessary to transfer full title to the Continuing PARTY.
Appears in 3 contracts
Samples: Joint Ownership Agreement, Institutional Royalty Sharing Agreement, Inter Institutional Royalty Sharing Agreement
PATENT PROSECUTION AND PROTECTION. 4.1 The PARTIES are equal owners of INVENTION.
4.2 The PARTIES will jointly select and approve outside counsel prior to incurring any PATENT EXPENSES.
4.3 The PARTIES will each use their best efforts to ensure that JOINT INVENTORS fully cooperate in the preparation, filing, prosecution and maintenance of PATENT RIGHTS.
4.4 UNIVERSITY UT SOUTHWESTERN is responsible for preparing, filing, prosecuting, defending, and maintaining PATENT RIGHTS made in the name of both PARTIES and will consult with and keep XXXX fully informed of PATENT RIGHTS status. UNIVERSITY UT SOUTHWESTERN will copy XXXX on all patent related communications, including, but not limited to, patent applications, office actions, and responses. The PARTIES each have the right to review and comment upon the wording of specifications, claims, and responses to office actions prior to their submission to the appropriate patent office. PATENT RIGHTS will not be abandoned without the written consent of both PARTIES. If UNIVERSITY UT SOUTHWESTERN anticipates extraordinary PATENT EXPENSES arising from the preparation, filing, prosecution, maintenance or defense of any patent application or patent contemplated by this AGREEMENT, then UNIVERSITY UT SOUTHWESTERN will provide XXXX with full details and together the PARTIES will determine a mutually acceptable course of action prior to incurring such expenditures.
4.5 Either PARTY may, upon reasonable written notice to the other PARTY, discontinue paying its portion of the PATENT EXPENSES associated with any particular patent application or patent within any national jurisdiction (Discontinuting PARTY). The Continuing PARTY may continue to pay PATENT EXPENSES and in so doing will own all right, title and interest in and to that patent application or patent within such national jurisdiction. The Discontinuing PARTY will have no further rights in and to that particular patent application or patent within such national jurisdiction and will execute any assignments necessary to transfer full title to the Continuing PARTY.
Appears in 3 contracts
Samples: Inter Institutional Royalty Sharing Agreement, Joint Ownership Agreement, Royalty Sharing Agreement
PATENT PROSECUTION AND PROTECTION. 4.1 The PARTIES are will be joint and equal owners of INVENTIONINVENTION and PATENT RIGHTS.
4.2 The PARTIES will jointly select and approve outside counsel prior to incurring any PATENT EXPENSES.
4.3 The PARTIES will each use their best efforts to ensure assure that JOINT INVENTORS fully cooperate in the preparation, filing, prosecution and maintenance of PATENT RIGHTS.
4.4 UNIVERSITY UT SOUTHWESTERN is responsible for preparing, filing, prosecuting, defending, prosecuting and maintaining PATENT RIGHTS made in the name of both PARTIES and will consult with and keep XXXX fully informed as to the status of PATENT RIGHTS statuswhich will be made in the name of both PARTIES. UNIVERSITY UT SOUTHWESTERN will copy XXXX on all patent related communications, including, but not limited to, patent applications, office actions, actions and responses. The PARTIES parties each have the right to review and comment upon the wording of specifications, claims, claims and responses to office actions prior to their submission to the appropriate patent office. Prosecution or maintenance of any patent and/or patent applications included in PATENT RIGHTS will not be abandoned without the written consent of both PARTIESUT SOUTHWESTERN and XXXX. If UNIVERSITY UT SOUTHWESTERN anticipates any extraordinary PATENT EXPENSES expenditures arising from the preparation, filing, prosecution, maintenance or defense of any patent application or patent contemplated by this AGREEMENT, then UNIVERSITY UT SOUTHWESTERN will provide XXXX with full details and together the PARTIES parties will determine a mutually acceptable course of action prior to incurring such expenditures.
4.5 Either PARTY may, upon reasonable written notice to the other PARTY, discontinue paying its portion of the PATENT EXPENSES associated with any particular patent application or patent within any national jurisdiction (Discontinuting PARTY)jurisdiction. The Continuing If a PARTY decides to discontinue paying the PATENT EXPENSES for a particular patent application or patent within any national jurisdiction, the other PARTY may continue to pay PATENT EXPENSES and such expenses in so doing which event, the paying PARTY will own all right, title and interest in and to that patent application or patent within such national jurisdiction. The Discontinuing jurisdiction and the PARTY discontinuing payment will have no further rights in and to that particular patent application or patent within such national jurisdiction and will execute any assignments necessary to transfer full title to the Continuing paying PARTY.
Appears in 2 contracts
Samples: Joint Ownership Agreement, Joint Ownership Agreement
PATENT PROSECUTION AND PROTECTION. 4.1 The PARTIES are equal owners of INVENTION.
4.2 The PARTIES will jointly select and approve outside counsel prior to incurring any PATENT EXPENSES.
4.3 The PARTIES will each use their best efforts to ensure that JOINT INVENTORS fully cooperate in the preparation, filing, prosecution and maintenance of PATENT RIGHTS.
4.4 UNIVERSITY ROCHESTER is responsible for preparing, filing, prosecuting, defending, and maintaining PATENT RIGHTS made in the name of both PARTIES and will consult with and keep XXXX fully informed of PATENT RIGHTS status. UNIVERSITY ROCHESTER will copy XXXX on all patent related communications, including, but not limited to, patent applications, office actions, and responses. The PARTIES each have the right to review and comment upon the wording of specifications, claims, and responses to office actions prior to their submission to the appropriate patent office. PATENT RIGHTS will not be abandoned without the written consent of both PARTIES. If UNIVERSITY ROCHESTER anticipates extraordinary PATENT EXPENSES arising from the preparation, filing, prosecution, maintenance or defense of any patent application or patent contemplated by this AGREEMENT, then UNIVERSITY ROCHESTER will provide XXXX with full details and together the PARTIES will determine a mutually acceptable course of action prior to incurring such expenditures.
4.5 Either PARTY may, upon reasonable written notice to the other PARTY, discontinue paying its portion of the PATENT EXPENSES associated with any particular patent application or patent within any national jurisdiction (Discontinuting PARTY). The Continuing PARTY may continue to pay PATENT EXPENSES and in so doing will own all right, title and interest in and to that patent application or patent within such national jurisdiction. The Discontinuing PARTY will have no further rights in and to that particular patent application or patent within such national jurisdiction and will execute any assignments necessary to transfer full title to the Continuing PARTY.
Appears in 1 contract
Samples: Inter Institutional Agreement