Common use of Patent Prosecution Decisions Clause in Contracts

Patent Prosecution Decisions. University, in consultation with Company, shall determine in which countries University will file, or cause to be filed, Licensed Patents. University shall request patent counsel to inform Company of the status of the prosecution of the Licensed Patents, including delivering to Company written and electronic communications from all patent offices and foreign counsel, and University shall consult with the Company on the prosecution of the Licensed Patents. Once Company begins reimbursing University for Patent Expenses pursuant to Section A4 “Patent Cost Reimbursement” of Exhibit A “Exclusive Patent License Schedule”, Company’s suggestions and requests regarding patent prosecution will be reasonably considered and included unless detrimental to University’s intellectual property rights. In no event shall Company file a patent application where all of the inventors are under University policy obligated to [XXX] CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. CONFIDENTIAL TREATMENT REQUESTED assign their rights in such patent application to University. In no event shall Company file a patent application where one or more, but not all, of the inventors are under University policy obligated to assign their rights in such patent application to University without University’s prior consent which shall not be unreasonably withheld or delayed.

Appears in 2 contracts

Samples: Exclusive Patent License Agreement, Exclusive Patent License Agreement (Solid Biosciences, LLC)

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Patent Prosecution Decisions. UniversityUniversity and Company will consult on the preparation, in consultation with Company, shall determine in which countries University will file, or cause to be filed, Licensed Patents. University shall request patent counsel to inform Company of the status of the filing and prosecution of the Licensed Patents, including delivering . Patent counsel will be directed to deliver to Company all written and electronic communications to and from all patent offices and foreign counsel, and University shall consult provide summaries of oral communications with the patent offices. Provided Company on the prosecution of the Licensed Patents. Once Company begins reimbursing University for Patent Expenses pursuant to is in compliance with Section A4 A3.6 “Patent Cost ReimbursementExpense Payment” of Exhibit A “Exclusive Patent License Schedule”, Company’s suggestions and requests directions regarding patent preparation, filing and prosecution will be reasonably considered and included considered, along with directions from any other licensees to the Licensed Patents, unless detrimental to University’s intellectual property rights. University and Company will consult prior to deciding in which countries to pursue patent protection and provided Company is in compliance with Section A3.6 “Patent Expense Payment”, patents will be filed in all countries Company designates. University will remain the client of record, and may at its own expense instruct patent counsel to take actions necessary to protect University’s intellectual property rights, if in University’s reasonable opinion, Company actions will result in a loss of rights; provided that for any such actions, if Company declines to reimburse University pursuant to Section A3.6 “Patent Expense Payment” of Exhibit A “License Schedule”, those applications and resultant patents will not be subject to this Agreement. In no event shall will Icosavax Inc. / University of Washington Non-Exclusive License Agreement UW CoMotion Ref. [***] Page 8 of 33 |US-DOCS\130755718.2|| Company file a patent application where all of the inventors are under University policy obligated to [XXX] CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. CONFIDENTIAL TREATMENT REQUESTED assign their rights in such patent application to University. In no event shall Company file a patent application where one or more, but not all, of the inventors are under University HHMI policy obligated to assign their rights in such patent application to University without University’s prior consent which shall not be unreasonably withheld or delayedand/or HHMI.

Appears in 1 contract

Samples: Non Exclusive License Agreement (Icosavax, Inc.)

Patent Prosecution Decisions. UniversityUniversity and Company will consult on the preparation, in consultation with Company, shall determine in which countries University will file, or cause to be filed, Licensed Patents. University shall request patent counsel to inform Company of the status of the filing and prosecution of the Licensed Patents, Patents including delivering to Company all written and electronic communications to and from all patent offices and foreign counsel, and University shall consult provide summaries of oral communications with the patent offices. Provided Company on the prosecution of the Licensed Patents. Once Company begins reimbursing University for Patent Expenses pursuant to is in compliance with Section A4 A3.5 “Patent Cost ReimbursementExpense Payment” of Exhibit A “Exclusive Patent License Schedule”, Company’s suggestions and requests directions regarding patent preparation, filing and prosecution will be reasonably considered and included followed unless detrimental to University’s intellectual property rights. University and Company will consult prior to deciding in which countries to pursue patent protection and provided Company is in compliance with Section A3.5 “Patent Expense Payment” of Exhibit A, patents will be filed in all countries Company designates. University will remain the client of record, and may at its own expense instruct patent counsel to take actions necessary to protect University’s intellectual property rights, if in University’s reasonable opinion, Company actions will result in a loss of rights; provided that for any such actions, if Company declines to reimburse University pursuant to Section A1.1 “Licensed Patents” of Exhibit A, those applications and resultant patents will not be subject to this Agreement. In no event shall will Company file a patent application where all of the inventors are under University policy obligated to [XXX] CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. CONFIDENTIAL TREATMENT REQUESTED assign their rights in such patent application to University. In no event shall Company file a patent application where one or more, but not all, of the inventors are under University policy obligated to assign their rights in such patent application to University without University’s prior consent which shall not be unreasonably withheld or delayed.. Akoya Biosciences, Inc. / University of Washington Exclusive License Agreement UW CoMotion Ref. 43158A Page 7 of 23

Appears in 1 contract

Samples: Certain Confidential (Akoya Biosciences, Inc.)

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Patent Prosecution Decisions. University, in consultation with Company, shall determine in which countries University will file, or cause to be filed, Licensed Patents. University shall request patent counsel to inform Company of the status of the prosecution of the Licensed Patents, including delivering to Company written and electronic communications from all patent offices and foreign counsel, and University shall consult with the Company on the prosecution of the Licensed Patents. Once Company begins reimbursing University for Patent Expenses pursuant to Section A4 “Patent Cost Reimbursement” of Exhibit A “Exclusive Patent License Schedule”, Company’s suggestions and requests regarding patent prosecution will be reasonably considered and included unless detrimental to University’s intellectual property rights. In no event shall Company file a patent application where all of the inventors are under University policy obligated to [XXX] CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. CONFIDENTIAL TREATMENT REQUESTED assign their rights in such patent application to University. In no event shall Company file a patent application where one or more, but not all, of the inventors are under University policy obligated to assign their rights in such patent application to University without University’s prior consent which shall not be unreasonably withheld or delayed.

Appears in 1 contract

Samples: Exclusive Patent License Agreement (Solid Biosciences Inc.)

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