PATENT PROSECUTION, MAINTENANCE, & INFRINGEMENT Clause Samples
The "Patent Prosecution, Maintenance, & Infringement" clause outlines the responsibilities and procedures related to obtaining, upholding, and defending patents that arise from the agreement. It typically specifies which party is responsible for filing and prosecuting patent applications, paying maintenance fees, and taking action against potential infringers. For example, one party may be designated to handle all patent filings and bear associated costs, while both parties may need to cooperate in case of infringement. This clause ensures that valuable intellectual property is properly protected and maintained, and that there is a clear process for addressing unauthorized use, thereby reducing disputes and safeguarding the interests of the parties involved.
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PATENT PROSECUTION, MAINTENANCE, & INFRINGEMENT. 4.1 Prosecution & Maintenance. JHU, at Company’s expense, shall file, prosecute and maintain all patents and patent applications specified under PATENT RIGHTS and, subject to the terms and conditions of this Agreement, Company shall be licensed thereunder. Title to all such patents and patent applications shall reside in JHU. JHU shall have full and complete control over all patent matters in connection therewith under the PATENT RIGHTS, provided however, that JHU shall (a) cause its patent counsel to timely copy Company on all official actions and written correspondence with any patent office and timely provide Company advance notification of any filing deadline, and (b) allow Company an opportunity to comment and advise JHU. JHU shall consider and reasonably incorporate all comments and advice from Company and JHU shall comply with foreign filing decisions provided by Company. Upon request by Company, JHU shall consider allowing Company’s patent counsel to prosecute patent applications relating to the PATENT RIGHTS. By concurrent written notification to JHU and its patent counsel at least thirty (30) days in advance (or later at JHU’s discretion) of any filing or response deadline, or fee due date, Company may elect not to have a patent application filed in any particular country or region or not to pay expenses associated with prosecuting or maintaining any patent application or patent, provided that Company pays for all costs incurred up to JHU’s receipt of such notification. Failure to provide such notification can be considered by JHU to be Company’s authorization to proceed at Company’s expense. Upon such notification, JHU may file, prosecute, and/or maintain such patent applications or patent at its own expense and for its own benefit, and any rights or license granted hereunder held by Company, AFFILIATED COMPANIES or SUBLICENSEE(S) relating to the PATENT RIGHTS which comprise the subject of such patent applications or patent solely with respect to the particular country or region, shall terminate. For the avoidance of any doubt, such termination shall not affect any rights or license granted hereunder held by Company, AFFILIATED COMPANIES or SUBLICENSEE(S) relating to the PATENT RIGHTS which comprise the subject of patent applications or patents in any other country or region.
PATENT PROSECUTION, MAINTENANCE, & INFRINGEMENT. 4.1 Prosecution & Maintenance. Company, at its own expense, shall file, prosecute and maintain all patens and patent applications specified under PATENT RIGHTS and Company shall be licensed thereunder. Title to all such patents and patent applications shall reside in JHU. Company shall control over all patent matters in connection therewith under the PATENT RIGHTS, subject to review and approval by JHU, such approval not to be unreasonably withheld, and shall keep JHU informed of its actions by sending copies of all filings with the PTO to JHU. In any country where Company elects not to have a patent application filed or fails to prosecute or maintain a patent application or patent, JHU may file, prosecute, and/or maintain a patent application or patent at its own expense and for its own exclusive benefit and Company thereafter shall not be licensed under such patent or patent application.
PATENT PROSECUTION, MAINTENANCE, & INFRINGEMENT. 4.1 Prosecution & Maintenance. [***], shall file, prosecute and maintain all patents and patent applications specified under PATENT RIGHT(S) and, subject to the terms and conditions of this Agreement, [***]. [***] shall have full and complete control over all patent matters in connection therewith under the [***].
PATENT PROSECUTION, MAINTENANCE, & INFRINGEMENT. 4.1 Prosecution & Maintenance. JHU, at Company’s expense, shall maintain all patents specified under PATENT RIGHTS upon authorization of Company and Company shall be licensed thereunder. Title to, all such patents and patent applications shall reside in JHU. JHU shall have full and complete control over all patent matters in connection therewith under the PATENT RIGHTS, provided however, that JHU will consider and incorporate reasonable comments received from Company. Company will provide payment authorization to JHU at least one (1) month before an action is due, provided that Company has received timely notice of such action from JHU. Failure to provide authorization can be considered by JHU as a Company decision not to authorize an action. In any country where Company elects not to have a patent application filed or to pay expenses associated with filing, prosecuting, or maintaining a patent application or patent, JHU may file, prosecute, and/or maintain the patent application or patent at its own expense and for its own exclusive benefit and Company thereafter shall not be licensed under such patent or patent application.
PATENT PROSECUTION, MAINTENANCE, & INFRINGEMENT. 4.1 Prosecution & Maintenance. [***], shall file, prosecute and maintain all patents and patent applications specified under PATENT RIGHT(S) and, subject to the terms and conditions of this Agreement, [***]. [***] shall have full and complete control over all patent matters in connection therewith under the PATENT RIGHT(S), provided however, that [***]. By concurrent written notification to [***] and its patent counsel at least [***] in advance (or later at [***] discretion) of any filing or response deadline, or fee due date, [***] may elect [***]. Upon such notification, [***] may [***]. *** Certain information in this agreement has been omitted and filed separately with the Securities and Exchange Commission. [***] indicates that text has been omitted and is the subject of a confidential treatment request.
PATENT PROSECUTION, MAINTENANCE, & INFRINGEMENT. 5.1 Nothing in this Agreement shall be construed as a warranty or representation by FUJISAWA as to the validity or scope any LICENSED PATENT RIGHTS.
5.2 In the event that either party shall become aware of infringement of LICENSED PATENT RIGHTS by any third-party in the TERRITORY, it shall immediately so inform the other party. FUJISAWA may, but shall not be obligated to, institute action for any of such infringement of LICENSED PATENT RIGHTS. In this event OSIP shall give all reasonable assistance except for financial assistance to FUJISAWA, and may, if accepted by FUJISAWA, join such suit with its own counsel at its own expense and seek its own damages and other relief. If FUJISAWA does not institute any infringement proceedings against said third party within ninety (90) days (unless a shorter period is reasonably required to protect the intellectual property in question, then such shorter period shall apply) after confirming that said third party appears to be infringing LICENSED PATENT RIGHTS, then OSIP may institute such infringement proceedings against said third party at its expense; provided, however, that if APPLICABLE LAW of the relevant jurisdiction does not allow OSIP to institute such infringement proceedings as the licensee of LICENSED PATENT RIGHTS and OSIP reasonably demonstrates that the suspected infringement would materially adversely affect OSIP’s exploitation of LICENSED PATENT RIGHTS, as contemplated hereunder, FUJISAWA shall, at OSIP’s expense and upon OSIP’s written request, institute such infringement proceedings with counsel acceptable to both OSIP and FUJISAWA. In either event, FUJISAWA shall give all reasonable assistance except for financial assistance to OSIP and may join such suit with its own counsel at its own expense and seek its own damages and other relief. If neither party chooses to join the other, any amounts payable by said third party as a result of such proceedings shall belong to the party, which has instituted such proceedings.
5.3 FUJISAWA shall be responsible at its sole discretion for the prosecution and maintenance of LICENSED PATENT RIGHTS. FUJISAWA shall not abandon any LICENSED PATENT RIGHTS in any country of the TERRITORY, without first offering to assign it to OSIP. Such assignment shall be free of charge, provided, however, that any and all costs incurred or paid in relation to such assignment shall be borne by OSIP.
PATENT PROSECUTION, MAINTENANCE, & INFRINGEMENT