Common use of Patent Prosecution Clause in Contracts

Patent Prosecution. A. Licensee shall be responsible for applying for, seeking issuance of, and maintaining during the Term the Patent Rights set forth in Appendix 1. The prosecution, filing and maintenance of all Patent Rights applications and patents shall be the primary responsibility of Licensee, except that CMCC shall have reasonable opportunities to review and advise Licensee, Including with respect to the narrowing of claims that affect CMCC’s ownership interest, prior to any response or action submitted to any patent office. However, Licensee shall not narrow claims that affect CMCC’s ownership interest without the prior written consent of CMCC, which consent shall not be unreasonably withheld, conditioned or delayed (it being understood that CMCC may reasonably condition its consent). CMCC shall reasonably cooperate with Licensee in the preparation, filing, prosecution and maintenance of the Patent Rights. Licensee shall instruct its counsel to copy CMCC on all patent application and patent related correspondence. B. Licensee shall be responsible for, and shall bear all costs and expenses for the preparation, filing, prosecution and maintenance of patents underlying the Patent Rights. If Licensee elects for such Patent Rights: (i) to no longer pay the expenses of a patent application or patent in a given portion of the Territory, or (ii) decides to no longer pursue, maintain or retain a particular Patent Right in a given portion of the Territory, (each of (i) and (ii), a “Dropped Patent Right”) Licensee shall notify CMCC in writing not less than sixty (60) days prior to such action and shall thereby surrender its exclusive rights under such Dropped Patent Right. Such notice shall not relieve Licensee from responsibility to pay for Dropped Patent Right related expenses incurred prior to the expiration of the sixty (60) day notice period (or such longer period specified in Licensee’s notice). CMCC shall have the right to assume the filing, prosecution and/or maintenance of such Dropped Patent Right at CMCC’s expense, and with respect to jointly owned rights, in the names of both CMCC and Licensee, and Licensee’s license under this Agreement to such Dropped Patent Right will immediately cease. At CMCC’s request, Licensee will discuss with CMCC entering into an agreement regarding any such Dropped Patent Right (which could include assignment of Licensee’s interest in such Dropped Patent Right to CMCC for present and future payments to Licensee), but neither Party is hereby obligated to enter into any such agreement.

Patent Prosecution. A. CMCC in cooperation with Licensee shall be responsible for applying apply for, seeking seek prompt issuance of, and maintaining maintain during the Term term of this Agreement the Patent Rights set forth in Appendix 11 through patent counsel mutually agreeable to both partners. The parties agree that Xxxxxxxx, Xxxxx, Xxxxx & Xxxxxxx is a mutually acceptable patent counsel as of the date hereof, and that, if Licensee so requests within three (3) months hereof, Xxxxxx and Xxxxxxx would be mutually acceptable. The prosecution, filing and maintenance of all Patent Rights applications and patents shall be the primary responsibility of Licensee, except that CMCC CMCC. Licensee shall have reasonable opportunities to review advise CMCC and advise Licenseeshall cooperate with CMCC in the prosecution, Including with respect filing and maintenance of the Patent Rights. B. Licensee shall reimburse to CMCC the amount of all fees and costs relating to the narrowing of claims that affect CMCC’s ownership interest, prior to any response or action submitted to any patent office. However, Licensee shall not narrow claims that affect CMCC’s ownership interest without the prior written consent of CMCC, which consent shall not be unreasonably withheld, conditioned or delayed (it being understood that CMCC may reasonably condition its consent). CMCC shall reasonably cooperate with Licensee in the preparation, filing, prosecution and maintenance of the Patent RightsRights whether such fees and/or costs were incurred before or after the date of this Agreement. CMCC shall provide to Licensee an itemized invoice of all such fees and Licensee shall instruct its counsel pay to copy CMCC on all patent application and patent related correspondenceamounts due under said invoice within thirty (30) days of the date of said invoice. B. Licensee shall be responsible for, and shall bear all costs and expenses for C. In the preparation, filing, prosecution and maintenance of patents underlying the Patent Rights. If Licensee event that CMCC elects for such Patent Rights: (i) not to no longer pay the expenses of a patent application or patent in a given portion of the Territory, or (ii) decides to no longer pursue, maintain or retain a particular Patent Right in a given portion of the Territorylicensed to Licensee hereunder, CMCC shall so notify Licensee within thirty (each of (i) and (ii), a “Dropped Patent Right”) Licensee shall notify CMCC in writing not less than sixty (6030) days prior to of such action and shall thereby surrender its exclusive rights under such Dropped Patent Right. Such notice shall not relieve decision so that Licensee from responsibility to pay for Dropped Patent Right related expenses incurred prior to the expiration of the sixty (60) day notice period (or such longer period specified in Licensee’s notice). CMCC shall have the right to may assume the filing, prosecution and/or maintenance of such Dropped application or patent at Licensee's expense. In such event, CMCC shall provide to Licensee any authorization necessary to permit Licensee to pursue and/or maintain such Patent Right at CMCC’s expense, and Right. Licensee shall have no further royalty obligations under this Agreement with respect to jointly owned rights, in the names of both CMCC and Licensee, and Licensee’s license under this Agreement to such Dropped Patent Right will immediately cease. At CMCC’s request, Licensee will discuss with CMCC entering into an agreement regarding any such Dropped Patent Right (which could include assignment of Licensee’s interest in such Dropped Patent Right to CMCC for present and future payments to Licensee), but neither Party is hereby obligated to enter into any such agreementRight.

Patent Prosecution. A. Licensee CMCC shall be responsible for applying apply for, seeking seek prompt issuance in all relevant major market countries designated by Licensee of, and maintaining maintain during the Term term of this Agreement the Patent Rights set forth in Appendix 1. The prosecution, filing and maintenance of CMCC reserves the sole right to make all Patent Rights applications and patents shall be the primary responsibility of Licensee, except that CMCC shall have reasonable opportunities to review and advise Licensee, Including final decisions with respect to the narrowing preparation, filing, prosecution and maintenance of claims that affect CMCC’s ownership interest, prior to any response or action submitted to any such patent officeapplications and patents. HoweverAlthough CMCC shall be the client in the attorney-client relationship with patent counsel, Licensee shall not narrow claims have day-to-day responsibility for interaction with such patent counsel relating to prosecution of the Patent Rights, and may provide recommendations to such patent counsel regarding the scope and content of patent applications to be filed and prosecuted to assure that affect CMCC’s ownership the Patent Rights cover all items of commercial interest without the prior written consent to Licensee. Licensee and CMCC each shall receive copies of CMCC, which consent shall not be unreasonably withheld, conditioned or delayed (it being understood that CMCC may reasonably condition its consent). CMCC shall reasonably cooperate all correspondence with Licensee in the respect to such preparation, filing, prosecution and maintenance of the Patent Rights. Licensee Rights in sufficient time to review and provide comments and with file copies after the action is completed, and each shall instruct its counsel to receive a copy CMCC on all patent application and patent related correspondenceof invoices. B. Licensee shall be responsible forreimburse CMCC for all patent costs, past, present and shall bear all costs and expenses future incurred by CMCC for the preparation, filing, prosecution and maintenance of patents underlying the Patent Rights, provided that Licensee shall be notified prior to such costs exceeding $20,000. Past patent costs are the full amount of $2,265 for patents in Appendix 1B and capped at a maximum of no more than $20,000 for the patent applications in Appendix 1 A. Licensee shall pay such costs for the patents and applications in Appendix 1A and Appendix 1B within thirty (30) days after receipt of an invoice covering such costs. Upon request of CMCC, and only upon such CMCC request, Licensee agrees to have CMCC’s patent counsel directly xxxx Licensee and Licensee shall directly pay such invoices in compliance with such counsel’s customary business terms, but in any event not greater than thirty (30) days from receipt of invoice which is not disputed in good faith. If Licensee elects for such Patent Rights: (i) to no longer pay the expenses of a patent application or patent in a given portion of the Territoryincluded within Patent Rights, Licensed Products or (ii) decides to no longer pursueLicensed Processes, maintain or retain a particular Patent Right in a given portion of the Territory, (each of (i) and (ii), a “Dropped Patent Right”) Licensee shall notify CMCC in writing not less than sixty (60) days prior to such action and shall thereby surrender its exclusive rights under such Dropped Patent Rightpatent or patent application. Such notice shall not relieve Licensee from responsibility to pay reimburse CMCC for Dropped Patent Right patent-related expenses incurred prior to the expiration of the sixty (60) day 60)-day notice period (or such longer period specified in Licensee’s notice). CMCC shall have then be free to license its rights to that patent or patent application to any other party on any other terms. C. In the right event CMCC elects, in its sole discretion, not to pursue, maintain or retain a particular Patent Right licensed to Licensee hereunder, then CMCC shall so notify Licensee and, subject to the rights of the United States government and any other contractual obligations to research sponsors when applicable, CMCC shall, provided that the Licensee is not in breach of this Agreement and hasn’t cured such breach during any applicable cure period, authorize Licensee to assume the filing, prosecution and/or maintenance of such Dropped Patent Right application or patent at Licensee’s expense. The parties agree in good faith to discuss and address any issues that resulted in CMCC’s expenseelection not to pursue such Patent Rights. In such event, and with respect CMCC shall provide to jointly owned rights, Licensee reasonable assistance in the names filing, prosecution and/or maintenance of both such application or patent and any authorization necessary to permit Licensee to pursue and/or maintain such Patent Right, on such economic and other terms as the parties shall mutually agree. D. The maintenance of Patent Rights in Appendix 1B are and shall remain under the administration of MIT. MIT shall directly submit invoices for payment to Licensee. Licensee shall be responsible for a twenty five percent (25%) share of past costs and future patent costs going forward. In the event that the third party abandons their rights to the patents in Appendix 1 B, CMCC and Licensee, and MIT shall not be required to subsidize the seventy five percent (75%) share of costs paid by the third party to maintain Licensee’s license under this Agreement share of costs at twenty-five percent (25%). CMCC and Licensee shall negotiate a reasonable expansion in the Field of Use for any of these Patent Rights which Licensee also agrees to such Dropped Patent Right will immediately ceasepay some or all of the 75% share of patent costs. At CMCC’s request, Licensee will discuss with CMCC entering into an agreement regarding any such Dropped Patent Right (which could include assignment then be notified to either pay the new share of Licensee’s interest costs going forward for the patents in such Dropped Patent Right to CMCC for present and future payments to Licensee), but neither Party is hereby obligated to enter into any such agreementAppendix 1B or give up those rights.

Patent Prosecution. A. Licensee CMCC shall be responsible for applying apply for, seeking seek prompt issuance of, and maintaining maintain during the Term term of this Agreement the Patent Rights set forth in Appendix 1. The specifications of any such patent application and any patent issuing thereon shall state, to the extent applicable, “This invention was made with government support under [contract] awarded by [Federal agency]. The government has certain rights in this invention.” The prosecution, filing and maintenance of all Patent Rights applications and patents shall be the primary responsibility of LicenseeCMCC. CMCC shall select outside patent counsel reasonably acceptable to Licensee to conduct such Patent Rights’ activities, except and to prosecute, file and maintain such Patent Rights in those countries as Licensee shall reasonably specify. CMCC and Licensee agree that CMCC Licensee will be copied on all patent correspondence and allowed direct interaction with CMCC’s patent counsel regarding such patent prosecution, filing and maintenance. Licensee shall have reasonable opportunities to review provide recommendations to CMCC and advise Licensee, Including with respect to the narrowing of claims that affect CMCC’s ownership interest, prior to any response or action submitted to any patent office. However, Licensee shall not narrow claims that affect CMCC’s ownership interest without the prior written consent of CMCC, which consent shall not be unreasonably withheld, conditioned or delayed (it being understood that CMCC may reasonably condition its consent). CMCC shall reasonably cooperate with Licensee CMCC in the preparation, filing, prosecution and maintenance of the Patent Rights. CMCC and its outside patent counsel will permit Licensee shall instruct and its patent counsel to copy prepare draft patent applications, draft responses to patent office communications and office actions, and other draft documents pertaining to such Patent Rights’ activities, which shall be submitted to CMCC on and its outside patent counsel for review and consideration. Licensee’s recommendations will not be unreasonably denied, however CMCC reserves the sole right to make all final decisions with respect to the preparation, filing, prosecution and maintenance of such patent application applications and patent related correspondencepatents. B. Licensee shall be responsible forreimburse CMCC for all patent costs, past, present and shall bear all costs and expenses future incurred by CMCC for the preparation, filing, prosecution and maintenance of patents underlying the Patent Rights. Outstanding uninvoiced patent costs are currently approximately $42,000 (forty two thousand) dollars. Licensee shall pay such current costs within ten (10) days of the Effective Date of this Agreement. Upon request of CMCC, and only upon such CMCC request, Licensee agrees to have CMCC’s patent counsel directly xxxx Licensee and Licensee shall directly pay such invoices in compliance with such counsel’s customary business terms, but in any event within thirty (30) days. If Licensee elects for such Patent Rights: (i) to no longer pay the expenses of a patent application or patent in a given portion of the Territoryincluded within Patent Rights, or (ii) decides to no longer pursue, maintain or retain a particular Patent Right in a given portion of the Territory, (each of (i) and (ii), a “Dropped Patent Right”) Licensee shall notify CMCC in writing not less than sixty (60) days prior to such action and shall thereby surrender its exclusive rights under such Dropped Patent Rightpatent or patent application. Such notice shall not relieve Licensee from responsibility to pay reimburse CMCC for Dropped Patent Right patent-related expenses incurred prior to the expiration of the sixty (60) day 60)-day notice period (or such longer period specified in Licensee’s notice). CMCC shall have then be free to license its rights to that patent or patent application to any other party on any other terms. C. In the right event CMCC elects, in its sole discretion, not to pursue, maintain or retain a particular Patent Right licensed to Licensee hereunder, then CMCC shall so notify Licensee in a timely manner and, subject to the rights of the United States government, CMCC will allow Licensee to assume the filing, prosecution and/or maintenance of such Dropped application or patent on such economic and other terms as the parties mutually agree. Licensee may elect to continue to pursue, maintain or retain such Patent Right at CMCC’s expenseRight. In such event, and with respect CMCC shall provide to jointly owned rightsLicensee any authorization necessary to permit Licensee to pursue, in the names of both CMCC and Licensee, and Licensee’s license under this Agreement to maintain and/or retain such Dropped Patent Right will immediately cease. At CMCC’s request, Licensee will discuss with CMCC entering into an agreement regarding any such Dropped Patent Right (which could include assignment of Licensee’s interest in such Dropped Patent Right to CMCC for present and future payments to Licensee), but neither Party is hereby obligated to enter into any such agreementRight.

Patent Prosecution. A. Licensee CMCC shall be responsible for applying apply for, seeking seek prompt issuance of, and maintaining maintain during the Term term of this Agreement the Patent Rights set forth in Appendix 12. The specifications of any such patent application and any patent issuing thereon shall state, to the extent applicable, “This invention was made with government support under [contract] awarded by [Federal agency]. The government has certain rights in this invention.” The prosecution, filing and maintenance of all Patent Rights applications and patents shall be the primary responsibility of LicenseeCMCC in its sole discretion, except that CMCC Licensee shall have reasonable opportunities to review advise CMCC and advise Licensee, Including with respect to the narrowing of claims that affect CMCC’s ownership interest, prior to any response or action submitted to any patent office. However, Licensee shall not narrow claims that affect CMCC’s ownership interest without the prior written consent of CMCC, which consent shall not be unreasonably withheld, conditioned or delayed (it being understood that CMCC may reasonably condition its consent). CMCC shall reasonably cooperate with Licensee CMCC in the preparation, filing, prosecution and maintenance of the Patent Rights. Licensee shall instruct its counsel CMCC reserves the sole right to copy CMCC on make all final decisions with respect to the preparation, filing, prosecution and maintenance of such patent application applications and patent related correspondencepatents. B. Licensee shall be responsible forreimburse CMCC for all out-of-pocket patent costs, past, present and shall bear all costs and expenses future incurred by CMCC for the preparation, filing, prosecution and maintenance of patents underlying the Patent RightsRights provided CMCC has not granted a license under Patent Rights to any third party. In the event CMCC grants a license under Patent Rights to a third party, Licensee’s obligation to pay on-going patent costs under this Agreement will be reduced in proportion to the number of additional licensees. CMCC will notify Licensee promptly in writing when it grants a license under Patent Rights to any third party. CMCC will notify ***Confidential Treatment Requested*** Licensee of CMCC’s determination of the amount of reduction of a payment due under this Paragraph B. Patent costs are currently approximately $[…***…]. Licensee shall pay such current costs after the Effective Date of this Agreement and prior to February 1, 2007. Upon request of CMCC, and only upon such CMCC request, Licensee agrees to have CMCC’s patent counsel directly xxxx Licensee and Licensee shall directly pay such invoices in compliance with such counsel’s customary business terms, but in any event within […***…] days. If Licensee elects for such Patent Rights: (i) to no longer pay the expenses of a patent application or issued patent included within Patent Rights in a given portion of the Territory, or (ii) decides to no longer pursue, maintain or retain a particular Patent Right in a given portion of the Territory, (each of (i) and (ii), a “Dropped Patent Right”) Licensee shall notify CMCC in writing not less than sixty (60) […***…] days prior to such action and shall thereby surrender its exclusive rights under such Dropped patent application, or issued patent to that Field of Use in that portion of the Territory. Thereafter, Licensee will have no further financial obligations with respect to patent expenses for such patent application or issued patent and the license granted under Patent RightRights in this Agreement will not include such patent applications or issued patent. Such notice shall not relieve Licensee from responsibility to pay reimburse CMCC for Dropped Patent Right patent-related expenses incurred prior to the expiration of the sixty (60) day […***…]-day notice period (or such longer period specified in Licensee’s notice). CMCC shall have then be free to license its rights to that patent or patent application to any other party on any other terms. C. In the right event CMCC elects, in its sole discretion, not to pursue, maintain or retain a particular Patent Right licensed to Licensee hereunder, then CMCC shall so notify Licensee and, subject to the rights of the United States government and any other contractual obligations to research sponsors, CMCC may, in its sole discretion, and on such terms if any that the parties may negotiate, authorize Licensee to assume the filing, prosecution and/or maintenance of such Dropped Patent Right application or patent at CMCCLicensee’s expense. In such event, CMCC shall provide to Licensee any authorization necessary to permit Licensee to pursue and/or maintain such Patent Right, on such economic and with respect to jointly owned rights, in other terms as the names of both CMCC and Licensee, and Licensee’s license under this Agreement to such Dropped Patent Right will immediately cease. At CMCC’s request, Licensee will discuss with CMCC entering into an agreement regarding any such Dropped Patent Right (which could include assignment of Licensee’s interest in such Dropped Patent Right to CMCC for present and future payments to Licensee), but neither Party is hereby obligated to enter into any such agreementparties shall mutually agree.

Patent Prosecution. A. Licensee Licensor shall be responsible for applying apply for, seeking seek prompt issuance of, and maintaining maintain during the Term term of this Agreement the Patent Rights set forth in Appendix 12. The prosecution, filing and maintenance of all Patent Rights applications and patents shall be the primary responsibility of Licensee, except that CMCC Licensor. Licensee shall have reasonable opportunities to review advise Licensor, including concerning the selection and/or retention of counsel, and advise Licenseeshall cooperate with Licensor in the prosecution, Including with respect filing and maintenance of the Patent Rights. Licensor agrees to implement requests from Licensee to the narrowing extent such requests are reasonable and not in conflict with the policies and objectives of claims that affect CMCC’s ownership interest, prior to any response or action submitted to any patent office. However, the Licensor. B. Licensee shall not narrow claims that affect CMCC’s ownership interest without reimburse to Licensor the prior written consent amount of CMCC, which consent shall not be unreasonably withheld, conditioned or delayed (it being understood that CMCC may reasonably condition its consent). CMCC shall reasonably cooperate with Licensee in all fees and costs relating to the preparation, filing, prosecution and maintenance of the Patent RightsRights incurred after the date of this Agreement. Licensor shall provide to Licensee an itemized invoice of all such fees and Licensee shall instruct its counsel pay to copy CMCC on Licensor all amounts due under said invoice within ten (10) days of the date of said invoice. If the Patent Rights are licensed to third parties, such patent application and patent related correspondencecosts shall be equitably apportioned. B. Licensee shall be responsible for, and shall bear all costs and expenses for C. In the preparation, filing, prosecution and maintenance of patents underlying the Patent Rights. If Licensee event Licensor elects for such Patent Rights: (i) not to no longer pay the expenses of a patent application or patent in a given portion of the Territory, or (ii) decides to no longer pursue, maintain or retain a particular Patent Right licensed to Licensee hereunder, Licensor shall so notify Licensee in a given portion of the Territory, (each of (i) and (ii), a “Dropped Patent Right”) sufficient time for Licensee shall notify CMCC in writing not less than sixty (60) days prior to such action and shall thereby surrender its exclusive rights under such Dropped Patent Right. Such notice shall not relieve Licensee from responsibility to pay for Dropped Patent Right related expenses incurred prior to the expiration of the sixty (60) day notice period (or such longer period specified in Licensee’s notice). CMCC shall have the right to assume the filing, prosecution and/or maintenance of such Dropped application or patent at Licensee's expense. In such event, Licensor shall provide to Licensee any authorization necessary to permit Licensee to pursue and/or maintain such Patent Right at CMCC’s expense, and Right. Licensee shall have no further royalty obligations under this Agreement with respect to jointly owned rights, in the names of both CMCC and Licensee, and Licensee’s license under this Agreement to such Dropped Patent Right will immediately cease. At CMCC’s request, Licensee will discuss with CMCC entering into an agreement regarding any such Dropped Patent Right (which could include assignment of Licensee’s interest in such Dropped Patent Right to CMCC for present and future payments to Licensee), but neither Party is hereby obligated to enter into any such agreementRight.

Patent Prosecution. A. Licensee CMCC shall be responsible for applying apply for, seeking seek prompt issuance of, and maintaining maintain during the Term term of this Agreement the Patent Rights set forth in Appendix 1. The specifications of any such patent application and any patent issuing thereon shall state, to the extent applicable, "This invention was made with government support under [contract] awarded by [Federal agency]. The government has certain rights in this invention." The prosecution, filing and maintenance of all Patent Rights Rights, including Improvements, Analogue Inventions, and New Developments applications and patents shall be the primary responsibility of LicenseeCMCC in its sole discretion, except that CMCC Licensee shall have reasonable opportunities to review advise CMCC and advise Licensee, Including with respect to the narrowing of claims that affect CMCC’s ownership interest, prior to any response or action submitted to any patent office. However, Licensee shall not narrow claims that affect CMCC’s ownership interest without the prior written consent of CMCC, which consent shall not be unreasonably withheld, conditioned or delayed (it being understood that CMCC may reasonably condition its consent). CMCC shall reasonably cooperate with Licensee CMCC in the preparation, filing, prosecution and maintenance of the Patent Rights, and New Developments applications and patents if such applications and patents are optioned or licensed to Licensee. Licensee shall instruct its counsel CMCC reserves the sole right to copy CMCC on make all final decisions with respect to the preparation, filing, prosecution and maintenance of such patent application applications and patent related correspondencepatents. B. Licensee shall be responsible forreimburse CMCC for all patent costs, past, present and shall bear all costs and expenses future incurred by CMCC for the preparation, filing, prosecution and maintenance of patents underlying the Patent Rights, including Improvements and Analogue Inventions, and New Developments if such New Developments are optioned to Licensee. If Unpaid patent costs accrued under the Existing Agreements are currently approximately $[**]. Licensee elects for shall pay such Patent Rights: (i) to no longer pay the expenses of a patent application or patent in a given portion current costs within [**] days of the Territory, or (ii) decides to no longer pursue, maintain or retain a particular Patent Right in a given portion Effective Date of the Territory, (each this Agreement. Upon request of (i) and (ii), a “Dropped Patent Right”) Licensee shall notify CMCC in writing not less than sixty (60) days prior to such action and shall thereby surrender its exclusive rights under such Dropped Patent Right. Such notice shall not relieve Licensee from responsibility to pay for Dropped Patent Right related expenses incurred prior to the expiration of the sixty (60) day notice period (or such longer period specified in Licensee’s notice). CMCC shall have the right to assume the filing, prosecution and/or maintenance of such Dropped Patent Right at CMCC’s expense, and with respect to jointly owned rights, in the names of both only upon such CMCC and Licensee, and Licensee’s license under this Agreement to such Dropped Patent Right will immediately cease. At CMCC’s request, Licensee will discuss agrees to have CMCC's patent counsel directly xxxx Licensee and Licensee shall directly pay such invoices in compliance with CMCC entering into an agreement regarding any such Dropped Patent Right (which could include assignment of Licensee’s interest in such Dropped Patent Right to CMCC for present and future payments to Licensee)counsel's customary business terms, but neither Party is hereby obligated to enter into in any such agreement.event within thirty