Post Grant Proceedings Clause Samples
The "Post Grant Proceedings" clause defines the procedures and rights related to legal or administrative challenges to a granted patent after it has been issued. This clause typically outlines how parties may initiate, participate in, or respond to actions such as reexamination, opposition, or invalidity proceedings before patent offices or courts. For example, it may specify notification requirements, cooperation obligations, or cost responsibilities if a patent is challenged. Its core function is to clarify the parties' roles and responsibilities in the event of post-grant disputes, thereby reducing uncertainty and managing risk associated with the ongoing validity of a patent.
Post Grant Proceedings. With respect to this Article 7:
(i) the Party controlling prosecution of a patent or patent application (x) shall have the right to control any Post-Grant Proceeding related to such patent or patent application in the other Party’s name if reasonably necessary and (y) use reasonable endeavors to accommodate suggestions or requests made by the non-controlling Party;
(ii) the Party that is not controlling a Post-Grant Proceeding shall cooperate with the other Party as reasonable requested;
(iii) the Party that is responsible for the cost of patent prosecution for the patent or patent application at issue in the Post-Grant Proceeding shall also bear the cost of the Post-Grant Proceeding;
(iv) the Party that is not obligated to prosecute (or pay) for the prosecution of a patent application shall not be obligated to pursue (or pay) for a Post-Grant Proceeding;
(v) the obligation on a Party hereunder to use reasonable endeavors to conduct a Post-Grant Proceeding shall not extend to pursuing a judicial appeal of an administrative tribunal or agency decision; and
(vi) in the event that Party controlling a Post-Grant Proceeding elects not to participate in or continue such proceeding (including any appeal), such Party shall provide reasonable notice to the other Party to allow such other Party to conduct or assume control the Post-Grant Proceeding, which may be assumed in the controlling Party’s name, if necessary.
Post Grant Proceedings. Amunix at its sole expense shall have the sole and exclusive right to file, prosecute, conduct and defend any post-grant proceedings in the U.S. or internationally of and with the Amunix Patents, and Naia at its sole expense shall have the sole and exclusive right to file, prosecute, and conduct and defend any post-grant proceedings in the U.S. or internationally of and with Naia Improvement Patents, such post-grant proceedings to include (without limitation) interferences, inter partes reexaminations, ex parte reexaminations, inter partes reviews, post-grant reviews, derivation proceedings, supplemental examinations, as well as any other post-grant proceedings available either before or after the implementation of the America Invents Act and any other post-grant proceeding available outside of the U.S.. The Parties shall cooperate with each other in filing, prosecution, and conducting and defending of such proceedings. The Parties shall negotiate in good faith in order mutually agree as to which party shall have the right to conduct and defend any such proceedings of and with Product-specific Patents, and the Party responsible for expenses for such conduct and defenses.
Post Grant Proceedings. (i) By Third Party for Product-Specific PEM Patents or Joint Patents. In the event that PEM becomes aware that a Third Party has filed a post grant proceeding with respect to any Product-Specific PEM Patent or Joint Patent, PEM will notify PAC in writing to that effect within 10 days of becoming aware of such filing. Once such a post grant proceeding has commenced, PEM shall provide in-house patent counsel designated by PAC:
(A) with a copy of any action, communication, letter, or other correspondence issued by the relevant patent office or the third party within at least 10 days of receipt thereof;
(B) with a copy of any response, amendment, paper, or other correspondence to be filed with the relevant patent office no more than 30 days prior to filing the same in any patent office worldwide, unless otherwise agreed by patent counsel for both parties. PAC shall have the right to provide suggestions and recommendations regarding the content of the response, amendment, paper, or other correspondence by no later than 15 days prior to its filing. PEM shall accept any suggestions or recommendations PAC provides;
(C) with a copy of any response, amendment, paper, or other correspondence as filed with the relevant patent office no more than 10 days after PEM receives confirmation from the relevant patent office that the response, amendment, paper, or other correspondence has indeed been filed; and
(D) PEM shall not settle any post grant proceeding a Third Party files without the prior written approval of PAC, not to be unreasonably withheld or delayed.
Post Grant Proceedings. (i) By Third Party for Product-Specific MannKind Patents or Joint Patents. In the event that MannKind becomes aware that a Third Party has filed a post grant proceeding with respect to any Product-Specific MannKind Patent or Joint Patent, MannKind will notify Sanofi in writing to that effect within 10 days of becoming aware of such filing. Once such a post grant proceeding has commenced, MannKind shall provide in-house patent counsel designated by Sanofi:
(A) with a copy of any action, communication, letter, or other correspondence issued by the relevant patent office or the third party within at least 10 days of receipt thereof;
(B) with a copy of any response, amendment, paper, or other correspondence to be filed with the relevant patent office no more than 30 days prior to filing the same in any patent office worldwide, unless otherwise agreed by patent counsel for both parties. Sanofi shall have the right to provide suggestions and recommendations regarding the content of the response, amendment, paper, or other correspondence by no later than 15 days prior to its filing. MannKind shall accept any suggestions or recommendations Sanofi provides;
(C) with a copy of any response, amendment, paper, or other correspondence as filed with the relevant patent office no more than 10 days after MannKind receives confirmation from the relevant patent office that the response, amendment, paper, or other correspondence has indeed been filed; and
(D) MannKind shall not settle any post grant proceeding a Third Party files without the prior written approval of Sanofi, not to be unreasonably withheld or delayed.
Post Grant Proceedings