Common use of Prosecution and Maintenance of Joint Patents Clause in Contracts

Prosecution and Maintenance of Joint Patents. For all patents claiming jointly owned inventions ("Jointly Owned Patents"), the Parties shall work together to develop a reasonable patent strategy appropriate for the technology at issue. DTI shall have the first right, but not the obligation, to prosecute and maintain any Jointly Owned Patents. DTI shall permit Fujisawa to review and comment on any documents filed with the relevant patent authorities in the Territory with respect to any Jointly Owned Patents. Fujisawa shall reimburse DTI for fifty percent (50%) of its expenses in prosecuting and maintaining Jointly Owned Patents in the Territory; provided, however, that Fujisawa may elect to forego its ownership interest in such Jointly Owned Patent application during the sixty (60) day period following the filing of such application, in which case it shall not reimburse DTI and shall assign over its interest. If DTI elects not to prosecute a Jointly Owned Patent, or to abandon any Jointly Owned Patent, it shall provide sixty (60) days written notice to Fujisawa prior to any relevant deadline and Fujisawa shall have the right, but not the obligation, to prosecute and maintain such patent at Fujisawa's expense, and under its own name. DTI shall have the right to grant licenses under any Jointly Owned Patents to any Third Party without the consent of Fujisawa, subject to the license in Section 2.1. Fujisawa shall have the right to grant licenses under any Jointly Owned Patents (i) to any Third Party to make, have made, use, import, export, offer for sale and sell Licensed Products without the consent of DTI, but only so long as this Agreement is in effect, and only in connection with a sublicense permitted under Section 2.2 and (ii) to any Third Party for any other use, without the consent of DTI.

Prosecution and Maintenance of Joint Patents. For all patents claiming jointly owned inventions ("Jointly Owned Patents")With respect to any potentially patentable Joint Invention, the Parties shall work together to develop a reasonable patent strategy appropriate for the technology at issue. DTI CPC shall have the first right, but not right to control the obligation, to prosecute Prosecution and maintain any Jointly Owned Maintenance of Patents covering such Joint Invention (“Joint Patents”). DTI The Parties shall permit Fujisawa to review and comment on any documents filed with the relevant patent authorities share equally in the Territory with respect to any Jointly Owned Patents. Fujisawa shall reimburse DTI for fifty percent (50%) internal costs and external out-of-pocket expenses of its expenses in prosecuting Prosecution and maintaining Jointly Owned Maintenance of Joint Patents in the Territorycovering such Joint Invention; provided, however, that Fujisawa may elect to forego its ownership interest in such Jointly Owned Patent application during the sixty upon thirty (60) day period following the filing of such application, in which case it shall not reimburse DTI and shall assign over its interest. If DTI elects not to prosecute a Jointly Owned Patent, or to abandon any Jointly Owned Patent, it shall provide sixty (6030) days written notice notice, either of CPC or Astellas may elect not to Fujisawa prior to share the internal costs and external out-of-pocket expenses of Prosecution and Maintenance of any relevant deadline such Joint Patent in any country, and Fujisawa thereafter, the non-electing Party shall have the rightbe free, but not the obligationin its discretion, to prosecute control the Prosecution and maintain Maintenance of such patent Joint Patent in such country at Fujisawa's expense, and under its own name. DTI expense and the electing Party shall not have the any right to grant licenses under review and comment upon the Prosecution and Maintenance of such Joint Patent as described in this Section 6.2.3. For clarity, the election of CPC or Astellas not to share internal costs and external out of pocket expenses for Prosecution and Maintenance of any Jointly Owned Joint Patent shall not affect ownership thereof. The Party (Astellas or CPC) controlling Prosecution and Maintenance of such Joint Patent (the “Controlling Party”) shall provide the other Party (the “Other Party”) an opportunity to review and comment upon the text of patent applications within such Joint Patents to filed after the Effective Date at least thirty (30) Business Days before filing with any Third patent office. The Controlling Party without shall provide the consent Other Party with an electronic copy of Fujisawaeach patent application within such Joint Patents as filed, subject to the license in Section 2.1together with notice of its filing date and serial number. Fujisawa shall have the right to grant licenses under any Jointly Owned Patents (i) to any Third Party to make, have made, use, import, export, offer for sale and sell Licensed Products without the consent of DTI, but only For so long as this Agreement the Other Party is sharing the internal costs and external out-of-pocket expenses of Prosecution and Maintenance of any such Joint Patent in effecta given country, the Controlling Party shall keep the Other Party advised of the status of all material communications to and from applicable patent offices in such country, actual and prospective filings or submissions regarding such Joint Patent in such country, and only shall give the Other Party an opportunity to review and comment in connection with a sublicense permitted under Section 2.2 advance on any such communications, filing and (ii) submissions proposed to be sent to any Third patent office in such country and shall reasonably consider comments from the Other Party for potential incorporation into any such filings or submissions. If a Controlling Party determines in its sole discretion to abandon, cease prosecution or not maintain or prepare and file (including filing of a priority patent application, filing of a patent application claiming priority to a priority application, national phase filings of a PCT application, and national phase entry of granted a EPC patent) any Joint Patent controlled by it in any country in the Territory for which the Other Party is sharing internal costs and external out-of-pocket expenses of Prosecution and Maintenance, then the Controlling Party shall provide the Other Party written notice of such determination at least thirty (30) days before any deadline for taking action to avoid abandonment (or other use, without loss of rights) and shall provide the consent of DTIOther Party with the opportunity to Prosecute and Maintain such Joint Patent as the Controlling Party as set forth in this Section.