Prosecution of Joint Patents. As between Dimension and Bayer, the Parties agree as follows:
10.4.1 Dimension shall have the sole right to Prosecute patent applications and issued patents within Joint Patents in Dimension’s discretion and at its own expense. Dimension shall provide Bayer with a reasonable opportunity to review and provide comments in connection with the Prosecution of the Joint Patents; and Dimension shall keep Bayer reasonably informed as to all material developments with respect to such Joint Patents and shall supply to Bayer copies of material communications received and filed in connection with the Prosecution of such Joint Patents.
10.4.2 Dimension agrees to Prosecute any patent applications or issued patents within the Joint Patents in good faith. If Dimension decides not to file, to abandon or not to maintain any of such Joint Patents, then Dimension shall provide Bayer with […***…] prior written notice of such decision (or such other longer period of time reasonably necessary to allow Bayer to assume such responsibilities, at the sole discretion of Dimension). In such event, Bayer shall have the right, at its option, to have assigned to it Dimension’s interest in such Joint Patents, and such Patent Rights shall cease to be Dimension Patents.
Prosecution of Joint Patents. The party having the responsibility to file, prosecute and maintain Joint Patents under Article 6.3 shall comply with the procedure set out in Article 6.6.1, and the other Party shall cooperate as set out in Article 6.6.1.
Prosecution of Joint Patents. Calithera shall be responsible for obtaining, preparing, filing, prosecuting and maintaining Patent Rights, in appropriate countries in the Territory, including the countries reasonably requested by HPP, Covering Joint Inventions (“Joint Patents”). The out-of-pocket costs and expenses incurred to obtain, prosecute and maintain Joint Patents shall be [***]. Calithera shall keep HPP informed of the status of all pending Joint Patents. In the event that HPP believes that such patent strategy would have an unreasonable, adverse, economic effect on High Point’s rights under this Agreement (including inventorship or the value of any rights that HPP may obtain under Section 12.5), HPP may elect to submit the dispute to an independent Third Party patent counsel mutually agreed by Calithera and HPP, at HPP’s cost and expense. If such patent counsel determines that such patent strategy would have an unreasonable, adverse economic effect on High Point’s rights under this Agreement (including inventorship or the value of any rights that HPP may obtain under Section 12.5), then Calithera shall incorporate comments and adjust patent strategy as advised by such independent Third Party patent counsel, and Calithera shall [***]. Calithera shall not abandon any Joint Patent without at least thirty (30) days’ prior notice to HPP. If Calithera determines to abandon any Joint Patent in all or any portion of the Territory (the “Abandoned Joint Patent”), Calithera shall notify HPP of such determination. If HPP wishes to continue to prosecute and maintain the Abandoned Joint Patent, Calithera shall have the option to continue to prosecute and maintain the Abandoned Joint Patent at its expense or allow HPP to have the sole right, but not the obligation, to continue to prosecute and maintain the Abandoned Joint Patent [***]. Notwithstanding anything to the contrary, Calithera shall have the option to regain control of prosecution and maintenance of an Abandoned Joint Patent at any time, subject to [***] and [***] for such Abandoned Joint Patent. If Calithera or HPP elects to continue to prosecute and maintain any Abandoned Joint Patent, the other shall reasonably cooperate to transfer prosecution and maintenance of such Abandoned Joint Patent.
Prosecution of Joint Patents. Prior to preparation and filing of any Joint Patent, the Parties shall consult with one another and mutually agree upon a lead Party to file, prosecute and maintain such Joint Patent under the names of both Array and Ono. The Joint Patents shall be prepared and prosecuted by a mutually acceptable patent law firm and allocation of costs for preparation, filing, prosecution and maintenance shall be agreed by the Parties prior to preparation and filing of such Joint Patent. Notwithstanding the foregoing, either Party may elect not to support the filing, prosecution and maintenance of all or part of any Joint Patent in any country in the world.
Prosecution of Joint Patents. Licensee will have the primary responsibility to file, prosecute, maintain and enforce any Patent Covering a Joint Invention (“Joint Patents”) through use of Licensee’s counsel or outside patent attorney at [***] expense. Licensee will keep Xxxxxxx reasonably informed of the prosecution status of the Joint Patents by [***].
Prosecution of Joint Patents. The JDC shall determine which party shall be responsible for obtaining, prosecuting and/or maintaining patents and patent applications, in appropriate countries in the Territory, covering Joint Inventions owned by Quark and Pfizer (“Joint Patents”). The out-of-pocket costs and expenses incurred to obtain, prosecute and maintain Joint Patents shall be: (a) [ * ], and (b) [ * ]. Either party may decline to bear its share of the costs and expenses to file, prosecute and/or maintain any particular Joint Patent in one or more countries. In that case, the other party may undertake the responsibility for filing, prosecuting and/or maintaining such Joint Patent at its own expense, and if it does so, the declining party shall assign to the other party all its right, title and interest to any such Joint Patent(s), and upon such assignment such Joint Patent(s) shall become solely Pfizer Patent Rights or Quark Patent Rights, as the case may be.
Prosecution of Joint Patents. (a) Akebia will have the first right of election to file patent applications for Joint Inventions. If Akebia declines to file such applications then Licensee may do so. On a semi-annual basis, Akebia shall provide to Licensee a written summary of the status of all Akebia Patents, including patent applications within Akebia Patents in the Territory. On the reasonable request of Xxxxxx, Licensee shall cooperate with Akebia in connection with the prosecution of all patent applications included within Joint Patents.
(b) Licensee undertakes without cost to Akebia to obtain all necessary assignment documents for Xxxxxx, to render all signatures that shall be necessary for such patent filings and to assist Xxxxxx in all other reasonable ways that are necessary for the issuance of the patents involved as well as for the maintenance and prosecution of such patents. Akebia shall be responsible for [***] of the costs incurred with respect to the prosecution and maintenance of such Joint Patents.
(c) Should Xxxxxx decide that it is no longer interested in maintaining or prosecuting a particular Joint Patent in the Territory during the Term, it shall promptly advise Licensee of this decision. Licensee may, upon written notice to Akebia, assume such prosecution and maintenance at its sole expense Akebia shall assign such Joint Patent to Licensee at no cost to Licensee. Following such assignment, such patent or patent application shall no longer be considered a Joint Patent and shall be considered a Licensee Patent.
Prosecution of Joint Patents. As between the Parties, (i) LaNova will have the first right, but not the obligation, to control and manage the Prosecution of all Joint Patents in the LaNova Territory, and (ii) TPTX will have the first right, but not the obligation, to control and manage the Prosecution of all Joint Patents in the TPTX Territory, in each case (i) and (ii), at the Prosecuting Party’s sole cost and expense and by counsel of its own choice. Each such Prosecuting Party will consult with the other Party as to the Prosecution of Joint Patents reasonably prior to any deadline or action with any patent office, will furnish to the other Party copies of all relevant drafts and documents reasonably in advance of such consultation, and will consider in good faith all reasonable requests or suggestions of the other Party with respect to such drafts or with respect to strategies for Prosecuting any such Joint Patents. The Parties will attempt in good faith to reach mutual agreement as to all matters concerning strategies for Prosecuting Joint Patents. Each such Prosecuting Party will keep the other Party reasonably informed of progress with regard to the Prosecution of Joint Patents, will provide to the other Party copies of all material patent office submissions within a reasonable amount of time (but not more than [***] days) following submission thereof by such Prosecuting Party. In the event that the Prosecuting Party desires to abandon or cease the Prosecution of any Joint Patent in any country in the Prosecuting Party’s respective territory, the Prosecuting Party will provide reasonable prior written notice to the other Party of such intention to abandon (which notice will, to the extent possible, be given no later than [***] days prior to the next deadline for any action that must be taken with respect to any such Joint Patent in the relevant patent office). In such case, at the other Party’s sole discretion, upon written notice to the Prosecuting Party from the other Party, the other Party may elect to continue the Prosecution of any such Joint Patent, at its sole cost and expense and by counsel of its own choice.
Prosecution of Joint Patents. XXXXXX BIOSCIENCE shall have the first right, but no obligation, to undertake joint patent filings and prosecution in one or more countries respecting jointly held inventions, subject to reimbursement from POLI and INTERCHEM for one-half of any reasonable out-of-pocket expenses XXXXXX BIOSCIENCE incurs in such filing and prosecution. In the event XXXXXX BIOSCIENCE fails to undertake the filing of such a patent application within ninety (90) days of a notice by XXXXXX BIOSCIENCE to POLI or INTERCHEM that it believes the filing of such an application is appropriate, POLI and INTERCHEM may undertake such a filing at their own expense, in which event any subsequently issued patent application shall be owned solely by POLI or INTERCHEM. A PARTY may not assign its rights to any jointly owned invention, application or subsequently issued patent except on the written approval of the other PARTIES to this Agreement, which approval shall not be unreasonably withheld.
Prosecution of Joint Patents. (i) [***] shall, using legal counsel of its choice that is reasonably acceptable to [***], have the first right, but not the obligation, to obtain, prosecute (including any oppositions, post-grant reviews, inter partes proceedings or supplementary protection certificates, in each case in respect of Joint Patents), and maintaining a Joint Patent throughout the world. If [***] declines, or otherwise fails, to initiate any such requested action with respect to a Joint Patent within [***] ([***]) days after notice of the applicable Invention or Information (or, if after initiating any requested action, [***] at any time thereafter fails to [***]), in each case [***] shall have the right to take such action with respect to such Joint Patent. The Parties shall, and shall cause their respective Affiliates, as applicable, to assist and cooperate with one another in, and share equally the cost and expense of, filing, prosecuting and maintaining the Joint Patents. Notwithstanding the above, either Party may decline to pay its share of the costs and expenses for filing, prosecuting and maintaining any Joint Patent in a particular country or particular countries, in which case the declining Party shall assign, and shall cause its Affiliates to assign, to the other Party all of their rights, title, and interest in and to any such Joint Patent in the relevant country or countries whereupon such Joint Patent shall become a Patent owned solely by the relevant Party assignee in such country or countries, as the case may be.
(ii) In connection with the activities set forth in this Section 9.2.3: (a) each Party prosecuting rights under Section 9.2.3 shall consult with the other as to the strategy and prosecution of applications for such Joint Patents and the maintenance or extension of such Joint Patents; (b) each prosecuting Party shall regularly provide the other Party with copies of all Joint Patent applications filed hereunder for such Joint Patents and other material submissions and correspondence with the patent offices in such jurisdictions for such Joint Patents to allow reasonable time to allow for review and comment by the other Party, and in any event at least [***] ([***]) days in advance of the due date of any payment or other administrative action that is required to obtain or maintain such Joint Patent ([***]); (c) such prosecuting Party shall provide the other Party and its patent counsel with an opportunity to consult with the filing Party and its patent cou...
