Prosecution of Licensed Patents. As between Licensor and Licensee, the Parties agree as follows:
7.1.1 Licensor shall have the sole right, but not the obligation, to Prosecute patent applications and issued patents within Licensed Patents, in Licensor’s sole discretion. Subject to Section 7.1.3, Licensor shall provide Licensee with a reasonable opportunity to review and provide comments in connection with the Prosecution of the Licensed Patents; and Licensor shall keep Licensee reasonably informed as to all material developments with respect to such Licensed Patents and shall supply to Licensee copies of material communications received and filed in connection with the Prosecution of such Licensed Patents.
7.1.2 Nothing in this Agreement obligates Licensor to continue to Prosecute any patent applications or issued patents, and Licensee acknowledges that Licensor shall have no obligation to undertake any inter-party proceedings, such as oppositions, inter partes review, or interferences, or to undertake any re-examination or re-issue proceedings, in either case, with respect to the Licensed Patents.
7.1.3 Licensee acknowledges that The Trustees of the University of Pennsylvania control Prosecution of the Licensed Patents, with Licensor having certain rights to review. Licensee acknowledges and agrees that (a) the rights and obligations under this Section 7.1 are subject to the rights of the REGENXBIO Licensors set forth in the GSK Agreement and Penn Agreement with respect to the Licensed Patents, and (b) Licensor’s obligations under this Agreement only apply to the extent of Licensor’s rights with respect to participation in Prosecuting the Licensed Patents under the GSK Agreement and the Penn Agreement.
Prosecution of Licensed Patents. 7.1.1 LICENSEE agrees to accept liaison and financial responsibilities, as hereinafter set forth, for the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, of the Licensed Applications listed in Section 1.2, and additional applications as the parties may subsequently agree. Said financial responsibilities shall not only include the costs of prosecution but also the payment of maintenance fees, where required, to maintain said patent applications and patents, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep LICENSOR informed of all steps in the prosecution and maintenance of said Licensed Applications and Licensed Patents. Notice of prosecution and maintenance of said Licensed Applications and Licensed Patents shall be sent by express courier delivery to: Internal IP Counsel Office of Technology Transfer The University of Arizona 000 X. Xxxxxx Xxxxxx, Xxxx 000 Xxxxxx, XX 00000-0000 If, for any reason, prosecution or maintenance of a particular patent application or patent in a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do so. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent and said patent application or patent shall no longer be considered part of Licensed Applications or Licensed Patents for purposes of this Agreement or any sublicense derived herefrom. Within two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the patent applications constituting said Licensed Applications to the patent lawyer nominated by LICENSOR to continue prosecution of patents abandoned by LICENSEE.
Prosecution of Licensed Patents. Subject to the provisions of this Section 9.2, Xxxxxx, at its sole discretion and expense, will prosecute and determine the strategy of prosecution of the Licensed Patents.
(a) Zosano shall, at least twice in each calendar year and at minimum intervals of six (6) months, during the Term provide Novo Nordisk with any changes to the list of Licensed Patents, including relevant filing, priority, and status information, beginning on the date that is six (6) calendar months following the Effective Date.
(b) Xxxxxx shall provide Novo Nordisk with timely notification regarding any information, excluding the correspondence covered by clause (c) below, it discovers during the Term that may be reasonably considered to adversely impact the validity, enforceability, scope or term of any Licensed Patent.
(c) If requested by Novo Nordisk, Zosano shall timely provide Novo Nordisk with copies of all material correspondence from any Patent Authority regarding Licensed Patents, provided such material correspondence cannot be obtained from a Patent Authority website. CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. DOUBLE ASTERISKS [**] DENOTE OMISSIONS. Page 29 of 52
(d) If requested by Novo Nordisk, Zosano shall provide Novo Nordisk with a copy of any proposed filing with any Patent Authority in connection with proceedings before any Patent Authority with Licensed Patents and shall provide to Novo Nordisk a reasonable opportunity (at least 10 calendar days) to comment on any such proposed filing with respect to such Licensed Patents, which comments Xxxxxx shall consider in good faith.
(e) If Xxxxxx elects to discontinue prosecution or maintenance of any Licensed Patent, Xxxxxx shall so advise Novo Nordisk in writing at least sixty (60) calendar days in advance of such discontinuance and, if requested by Novo Nordisk, shall discuss with Novo Nordisk Zosano’s reasons for such discontinuance. If requested by Novo Nordisk and at Novo Nordisk’s cost, Xxxxxx will or authorize Novo Nordisk to take action to prevent such abandonment of such Licensed Patent, unless Xxxxxx has a material business or legal reason for not taking such action.
(f) In connection with Section 6.4, for Licensed Patents, which Novo Nordisk lists in the Orange Book for the Licensed Product, Zosano shall timely provide Novo Nordisk with any updated patent, reexamination or reissue numbers within fifteen (15) days of issuance by the Patent Authority.
Prosecution of Licensed Patents. As between Licensor and Licensee, but subject to any obligations of Licensor to the ReGenX Licensors, the Parties agree as follows:
7.1.1 Licensor shall have the sole right, but not the obligation, to Prosecute patent applications and issued patents within Licensed Patents, in Licensor’s sole discretion.
7.1.2 Nothing in this Agreement obligates Licensor to continue to Prosecute any patent applications or issued patents, and Licensee acknowledges that Licensor shall have no obligation to undertake any inter-party proceedings, such as oppositions or interferences, or to undertake any re-examination or re-issue proceedings, in either case, with respect to the Licensed Patents.
Prosecution of Licensed Patents. (a) Except as provided below in Section 3.4(b), Licensor shall be responsible, at its sole discretion and expense, for: (i) preparing, filing, prosecuting, and maintaining all Licensed Patents in such jurisdiction; and (ii) conducting any interference, re-examination, reissue and opposition proceedings relating to the Licensed Patents in such jurisdiction (collectively, “Prosecution”). In connection with the foregoing: (x) Licensor shall regularly consult with Licensee, use reasonable efforts to accommodate comments from Licensee, and keep Licensee advised of the status of the Licensed Patents; and (y) Licensor shall provide to Licensee, for Licensee’s review and comments, copies of all material correspondence to and from the patent offices examining such Licensed Patents, including restriction requirements, office actions, proposed amendments and responses, and notices of allowance.
(b) Notwithstanding Section 3.4(a), Licensee will have the right to file, at Licensee’s expense, one or more divisional, continuation, or continuation-in-part applications claiming priority to any of the Licensed Patents and which include only those claims directed primarily to the Field (collectively, “Field-Dedicated Patents”), and thereafter, be responsible for the Prosecution of those Field-Dedicated Patents.
(c) If the patent office issues a restriction requirement in any application included in the Licensed Patent separating the claims into multiple groups, where at least one group is directed primarily to the Field and another group has no claims directed to the Field, and Licensor elects to prosecute the claims in the group which does not have any claims directed to the Field, then such application which no longer includes any claims directed to the Field will be excluded from the definition of Licensed Patents.
(d) To the extent Licensee elects to file any divisional, continuation, or continuation-in-part applications under Section 3.4(b), Licensor will provide to Licensee or its designated representative copies of the files of the parent applications of such divisional, continuation or continuation-in-part applications. If any party elects at any time to abandon any Licensed Patent, such party will promptly notify the other party, and the other party will have the option to prosecute such Licensed Patent.
Prosecution of Licensed Patents. As between Licensor and Licensee, the Parties agree as follows:
7.1.1 Licensor shall have the sole right, but not the obligation, to Prosecute patent applications and issued patents within Licensed Patents, in Licensor’s sole discretion and at its own expense. Subject to Section 7.1.3, following the first Grant Date under this Agreement, Licensor shall provide Licensee with a reasonable opportunity to review and provide comments in connection with the Prosecution of the Licensed Patents; and Licensor shall keep Licensee reasonably informed as to all material developments with respect to such Licensed Patents and shall supply to Licensee copies of material communications received and filed in connection with the Prosecution of such Licensed Patents.
7.1.2 Nothing in this Agreement obligates Licensor to continue to Prosecute any patent applications or issued patents, and Licensee acknowledges that Licensor shall have no obligation to undertake any inter-party proceedings, such as oppositions or interferences, or to undertake any re-examination or re-issue proceedings, in either case, with respect to the Licensed Patents.
7.1.3 Licensee acknowledges that the Trustees of the University of Pennsylvania controls Prosecution of the Licensed Patents, with Licensor having certain rights to review.
Prosecution of Licensed Patents. As between Licensor and Licensee, but subject to any obligations of Licensor to the ReGenX Licensors, the Parties agree as follows: CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
7.1.1 Licensor shall have the sole right, but not the obligation, to Prosecute patent applications and issued patents within Licensed Patents, in Licensor’s sole discretion.
7.1.2 Nothing in this Agreement obligates Licensor to continue to Prosecute any patent applications or issued patents, and Licensee acknowledges that Licensor shall have no obligation to undertake any inter-party proceedings, such as oppositions or interferences, or to undertake any re-examination or re-issue proceedings, in either case, with respect to the Licensed Patents.
Prosecution of Licensed Patents. Orexo shall have the sole right to file, prosecute and maintain the Licensed Patents worldwide, at its cost and at its sole discretion. For each patent application and patent under the Licensed Patents, Orexo shall: (a) prepare, file and prosecute such patent application; (b) maintain such patent; (c) pay all fees and expenses associated with its activities pursuant to clauses (a) and (b) above; (d) keep Licensee currently informed of the filing and progress of all material aspects of the prosecution of any such patent application, and the issuance of patents from any such patent application; (e) consult with Licensee in advance concerning any decisions which could materially and adversely affect the scope or enforcement of any issued claims or the potential abandonment of any such patent application or patent; and
Prosecution of Licensed Patents. As between Licensor and Licensee, the Parties agree as follows:
7.1.1 Licensor shall have the sole right, but not the obligation, to Prosecute patent applications and issued patents within Licensed Patents, in Licensor’s sole discretion. Subject to Section 7.1.3, Licensor shall provide Licensee with a reasonable opportunity to review and provide comments in connection with the Prosecution of the Licensed Patents; and Licensor shall keep Licensee reasonably informed as to all material developments with respect to such Licensed Patents and shall supply to Licensee copies of material communications received and filed in connection with the Prosecution of such Licensed Patents.
7.1.2 Nothing in this Agreement obligates Licensor to continue to Prosecute any patent applications or issued patents, and Licensee acknowledges that Licensor shall have no obligation to undertake any inter-party proceedings, such as oppositions or interferences, or to undertake any re-examination or re-issue proceedings, in either case, with respect to the Licensed Patents.
Prosecution of Licensed Patents. Dyadic shall, at Dyadic’s sole cost and expense, [*], file for, prosecute, respond to oppositions, nullity actions, re-examinations, revocation actions and similar proceedings (including without limitation conducting or participating in interference and oppositions) filed by Third Parties against, and maintain the patents and patent applications within the Licensed Patents that are owned or otherwise controlled by Dyadic; provided that, in the event that Dyadic decides to cease activities relating to obtaining and maintaining any patent application or patent within the Licensed Patents that is owned or otherwise controlled by Dyadic, Dyadic shall provide written notice thereof to Codexis and, prior to taking action that would result in the abandonment of any such patent application or patent, Dyadic shall engage in good faith discussion with Codexis, such discussion to occur at least [*] days prior to the date when government rights would be lost as a consequence of abandonment of such patent application or patent.
