Prosecution. Notwithstanding Article 10 of the Agreement (as amended by Amendment No. 1), LICENSEE shall be entitled, at its sole expense, to assume prosecution of the PATENT APPLICATION and any other United States or foreign patents or patent applications claiming [**], including any continuations, divisionals, and continuations-in-part, and continued prosecution application(s), any reissues, re-examinations, renewals, or extensions, substitutes, and the relevant international equivalents (collectively, the “[**] PATENT(S)”). Any additional patent applications claiming, using, derived from, or arising from [**] or an [**] PATENT shall be an [**] PATENT. Upon request from LICENSEE, YALE will timely transfer to LICENSEE responsibility for prosecution of the [**] PATENTS. All [**] PATENTS shall be prepared, prosecuted, filed and maintained by independent patent counsel chosen by LICENSEE and reasonably acceptable to YALE. Said independent patent counsel shall be ultimately responsible to LICENSEE, but YALE shall also be the client of said patent counsel. YALE shall have the right to retain, at its own expense, separate patent counsel to advise YALE regarding such patent matters. LICENSEE shall instruct patent counsel to keep LICENSEE, YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, fully informed of the progress of all [**] PATENTS, and to give both LICENSEE and YALE reasonable opportunity to comment on the type and scope of useful claims and the nature of supporting disclosures and other matters in the course of patent prosecution and maintenance. In making its decisions regarding patent matters related to [**] PATENTS, LICENSEE shall (a) give due regard to the advice of its patent counsel, (b) instruct its patent counsel to consider any advice offered by YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, and (c) conduct such preparation, prosecution and maintenance of [**] PATENTS in a manner that is commercially reasonable in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant to the Agreement. In the event of a disagreement concerning the prosecution of the [**] PATENTS, LICENSEE shall have the right to make the final decision concerning such the prosecution. LICENSEE shall have no liability to YALE for damages, whether direct, indirect or incidental, consequential or otherwise, allegedly arising from its good faith decisions, actions and omissions taken in compliance with the Agreement in connection with such patent prosecution. If LICENSEE desires to abandon any [**] PATENT, LICENSEE will provide YALE with sufficient prior written notice, and YALE may then assume prosecution of such patent; and, thereafter, (i) if the [**] PATENT remains a “LICENSED PATENT” under the Agreement, then the provisions in the Agreement governing prosecution costs will apply; and (ii) if the [**] PATENT ceases to be a “LICENSED PATENT” under the Agreement, YALE’s prosecution of such patent will be at YALE’s expense, and, in the case of this clause (ii), LICENSEE will timely assign LICENSEE’s joint ownership interests in such [**] PATENTS that are being abandoned by LICENSEE to YALE.
Appears in 3 contracts
Samples: License Agreement (Celldex Therapeutics, Inc.), License Agreement (Kolltan Pharmaceuticals Inc), License Agreement (Kolltan Pharmaceuticals Inc)
Prosecution. Notwithstanding Article 10 of the Agreement (as amended by Amendment No. 1), LICENSEE shall be entitled, at its sole expense, to assume prosecution of the PATENT APPLICATION and any other United States or foreign patents or patent applications claiming [**], including any continuations, divisionals, and continuations-in-part, and continued prosecution application(s), any reissues, re-examinations, renewals, or extensions, substitutes, and the relevant international equivalents (collectively, the “[**] PATENT(S)”). Any additional patent applications claiming, using, derived from, or arising from [**] or an [**] PATENT shall be an [**] PATENT. Upon request from LICENSEE, YALE will timely transfer to LICENSEE responsibility for prosecution of the [**] PATENTS. All [**] PATENTS shall be prepared, prosecuted, filed and maintained by independent patent counsel chosen by LICENSEE and reasonably acceptable to YALE. Said independent patent counsel shall be ultimately responsible to LICENSEE, but YALE shall also be the client of said patent counsel. YALE shall have the right to retain, at its own expense, separate patent counsel to advise YALE regarding such patent matters. LICENSEE shall instruct patent counsel to keep LICENSEE, YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, fully informed of the progress of all [**] PATENTS, and to give both LICENSEE and YALE reasonable opportunity to comment on the type and scope of useful claims and the nature of supporting disclosures and other matters in the course of patent prosecution and maintenance. In making its decisions regarding patent matters related to [**] PATENTS, LICENSEE shall (a) give due regard METUCHEN shall make commercially reasonable efforts to be responsible for any and all legal proceedings surrounding the advice development, commercialization and sale of the Product within the Territory, at METUCHEN's sole expense. The foregoing includes, without limitation, patent post-grant proceedings/oppositions, patent litigation (both enforcement and defense) including Paragraph IV litigation and product liability litigation with the exception of product already sold or marketed by HYBRID or by its representative or licensee. HYBRID shall reasonably cooperate with METUCHEN in such endeavors in circumstances where the participation of HYBRID as the patent counselholder of licensed patent rights is necessary or useful at no additional cost, except for reimbursed expense for travel and lodging.
(b) instruct its patent counsel Subject to consider any advice offered by YALE the terms and YALE’s patent counselconditions of this Agreement, if such counsel should be engaged by YALEMETUCHEN undertakes to use commercially reasonable efforts in preparing, filing and prosecuting, and (c) conduct such preparationshall control and be responsible for preparing, prosecution filing, prosecuting and maintenance of [**] PATENTS in a manner that is commercially reasonable in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant maintaining, all Patents relating to the AgreementProduct, provided that METUCHEN shall cover expenses related thereto incurred with respect to such activities inside the Territory. In the event of a disagreement concerning the prosecution of the [**] PATENTS, LICENSEE HYBRID shall have the right to make the final decision concerning such the prosecution. LICENSEE shall have no liability to YALE for damages, whether direct, indirect or incidental, consequential or otherwise, allegedly arising promptly cooperate with any reasonable request from its good faith decisions, actions and omissions taken in compliance with the Agreement in connection with such patent prosecution. If LICENSEE desires to abandon any [**] PATENT, LICENSEE will provide YALE with sufficient prior written notice, and YALE may then assume prosecution of such patent; and, thereafter, METUCHEN to: (i) if the [**] PATENT remains a “LICENSED PATENT” under the Agreement, then the provisions add PRODUCT-related disclosures to HYBRID Patent Rights in the Agreement governing prosecution costs will applyTerritory; and (ii) if file any new patent application(s) related to PRODUCT or formulations or uses thereof that capture any previously undisclosed subject matter that may support any claim directed to the [**] PATENT ceases composition or formulation of the Product or a method of treating INDICATION by administration of the Product.
(c) During the Term, without the prior written consent of METUCHEN, HYBRID shall not: (1) cancel, revoke or withdraw; (2) admit to be invalid or unenforceable through disclaimer, or surrender during a “LICENSED PATENT” under reissue or reexamination; (3) abandon, the Agreement, YALE’s prosecution HYBRID Patent Rights; or (4) (A) disclaim the term of such patent will be any issued US patents licensed to METUCHEN hereunder that include at YALE’s expense, and, in least one claim directed solely to the case composition or formulation of this clause (ii), LICENSEE will timely assign LICENSEE’s joint ownership interests in such [**] PATENTS that are being abandoned the Product or a method of treating INDICATION by LICENSEE to YALE.administration of the Product
Appears in 1 contract
Prosecution. Notwithstanding Article 10 of As between Celularity, on the Agreement one hand, and TNK and Sorrento, on the other hand, TNK shall have the initial right (as amended by Amendment No. 1but not the obligation), LICENSEE shall be entitledto control the filing, prosecution and maintenance, at its sole expense, to assume prosecution and using patent counsel of the PATENT APPLICATION its choice, any patents and any other United States or foreign patents or patent applications claiming [**]arising out of or relating to this Agreement (including, including any continuations, divisionals, and continuations-in-part, and continued prosecution application(s)without limitation, any reissues, re-examinations, renewals, or extensions, substitutes, patents and the relevant international equivalents (collectively, the “[**] PATENT(S)”). Any additional patent applications claiming, using, derived from, or arising from [**] or an [**] PATENT shall be an [**] PATENT. Upon request from LICENSEE, YALE will timely transfer to LICENSEE responsibility for prosecution of the [**] PATENTS. All [**] PATENTS shall be prepared, prosecuted, filed and maintained by independent patent counsel chosen by LICENSEE and reasonably acceptable to YALE. Said independent patent counsel shall be ultimately responsible to LICENSEE, but YALE shall also be the client of said patent counsel. YALE shall have the right to retain, at its own expense, separate patent counsel to advise YALE regarding such patent matters. LICENSEE shall instruct patent counsel to keep LICENSEE, YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, fully informed of the progress of all [**] PATENTS, and to give both LICENSEE and YALE reasonable opportunity to comment on the type and scope of useful claims and the nature of supporting disclosures and other matters in the course of patent prosecution and maintenance. In making its decisions regarding patent matters related to [**] PATENTS, LICENSEE shall (a) give due regard to the advice any TNK IP or Background IP of its patent counselTNK, (b) instruct its patent counsel to consider any advice offered by YALE and YALE’s patent counsel, if such counsel should be engaged by YALEJoint IP, and (c) any patents or patent applications covering the Licensed Products). TNK shall provide Celularity an opportunity to review and comment on the nature and text of any new or pending patent applications for Patent Rights covering Licensed Products and consider in good faith any comments from Celularity regarding steps that might be taken to strengthen patent protection with respect to any such Patent Rights and shall conduct discussions with Celularity on a reasonable basis regarding the patent prosecution strategy for such preparationPatent Rights. If TNK elects not to file, prosecution prosecute, or maintain any of the Patent Rights in (a)-(c) of this Section 5.3, and maintenance provided that Celularity is not and has not been in breach of [**] PATENTS in a manner this Agreement, and subject to TNK’s reasonable review, oversight, and approval, Celularity may file, prosecute, and maintain, at its expense, and using patent counsel of its choice that is commercially reasonable reasonably acceptable to TNK, (i) patents solely covering Joint IP in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant the Field in the Territory, and (ii) patents covering the Licensed Products in the Field in the Territory (collectively “Celularity Prosecuted Patents”). For clarity, Celularity may not file, prosecute or maintain any patents arising out of this Agreement outside the Territory, containing claims covering inventions outside the Field, or that cover any TNK IP or any Background IP of TNK. Subject to the Agreement. In forgoing, as between Celularity, on the event of a disagreement concerning one hand, and TNK and Sorrento, on the prosecution of the [**] PATENTSother hand, LICENSEE TNK shall have the right to make final decisions pertaining to the prosecution and maintenance of the Celularity Prosecuted Patents, provided, however, that such final decision concerning decisions do not reasonably undermine Celularity’s rights under this Agreement or otherwise unreasonably weaken the Licensed Patents as to Licensed Products and Licensed TNK Material in the Field, and Celularity shall cooperate fully with TNK and provide TNK with such information and execute such documents as TNK reasonably requests to facilitate the prosecutionforegoing. LICENSEE shall have Before filing with a patent office a material document related to the prosecution of the Celularity Prosecuted Patents, Celularity will provide TNK with a copy of the document for TNK’s comments, and will make reasonable efforts to accept and implement comments that TNK provides, provided, however, that Celularity will be under no liability obligation to YALE for damagesmake and implement any changes that, whether directin Celularity’s reasonable opinion upon the advice of counsel, indirect undermine Celularity’s rights under this Agreement or incidental, consequential or otherwise, allegedly arising from its good faith decisions, actions otherwise weaken the Licensed Patents as to Licensed Products and omissions taken Licensed TNK Material in compliance the Field. Celularity will provide TNK with the Agreement copies of all material documents that Celularity receives in connection with such patent prosecutionthe prosecution of the Celularity Prosecuted Patents. If LICENSEE desires In the event Celularity decides to abandon any [**] PATENTnon-provisional patent application within the Celularity Prosecuted Patents or declines to file such a patent application (including, LICENSEE will provide YALE with sufficient prior written noticefor example, and YALE may then assume prosecution of such patent; and, thereafter, (i) if the [**] PATENT remains a “LICENSED PATENT” under the Agreement, then the provisions in the Agreement governing prosecution costs will apply; and (ii) if the [**] PATENT ceases to be a “LICENSED PATENT” under the Agreement, YALE’s prosecution new continuation or divisional of such patent will be at YALE’s expenseapplication) in any jurisdiction (collectively “Celularity Abandoned Patents”), andsubject to the rights of any sublicensee under this Agreement to take over prosecution of any Celularity Abandoned Patents, Celularity will, within a reasonable period of time, notify TNK thereof (and in any event no later than thirty (30) days prior to any non-extendible payment or filing deadline), and Celularity shall then have no right to participate in the case filing, prosecution, or maintenance of this clause (ii)such Celularity Abandoned Patent, LICENSEE will timely assign LICENSEEand Celularity agrees to cooperate fully with TNK and to provide TNK with such information and execute such documents as TNK reasonably requests to facilitate TNK’s joint ownership interests in prosecution and maintenance of such [**] PATENTS that are being abandoned by LICENSEE to YALECelularity Abandoned Patent.
Appears in 1 contract
Samples: License and Transfer Agreement (Sorrento Therapeutics, Inc.)
Prosecution. Notwithstanding Article 10 of the Agreement (as amended by Amendment No. 1), LICENSEE shall be entitled, at its sole expense, to assume prosecution of the PATENT APPLICATION and any other United States or foreign patents or patent applications claiming [**], including any continuations, divisionals, and continuations-in-part, and continued prosecution application(s), any reissues, re-examinations, renewals, or extensions, substitutes, and the relevant international equivalents (collectively, the “[**] PATENT(S)”). Any additional patent applications claiming, using, derived from, or arising from [**] or an [**] PATENT shall be an [**] PATENT. Upon request from LICENSEE, YALE will timely transfer to LICENSEE responsibility for prosecution of the [**] PATENTS. All [**] PATENTS shall be prepared, prosecuted, filed and maintained by independent patent counsel chosen by LICENSEE and reasonably acceptable to YALE. Said independent patent counsel shall be ultimately responsible to LICENSEE, but YALE shall also be the client of said patent counsel. YALE shall have the right to retain, at its own expense, separate patent counsel to advise YALE regarding such patent matters. LICENSEE shall instruct patent counsel to keep LICENSEE, YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, fully informed of the progress of all [**] PATENTS, and to give both LICENSEE and YALE reasonable opportunity to comment on the type and scope of useful claims and the nature of supporting disclosures and other matters in the course of patent prosecution and maintenance. In making its decisions regarding patent matters related to [**] PATENTS, LICENSEE shall (a) give due regard to the advice of its patent counsel, (b) instruct its patent counsel to consider any advice offered by YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, and (c) conduct such preparation, prosecution and maintenance of [**] PATENTS in a manner that is commercially reasonable in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant to the Agreement. In the event of a disagreement concerning the prosecution of the [**] PATENTS, LICENSEE shall have the right to make the final decision concerning such the prosecution. LICENSEE shall have no liability to YALE for damages, whether direct, indirect or incidental, consequential or otherwise, allegedly arising from its good faith decisions, actions and omissions taken in compliance with the Agreement in connection with such patent prosecution. If LICENSEE desires to abandon any [**] PATENT, LICENSEE will provide YALE with sufficient prior written notice, and YALE may then assume prosecution of such patent; and, thereafter, (i) if the [**] PATENT remains a “LICENSED PATENT” under the Agreement, Confidential Materials omitted and filed separately with the Securities and Exchange Commission. Double asterisks denote omissions. then the provisions in the Agreement governing prosecution costs will apply; and (ii) if the [**] PATENT ceases to be a “LICENSED PATENT” under the Agreement, YALE’s prosecution of such patent will be at YALE’s expense, and, in the case of this clause (ii), LICENSEE will timely assign LICENSEE’s joint ownership interests in such [**] PATENTS that are being abandoned by LICENSEE to YALE.
Appears in 1 contract
Samples: License Agreement
Prosecution. Notwithstanding Article 10 (a) Should Buyer determine that any patent applications covering any of the Agreement (as amended by Amendment NoLicensed Technology are desired, Buyer may request Seller to file the same. 1)Should Seller choose not to do so, LICENSEE shall be entitledfrom and after the Effective Date, Buyer will then have the right, at its sole expenseexpense and discretion, to assume prosecution prepare, file (including foreign filings), prosecute and maintain (“Prosecute”) in Seller’s name, any patents on the Licensed Technology solely in the Buyer Field. Buyer shall provide Seller with copies of all patent applications and other related material submissions and correspondence with any patent authorities with respect to the Prosecution, so as to allow a reasonable period of time for review by Seller. Buyer will notify Seller, and will provide Seller with an opportunity to consult with Buyer and its counsel regarding any material actions to be taken or not taken in connection with Prosecution of any patents covering any of the PATENT APPLICATION and any other United States Licensed Technology (all such actions to be taken or foreign patents or patent applications claiming [**]not taken, including any continuations, divisionals, and continuations-in-part, and continued prosecution application(s), any reissues, re-examinations, renewals, or extensions, substitutes, and the relevant international equivalents (collectively, the “[**] PATENT(S)Prosecution Actions”). Any additional patent applications claimingBuyer shall take into consideration the reasonable requests of Seller regarding Prosecution Actions provided, usinghowever, derived from, or arising from [**] or an [**] PATENT that Buyer shall be an [**] PATENT. Upon request from LICENSEE, YALE will timely transfer not take any Prosecution Action with respect to LICENSEE responsibility for prosecution the Licensed Technology that would reasonably result in the impairment of Seller’s rights with respect to the Licensed Technology outside of the [**] PATENTSBuyer Field. All [**] PATENTS Seller shall be preparedallow Buyer to maintain at its own expense any patents covering any of the Licensed Technology that Seller otherwise intends to abandon or let lapse.
(b) From and after the Effective Date, prosecuted, filed and maintained by independent patent counsel chosen by LICENSEE and reasonably acceptable to YALE. Said independent patent counsel shall be ultimately responsible to LICENSEESeller will have the sole right, but YALE shall also be not the client of said patent counsel. YALE shall have the right to retainobligation, at its own expense and discretion, to Prosecute, at its expense, separate patent counsel to advise YALE regarding such patent matters. LICENSEE shall instruct patent counsel to keep LICENSEE, YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, fully informed of the progress of all [**] PATENTS, and to give both LICENSEE and YALE reasonable opportunity to comment any patents on the type and scope of useful claims and Licensed Technology. If, at any time after the nature of supporting disclosures and other matters in Effective Date, Seller obtains any patents on the course of patent prosecution and maintenance. In making its decisions regarding patent matters related to [**] PATENTS, LICENSEE shall (a) give due regard to the advice of its patent counsel, (b) instruct its patent counsel to consider any advice offered by YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, and (c) conduct such preparation, prosecution and maintenance of [**] PATENTS in a manner that is commercially reasonable in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant to the Agreement. In the event of a disagreement concerning the prosecution of the [**] PATENTS, LICENSEE shall have the right to make the final decision concerning such the prosecution. LICENSEE shall have no liability to YALE for damages, whether direct, indirect or incidental, consequential or otherwise, allegedly arising from its good faith decisions, actions and omissions taken in compliance with the Agreement in connection with such patent prosecution. If LICENSEE desires to abandon any [**] PATENT, LICENSEE will provide YALE with sufficient prior written notice, and YALE may then assume prosecution of such patent; and, thereafter, (i) if the [**] PATENT remains a “LICENSED PATENT” under the AgreementLicensed Technology, then the provisions in claims of such patents covering the Agreement governing prosecution costs Licensed Technology will apply; be deemed and (ii) if are hereby licensed to Buyer within the [**] PATENT ceases to be a “LICENSED PATENT” under Buyer Field until the Agreement, YALE’s prosecution expiration of the term of the last-to-expire of such patent will be at YALE’s expense, and, in rights within the case Licensed Technology (including any extension to any such patent rights) under the terms of this clause (ii), LICENSEE will timely assign LICENSEE’s joint ownership interests in such [**] PATENTS that are being abandoned by LICENSEE to YALESection 2.
Appears in 1 contract
Prosecution. Notwithstanding Article 10 (i) The responsibility for Patent Prosecution and Trademark Prosecution related to a Patent or Trademark that is within the MacroGenics Licensed Patents and MacroGenics Licensed Trademarks or the I-MAB Licensed Patents that is owned solely by a Party shall be the responsibility of such Party, except that (A) I-MAB shall have the right (but not the obligation), at its election and cost and expense, to file, prosecute and maintain, in the name of MacroGenics, MacroGenics Product-Specific Patents and MacroGenics Licensed Trademarks in the Territory, (B) MacroGenics shall have the right (but not the obligation), at its election and cost and expense, to file, prosecute and maintain, in the name of I-MAB, outside the Territory, I-MAB Licensed Patents that are specific to the Product (i.e., do not Cover any product that is not a Product, such I-MAB Licensed Patents, the “I-MAB Product-Specific Patents”) (within the scope of the Agreement (as amended license granted by Amendment NoI-MAB to MacroGenics pursuant to Section 9.2 outside the Territory). 1)In accordance with Section 13.2(b)(v) below, LICENSEE MacroGenics shall be entitledresponsible for undertaking the Patent Prosecution with respect to Patents jointly owned by the Parties (the “Jointly Owned Patents”) outside the Territory and I-MAB shall be responsible for undertaking the Patent Prosecution with respect to Jointly Owned Patents in the Territory, and each shall do as directed by the JSC.
(ii) In the event that I-MAB elects not to undertake the Patent Prosecution for the MacroGenics Product-Specific Patents in the Territory, I-MAB shall notify MacroGenics [***] before any such Patent would become abandoned or otherwise forfeited, and MacroGenics shall have the right (but not the obligation), at its sole cost and expense, to assume prosecution undertake the Patent Prosecution of such MacroGenics Product-Specific Patents. Thereafter, any MacroGenics Product-Specific Patents that are the subject of such opt-out notice by I-MAB shall cease to be MacroGenics Licensed Patents for all purposes under this Agreement, including for purposes of the PATENT APPLICATION and any other United States or foreign patents or patent applications claiming license granted by MacroGenics to I-MAB under Section 9.1. In the event that MacroGenics elects not to undertake the Patent Prosecution for the I-MAB Product- Specific Patents outside the Territory, MacroGenics shall notify I-MAB [**]*] before any such Patent would become abandoned or otherwise forfeited, and I-MAB shall have the right (but not the obligation), at its sole cost and expense, to undertake the Patent Prosecution of such I-MAB Product-Specific Patents outside the Territory. Thereafter, any I-MAB Product- Specific Patents that are the subject of such opt-out notice by MacroGenics shall cease to be I-MAB Product-Specific Patents for all purposes under this Agreement, including any continuationsfor purposes of the license granted by I-MAB to MacroGenics under Section 9.2. With respect to Jointly Owned Patents, divisionals, and continuationsin the event that the prosecuting Party elects not to undertake the Patent Prosecution for the Jointly Owned Patents in the Territory (with respect to I-in-part, and continued prosecution application(sMAB) or outside the Territory (with respect to MacroGenics), the prosecuting Party shall notify the non-prosecuting Party [***] before any reissues, re-examinations, renewals, such patent rights would become abandoned or extensions, substitutesotherwise forfeited, and the relevant international equivalents previously non-prosecuting Party shall have the right (collectivelybut not the obligation), to undertake the “[**] PATENT(S)”)Patent Prosecution of such Jointly Owned Patents in such territory and become the prosecuting Party therefor. Any additional The right to assume Patent Prosecution of a MacroGenics Product-Specific Patent, I-MAB Product-Specific Patent or Jointly Owned Patent shall not apply in the event such a patent applications claiming, using, derived from, application would become abandoned or arising from [**] or an [**] PATENT shall be an [**] PATENT. Upon request from LICENSEE, YALE will timely transfer to LICENSEE responsibility for prosecution otherwise forfeited as a result of the [**] PATENTS. All [**] PATENTS prosecuting Party discontinuing Patent Prosecution of such patent application but also filing a continuation application claiming the same invention or (y) settling an opposition to obtain a license to a competing Patent.
(iii) The prosecuting Party shall be preparedkeep the JSC and the other Party informed of the status of all matters affecting Patent Prosecution and Trademark Prosecution of MacroGenics Licensed Patents, prosecutedMacroGenics Licensed Trademarks and Jointly Owned Patents in the Territory, and the I-MAB Product-Specific Patents and Jointly Owned Patents outside the Territory, including providing a copy of all Patent applications filed hereunder and maintained any material correspondence from or with any governmental authorities (including the applicable patent office) to the JSC and the other Party in sufficient time to allow for review and comment by independent the non- prosecuting Party, and timely consulting with the non-prosecuting Party and its patent counsel chosen by LICENSEE on the strategy and reasonably acceptable content of submissions to YALEsuch governmental authorities in advance of any submissions. Said independent Timely advice and suggestions of the non-prosecuting Party and its patent counsel shall be ultimately responsible to LICENSEE, but YALE shall also be taken into consideration in good faith by the client of said patent counsel. YALE shall have the right to retain, at prosecuting Party and its own expense, separate patent counsel in connection with such filing. With respect to advise YALE the MacroGenics Product-Specific Patents, I-MAB (if the prosecuting Party) shall pursue in good faith all reasonable claims requested by MacroGenics for the Territory.
(iv) Any dispute regarding such patent matters. LICENSEE Patent Prosecution and Trademark Prosecution of MacroGenics Licensed Patents, MacroGenics Licensed Trademarks, I-MAB Product-Specific Patents (outside the Territory only) or Jointly Owned Patents that cannot be resolved by intellectual property counsel of the Parties, shall be resolved by the JSC.
(v) Without limiting the generality of the foregoing, MacroGenics shall prosecute and maintain Jointly Owned Patents outside the Territory and I-MAB shall prosecute and maintain Jointly Owned Patents in the Territory, and each prosecuting Party shall instruct patent its counsel to keep LICENSEE, YALE provide copies of correspondence and YALE’s patent counsel, if filings directly to the other Party and otherwise permit the other Party to participate with the prosecuting Party in any of the activities of such counsel should be engaged by YALEwith respect to the Patent and Trademark Prosecution of such Jointly Owned Patents. Before taking any material step in the Patent Prosecution or Jointly Owned Patents, fully informed of the progress of all [**] PATENTS, prosecuting Party and to give both LICENSEE and YALE its counsel shall allow the other Party a reasonable opportunity to comment on the type action proposed to be taken, and scope agrees to incorporate in such filings all reasonable comments of useful claims and the nature other Party. All Patent Prosecution of supporting disclosures and other matters Jointly Owned Patents shall be in the course names of patent prosecution both MacroGenics and maintenance. In making its decisions regarding patent matters related to [**] PATENTS, LICENSEE shall I-MAB.
(avi) give due regard I-MAB rights and obligations under this Section 13.2 with respect to the advice of its patent counsel, (b) instruct its patent counsel MacroGenics Licensed Patents are secondary to consider and shall be subject to any advice offered by YALE Third Party rights and YALE’s patent counsel, if such counsel should be engaged by YALE, and (c) conduct such preparation, prosecution and maintenance of [**] PATENTS in a manner that is commercially reasonable in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant to the Agreement. In the event of a disagreement concerning the prosecution of the [**] PATENTS, LICENSEE shall have the right to make the final decision concerning such the prosecution. LICENSEE shall have no liability to YALE for damages, whether direct, indirect or incidental, consequential or otherwise, allegedly arising from its good faith decisions, actions and omissions taken in compliance with the Agreement in connection with such patent prosecution. If LICENSEE desires to abandon any [**] PATENT, LICENSEE will provide YALE with sufficient prior written notice, and YALE may then assume prosecution of such patent; and, thereafter, (i) if the [**] PATENT remains a “LICENSED PATENT” obligations under the applicable MacroGenics Third Party Agreement, then the provisions in the Agreement governing prosecution costs will apply; and (ii) if the [**] PATENT ceases to be a “LICENSED PATENT” under the Agreement, YALE’s prosecution of such patent will be at YALE’s expense, and, in the case of this clause (ii), LICENSEE will timely assign LICENSEE’s joint ownership interests in such [**] PATENTS that are being abandoned by LICENSEE to YALE.
Appears in 1 contract
Samples: Collaboration Agreement (I-Mab)
Prosecution. Notwithstanding Article 10 (i) The responsibility for Patent Prosecution and Trademark Prosecution related to a Patent or Trademark that is within the MacroGenics Licensed Patents and MacroGenics Licensed Trademarks or the Zai Licensed Patents that is owned solely by a Party shall be the responsibility of such Party, except that (A) Zai shall have the right (but not the obligation), at its election and cost and expense, to file, prosecute and maintain, in the name of MacroGenics, MacroGenics Product-Specific Patents (but for clarity, excluding MacroGenics Platform Patents) and MacroGenics Licensed Trademarks in the Territory, (B) MacroGenics shall have the right (but not the obligation), at its election and cost and expense, to file, prosecute and maintain, in the name of Zai, Zai Licensed Patents that are specific to the Product (i.e., do not Cover any product that is not a Product, such Zai Licensed Patents, the “Zai Product-Specific Patent”) (within the scope of the Agreement (as amended exclusive license granted by Amendment NoZai to MacroGenics pursuant to Section 9.2) outside the Territory. 1)In accordance with Section 13.2(b)(v) below, LICENSEE MacroGenics shall be entitledresponsible for undertaking the Patent Prosecution with respect to Patents jointly owned by the Parties (the “Jointly Owned Patents”) outside the Territory and Zai shall be responsible for undertaking the Patent Prosecution with respect to Jointly Owned Patents in the Territory, and each shall do as directed by the JSC.
(ii) In the event that Zai elects not to undertake the Patent Prosecution for the MacroGenics Product-Specific Patents in the Territory, Zai shall notify MacroGenics at least [***] days before any such patent rights would become abandoned or otherwise forfeited, and MacroGenics shall have the right (but not the obligation), at its sole cost and expense, to assume prosecution undertake the Patent Prosecution of such MacroGenics Product-Specific Patents. Thereafter, any MacroGenics Product-Specific Patents that are the subject of such opt-out notice by Zai shall cease to be MacroGenics Licensed Patents for all purposes under this Agreement, including for purposes of the PATENT APPLICATION license granted by MacroGenics to Zai under Section 9.1. In the event that MacroGenics elects not to undertake the Patent Prosecution for the Zai Product-Specific Patents outside the Territory, MacroGenics shall notify Zai at least [***] days before any such patent rights would become abandoned or otherwise forfeited, and any other United States or foreign patents or patent applications claiming Zai shall have the right (but not the obligation), [***], including any continuationsto undertake the Patent Prosecution of such Zai Product-Specific Patents outside the Territory. With respect to Jointly Owned Patents, divisionals, and continuations-in-part, and continued prosecution application(sin the event that the prosecuting Party elects not to undertake the Patent Prosecution for the Jointly Owned Patents in the Territory (with respect to Zai) or outside the Territory (with respect to MacroGenics), the prosecuting Party shall notify the non-prosecuting Party at least [***]days before any reissues, re-examinations, renewals, such patent rights would become abandoned or extensions, substitutesotherwise forfeited, and the relevant international equivalents previously non-prosecuting Party shall have the right (collectivelybut not the obligation), to undertake the “Patent Prosecution of such Jointly Owned Patents in such territory and become the THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST. REDACTED MATERIAL IS MARKED WITH [***] PATENT(S)”)AND HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. Any additional prosecuting Party therefor. The right to assume Patent Prosecution of a MacroGenics Product-Specific Patent, Zai Product-Specific Patent or Jointly Owned Patent shall not apply in the event such a patent application would become abandoned or otherwise forfeited as a result of the prosecuting Party (x) discontinuing Patent Prosecution of such patent application but also filing a continuation application claiming the same invention or (y) settling an opposition to obtain a license to a competing patent.
(iii) The prosecuting Party shall keep the JSC and the other Party informed of the status of all matters affecting Patent Prosecution and Trademark Prosecution of MacroGenics Licensed Patents, MacroGenics Licensed Trademarks and Jointly Owned Patents in the Territory, and the Zai Product-Specific Patents outside the Territory, including providing a copy of all patent applications claimingfiled hereunder and any material correspondence from or with any governmental authorities (including the applicable patent office) to the JSC and the other Party in sufficient time to allow for review and comment by the non-prosecuting Party, using, derived from, or arising from [**] or an [**] PATENT shall be an [**] PATENTand timely consulting with the non-prosecuting Party and its patent counsel on the strategy and content of submissions to such governmental authorities in advance of any submissions. Upon request from LICENSEE, YALE will timely transfer to LICENSEE responsibility for prosecution Timely advice and suggestions of the [**] PATENTS. All [**] PATENTS shall be prepared, prosecuted, filed non-prosecuting Party and maintained by independent patent counsel chosen by LICENSEE and reasonably acceptable to YALE. Said independent its patent counsel shall be ultimately responsible to LICENSEE, but YALE shall also be taken into consideration in good faith by the client of said patent counsel. YALE shall have the right to retain, at prosecuting Party and its own expense, separate patent counsel in connection with such filing. With respect to advise YALE the MacroGenics Product-Specific Patents, Zai (if the prosecuting Party) shall pursue in good faith all reasonable claims requested by MacroGenics for the Territory.
(iv) Any dispute regarding such patent matters. LICENSEE Patent Prosecution and Trademark Prosecution of MacroGenics Licensed Patents, MacroGenics Licensed Trademarks, Zai Product-Specific Patent (outside the Territory only) or Jointly Owned Patents that cannot be resolved by intellectual property counsel of the Parties, shall be resolved by the JSC.
(v) Without limiting the generality of the foregoing, MacroGenics shall prosecute and maintain Jointly Owned Patents outside the Territory and Zai shall prosecute and maintain Joint Owned Patents in the Territory, and each prosecuting Party shall instruct patent its counsel to keep LICENSEE, YALE provide copies of correspondence and YALE’s patent counsel, if filings directly to the other Party and otherwise permit the other Party to participate with the prosecuting Party in any of the activities of such counsel should be engaged by YALEwith respect to the Patent and Trademark Prosecution of such Jointly Owned Patents. Before taking any material step in the Patent Prosecution or Jointly Owned Patents, fully informed of the progress of all [**] PATENTS, prosecuting Party and to give both LICENSEE and YALE its counsel shall allow the other Party a reasonable opportunity to comment on the type action proposed to be taken, and scope agrees to incorporate in such filings all reasonable comments of useful claims and the nature other Party. All Patent Prosecution of supporting disclosures and other matters Jointly Owned Patents shall be in the course names of patent prosecution both MacroGenics and maintenance. In making its decisions regarding patent matters related Zai.
(vi) Zai’s rights and obligations under this Section 13.2 with respect to [**] PATENTS, LICENSEE MarcoGenics Licensed Patents are secondary to and shall (a) give due regard be subject to the advice of its patent counsel, (b) instruct its patent counsel to consider any advice offered by YALE Third Party rights and YALE’s patent counsel, if such counsel should be engaged by YALE, and (c) conduct such preparation, prosecution and maintenance of [**] PATENTS in a manner that is commercially reasonable in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant to the Agreement. In the event of a disagreement concerning the prosecution of the [**] PATENTS, LICENSEE shall have the right to make the final decision concerning such the prosecution. LICENSEE shall have no liability to YALE for damages, whether direct, indirect or incidental, consequential or otherwise, allegedly arising from its good faith decisions, actions and omissions taken in compliance with the Agreement in connection with such patent prosecution. If LICENSEE desires to abandon any [**] PATENT, LICENSEE will provide YALE with sufficient prior written notice, and YALE may then assume prosecution of such patent; and, thereafter, (i) if the [**] PATENT remains a “LICENSED PATENT” obligations under the Agreement, then the provisions in the Agreement governing prosecution costs will apply; and (ii) if the [**] PATENT ceases to be a “LICENSED PATENT” under the Agreement, YALE’s prosecution of such patent will be at YALE’s expense, and, in the case of this clause (ii), LICENSEE will timely assign LICENSEE’s joint ownership interests in such [**] PATENTS that are being abandoned by LICENSEE to YALEapplicable MacroGenics Third Party Agreements.
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