Responsibility for Patenting Clause Samples
Responsibility for Patenting. Alliance is the owner of the Licensed Patents and shall have exclusive responsibility for the preparation, filing, prosecution and maintenance of the Licensed Patents, including choice of patent counsel. However, Alliance shall keep Licensee informed of patent prosecution, will seek Licensee’s comments and suggestions prior to taking material actions for the same, and will take all reasonable prosecution actions recommended by Licensee that would expand the scope of the rights sought. Licensee shall cooperate with Alliance to ensure that the claims for each Licensed Patent reflects and will reflect, to the extent practicable and to the best of Licensee’s knowledge, all items of commercial interest to Licensee that are contemplated to be sold or procedures to be practiced under this Agreement.
Responsibility for Patenting. The choice of Research Agreement template that the parties make, which reflects how they agree to deal with the ownership of intellectual property will influence how the question of patent protection of Project IP is addressed. TABLE 4 A B C Type of Agreement Ownership of IP reflected in agreement (see 3.6) Patenting Project IP 1 Contract Research Agreement (university / company) The company As the company owns all the Project IP, it has the rights to patent (or not patent) the Project IP, as it decides. This arises naturally from the company’s sole ownership of the Project IP. The Contract Research Agreement therefore does not need to say anything about this, and would normally be silent on these points.