Patent Prosecution and Maintenance. 14.1 REGENTS will diligently prosecute and maintain the United States and foreign patent applications and patents under REGENTS' PATENT RIGHTS, subject to LICENSEE’S reimbursement REGENTS’ out of pocket costs under Paragraph 14.3 below, and all patent applications and patents under REGENTS’ PATENT RIGHTS will be held in the name of REGENTS. REGENTS will have sole responsibility for retaining and instructing patent counsel, but continued use of such counsel at any point in the patent prosecution process subsequent to initial filing of a U.S. patent application covering the INVENTION shall be subject to the approval of LICENSEE. If LICENSEE rejects three of REGENTS’ choice of prosecution counsel, then REGENTS may select new prosecution counsel without LICENSEE’s consent. REGENTS shall promptly provide LICENSEE with copies of all relevant documentation so that LICENSEE may be currently informed and apprised of the continuing prosecution and LICENSEE agrees to keep this documentation confidential in accordance with Article 26. LICENSEE may comment upon such documentation, provided, however, that if LICENSEE has not commented upon such documentation in reasonable time for REGENTS to sufficiently consider LICENSEE’s comments prior to the deadline for filing a response with the relevant government patent office, REGENTS will be free to respond appropriately without consideration of LICENSEE's comments. LICENSEE and LICENSEE's patent counsel will have the right to consult with patent counsel chosen by REGENTS.
14.2 REGENTS will use reasonable efforts to prepare or amend any patent application to include claims reasonably requested by LICENSEE to protect the LICENSED PRODUCTS contemplated to be SOLD or to be practiced under this AGREEMENT.
14.3 Subject to Paragraphs 14.4 all past, present, and future costs for preparing, filing, prosecuting, and maintaining all United States and foreign patent applications, and patents under REGENTS’ PATENT RIGHTS will be borne by LICENSEE, so long as the licenses granted to LICENSEE herein are exclusive. Payments are due within thirty (30) days after receipt of invoice from REGENTS. If, however, REGENTS reduces the exclusive licenses granted herein to non-exclusive licenses pursuant to Paragraphs 7.3, 7.4, or 7.5 and REGENTS grants additional license(s), the costs of preparing, filing, prosecuting and maintaining such patent applications and patents will be divided equally among the licensed parties from the effective date of each...
Patent Prosecution and Maintenance. 8.1 Patent filings and prosecution shall be by counsel of University’s choosing and shall be in the name of University. University shall keep Licensee advised as to the prosecution of such applications by promptly forwarding to Licensee copies of all official correspondence, (including, but not limited to, applications, Office Actions, responses, etc.) relating thereto. Licensee shall have the right, and University shall provide Licensee a reasonable opportunity, to comment and advise University as to the conduct of such prosecution and maintenance, provided, however, that University shall have the right to make the final decisions for all matters associated with such prosecution and maintenance.
8.2 Regarding prosecution and maintenance of foreign patent applications corresponding to the patent applications described in Section 8.1 above, Licensee shall designate in writing that country or those countries, if any, in which Licensee desires such corresponding patent application(s) to be filed. All such applications shall be in University’s name and University shall have the right to make the final decisions for all matters associated with such filings unless payment for the estimated cost of filing is made in advance.
8.3 By written notification to University at least thirty (30) days in advance of any filing or response deadline, or fee due date, Licensee may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting or maintaining any patent application or patent, provided that Licensee pays for all costs incurred up to University’s receipt of such notification. Failure to provide any notification shall be considered by University to be Licensee’s notice that it expressly wishes to support any particular patent(s) or patent application(s). Upon notice that Licensee elects not to have a patent application filed or patent maintained in any particular country, or not to pay expenses associated with prosecuting or maintaining any patent application or patent, University may at its sole discretion file, prosecute, and/or maintain such patent applications or patents at its own expense and for its own benefit, and any rights or license granted hereunder held by Licensee, Affiliates, or Sublicensee(s) to such patent application(s) or patent(s) shall terminate and the parties shall amend Appendix A to reflect the then current Patent Rights or Copyrights.
Patent Prosecution and Maintenance. From and after the date of this Agreement, the provisions of this Section 3 shall control the prosecution and maintenance of any patent or patent application included within Scripps Patent Rights. Subject to the requirements, limitations and conditions set forth in this Agreement, Scripps shall direct and control (i) the preparation, filing and prosecution of the United States and foreign patent applications within Scripps Patent Rights (including any interferences and foreign oppositions) and (ii) maintain the patents issuing therefrom. Scripps shall select the patent attorney, subject to Licensee's written approval, which approval shall not be unreasonably withheld. Both parties hereto agree that Scripps may, at its sole discretion, utilize Scripps' Office of Patent Counsel in lieu of outside counsel for patent prosecution and maintenance described herein, and the fees and expenses incurred by Scripps with respect to work done by such Office of Patent Counsel shall be paid as set forth below. Licensee shall have full rights of consultation with the patent attorney so selected on all matters relating to Scripps Patent Rights. Scripps shall use its best efforts to implement all reasonable requests made by Licensee with regard to the preparation, filing, prosecution and/or maintenance of the patent applications and/or patents within Scripps Patent Rights.
Patent Prosecution and Maintenance. 6.1 Within three months from the execution of this Agreement the parties shall set forth a procedure by which the Licensor will monitor the Patents and Patent Rights as set forth in Schedule A hereto (as the same may be amended or supplemented from time to time after the date hereof), for which the Company will be responsible to diligently prosecute and maintain in the Territory the Patent Rights including, but not limited to, the filing of patent applications for inventions and improvements to the Invention, discovered by the Licensor or the Company, utilizing such patent counsel as may be mutually agreed upon by the parties hereto. The Company agrees to keep the Licensor reasonably well informed with respect to the status and progress of any such applications, prosecutions and maintenance activities and to consult in good faith with the Licensor and take into account the Licensor's comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement.
6.2 The Company may, in its discretion, elect to abandon any patent application or issued patent comprising the Patents Rights, in which case the Company shall make no further use of such Patent Rights and shall have no further royalty obligation to the Licensor in respect of any Licensed Products and Licensed Processes the manufacture, use or sale of which is covered by an issued claim of such abandoned Patent Rights. Prior to any such abandonment, the Company shall give the Licensor at least 60 days notice and a reasonable opportunity to assume prosecution of such Patent Rights. In such event, the Licensor shall have the right, but not the obligation, to commence or continue such prosecution and to maintain any such Patent Rights under its own control and at its expense and the Company shall then make no further use of any such Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed Products and Licensed Processes, the manufacture, use or sale of which is covered by an issued claim of such Patent Rights. The Company agrees to cooperate in such activities, including execution of any assignment or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rights.
Patent Prosecution and Maintenance. 7.1 LSU has the right to control all aspects of drafting, filing, prosecuting, and maintaining all patents and patent ‘applications within the PATENT RIGHTS, including foreign filings. LICENSEE shall, at its own expense, perform all actions and execute or cause to be executed all documents necessary to support such filing, prosecution, or maintenance.
7.2 LSU shall notify LICENSEE of all official communications received by LSU relating to the filing, prosecution and maintenance of the patents and patent applications within the PATENT RIGHTS, including any lapse, revocation, surrender, invalidation or abandonment of any of the patents or patent applications which form the basis for the PATENT RIGHTS.
7.3 (a) LICENSEE shall reimburse LSU for all unreimbursed, reasonable, past legal fees and expenses relating to the filing, prosecution, and maintenance of the PATENT RIGHTS, except as specifically provided in Paragraph 7.4. (For this purpose, “unreimbursed past” fees and costs shall mean such amounts for which invoices had been actually received by LSU on or before the Effective Date, and which amounts had not been reimbursed by a third party as of the same date.) LSU represents that the amount of such unreimbursed past legal fees and other costs as of the Effective Date was [*]; [*] of this amount shall be paid by LICENSEE within [*] days after the Effective Date; [*] shall be paid by LICENSEE within [*] months after the Effective Date, and the remaining [*] shall be paid by LICENSEE within [*] months after the Effective Date. LICENSEE shall remain obligated to pay these amounts by the dates provided, regardless of whether the Agreement might have terminated earlier. Further, and notwithstanding anything to the contrary in this Section 7.3(a), if (i) LICENSEE receives payments from a SUBLICENSEE for reimbursement of amounts for which LICENSEE is required to reimburse LSU under this Section 7.3(a) and, (ii) at the time that LICENSEE receives such payments, LICENSEE has not yet reimbursed LSU for the full amount due under this Section 7.3(a), then within [*] days of receipt LICENSEE will pass through all such amounts received by LICENSEE from such SUBLICENSEE to LSU until the total amount reimbursed by LICENSEE to LSU as the result of such pass-through payments and any other payments equals the full amount of reimbursement due LSU under this Section 7.3(a).
Patent Prosecution and Maintenance. 9.1.1 Kite shall, at its sole cost, be responsible for all the preparation, filing, prosecution and maintenance after the Effective Date of the Licensed Patent Rights listed under the heading Eshhar patents listed on Exhibit A or related thereto (the “Eshhar Patent Rights”). Kite shall give Cabaret an opportunity to review and comment on the text of each patent application subject to this Section 9.1.1 before filing, and shall supply Cabaret with a copy of such patent application as filed, together with notice of its filing date and serial number. Cabaret shall, at Kite’s expense, cooperate with Kite, execute all lawful papers and instruments and make all rightful oaths and declarations as may be necessary in the preparation, prosecution and maintenance of all patents and other filings referred to in this Section 9.
1.1. If Kite, in its sole discretion, decides to abandon the preparation, filing, prosecution or maintenance of any patent or patent application subject to this Section 9.1.1, then Kite shall notify Cabaret in writing thereof and following the date of such notice (a) Cabaret shall be responsible for and shall control, at its sole cost, the preparation, filing, prosecution and maintenance of such patents and patent applications, and (b) Kite thereafter shall have no license under this Agreement to such patent or patent application.
9.1.2 To the extent Cabaret is permitted to grant such rights to Kite, Kite shall have all rights of Cabaret regarding the preparation, filing, prosecution and maintenance after the Effective Date of all patents and patent applications within the Licensed Patent Rights other than the Eshhar Patent Rights.
Patent Prosecution and Maintenance. For all Institute-Funded Inventions for which patent protection is pursued, RECIPIENT shall provide an annual written report to the INSTITUTE regarding the status of pending applications and issued patents that are Institute-Funded IPR.
Patent Prosecution and Maintenance. (a) Pharmasset shall have the right, but not the obligation, at its own cost, to prepare, file, prosecute and maintain all Pharmasset Patents (including prior Pharmasset Patents and patent applications in respect of Pharmasset Inventions) using outside patent counsel of Pharmasset’s choice with strategic input on such choice of counsel from Roche.
(b) If Pharmasset does not wish to prepare, file, prosecute or maintain any Pharmasset Patent in a country on the list of designated countries specified in Schedule 9A (the “Pharmasset Designated Countries”), then Pharmasset shall so notify Roche and Roche shall have the right to prepare, file, prosecute, and maintain any such patent at its own costs and at its own discretion in such country. Roche shall copy Pharmasset on all material correspondence relating to the prosecution and maintenance of such Pharmasset Patent in such country.
(c) Roche shall have the right, but not the obligation, at its own cost, to prepare, file, prosecute and maintain all Roche Patents (including patents and patent applications in respect of Roche Inventions) using outside patent counsel of Roche’s choice with strategic input on such choice of counsel from Pharmasset.
(d) If Roche does not wish to prepare, file, prosecute or maintain any such patent, in a country on the list of designated countries specified in Schedule 9B (the “Roche Designated Countries”), then Roche shall so notify Pharmasset and Pharmasset shall have the right to prepare, file, prosecute, and maintain any such patent at its own costs and at its own discretion in such country. Pharmasset shall copy Roche on all material correspondence relating to the prosecution and maintenance of such patent in such country.
(e) Roche shall be responsible for the preparation, filing, prosecution, and maintenance of all Joint Patent Rights in the Roche Territory, using patent counsel of Roche’s choice with strategic input on such choice of counsel from Pharmasset. All costs associated with filing, prosecution, and maintenance of Joint Patent Rights in the Roche Territory shall be borne by Roche.
(f) Pharmasset shall be responsible for the preparation, filing, prosecution, and maintenance of all Joint Patent Rights in the Pharmasset Territory, using patent counsel of Pharmasset’s choice with strategic input on such choice of counsel from Roche.
(g) If the Party bearing the costs of patent prosecution and maintenance of Joint Patents in accordance with subsections (e) and (f) above ...
Patent Prosecution and Maintenance. (a) Provided that LICENSEE has reimbursed Cornell for Patent Costs pursuant to Paragraph 3.2, Cornell shall diligently prosecute and maintain the United States and, if available, foreign patents, and patent applications, in Patent Rights that are not jointly-owned with LICENSEE (“Cornell Patent Rights”) and in the Nonexclusive Patent Rights using counsel of its choice. Cornell shall provide LICENSEE with copies of all related prosecution filings, and LICENSEE shall keep this documentation confidential. Cornell shall seek and reasonably consider LICENSEE’s advice and input on all material patent prosecution matters. Patent counsel prosecuting and maintaining patent applications and patents within Cornell Patent Rights shall take instructions only from Cornell, and (subject to Paragraph 5.4) all patents and patent applications in the Cornell Patent Rights shall be assigned solely to Cornell.
(b) Cornell shall consider amending any patent application in the Cornell Patent Rights or in the Nonexclusive Patent Rights to include claims reasonably requested by LICENSEE to protect the products contemplated to be sold as Licensed Products by LICENSEE under this Agreement.
(c) LICENSEE may elect to terminate its reimbursement obligations with respect to any patent application or patent in the Cornell Patent Rights or in the Nonexclusive Patent Rights upon [***] written notice to Xxxxxxx. Cornell shall use reasonable efforts to curtail further Patent Costs for such application or patent once such notice of termination has been received from LICENSEE. Cornell, in its sole discretion and at its sole expense, may continue prosecution and maintenance of such application or patent, and LICENSEE shall have no further license with respect thereto. Non-payment by LICENSEE of any portion of Patent Costs with respect to any application or patent may be deemed by Cornell [***] after written notice to LICENSEE of non-payment as an election by LICENSEE to terminate its reimbursement obligations with respect to such application or patent. Cornell is not obligated to file, prosecute, or maintain any patent or patent application within the Cornell Patent Rights or the Nonexclusive Patent Rights outside of the Territory at any time or to file, prosecute, or maintain any patent or patent application within the Cornell Patent Rights or the Nonexclusive Patent Rights to which LICENSEE has terminated its License hereunder.
(d) If LICENSEE becomes aware of an invention that may be jointly...
Patent Prosecution and Maintenance. From and after the date of this Agreement, the provisions of this Section 8 shall control the prosecution of any patent application and maintenance of any patent included within Licensed Patent Rights. TSRI shall (a) direct and control the preparation, filing and prosecution of the United States and foreign patent applications within Licensed Patent Rights (including without limitation any reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences and foreign oppositions); and (b) maintain the patents issuing therefrom. TSRI shall select the patent attorney, subject to Licensee’s written approval, which approval shall not be unreasonably withheld. Both parties agree that TSRI shall have the right, at its sole discretion, to utilize TSRI’s Office of Patent Counsel in lieu of or in addition to independent counsel for patent prosecution and maintenance described herein, and the fees and expenses associated with the work done by such Office of Patent Counsel and/or independent patent counsel with regard to the preparation, filing and prosecution of patent applications and maintenance of patents included within Licensed Patent Rights shall be paid as set forth below. Licensee shall have full rights of consultation with the patent attorney so selected on all matters relating to Licensed Patent Rights. TSRI shall use its reasonable efforts to implement all reasonable and timely requests made by Licensee with regard to the preparation, filing, prosecution and/or maintenance of the patent applications and/or patents within Licensed Patent Rights.
