Patent Prosecution and Maintenance Contract Clauses (58)

Patent Prosecution and Maintenance. Hospital shall be responsible for the preparation, filing, prosecution and maintenance of all patent applications and patents included in Patent Rights. Company shall reimburse Hospital for Patent Costs incurred by Hospital relating thereto in accordance with Section 4.2. 6.2 Copies of Documents. With respect to any Patent Right licensed hereunder, if requested in writing by Company, Hospital shall instruct the patent counsel prosecuting such Patent Right to (i) copy Company on patent prosecutio...n documents that are received from or filed with the United States Patent and Trademark Office and foreign equivalent, as applicable; (ii) provide Company with copies of draft submissions to the USPTO prior to filing; and (iii) give consideration to the comments and requests of Company or its patent counsel. 6.3 Company's Election Not to Proceed. Company may elect to surrender any patent or patent application in Patent Rights in any country upon [***] ([***]) days advance written notice to Hospital. Such notice shall relieve Company from the obligation to pay for future Patent Costs but shall not relieve Company from responsibility to pay Patent Costs incurred prior to the expiration of the [***] ([***]) day notice period. Such U.S. or foreign patent application or patent shall thereupon cease to be a Patent Right hereunder, and Company shall have no further rights therein and Hospital shall be free to license its rights to that particular U.S. or foreign patent application or patent to any other party on any terms. 6.4 Confidentiality of Prosecution and Maintenance Information. Company agrees to treat all information related to prosecution and maintenance of Patent Rights as Confidential Information in accordance with the provisions of Appendix C. [***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed. 10 7. THIRD PARTY INFRINGEMENT AND LEGAL ACTIONS 7.1 Hospital Right to Prosecute. Except as provided in 7.1 (a), Hospital will protect its Patent Rights from infringement and prosecute infringers when, in its sole judgment, such action may be reasonably necessary, proper and justified. If Company shall have supplied Hospital with written evidence demonstrating to Hospital's reasonable satisfaction prima facie infringement of a claim of a Patent Right in the License Field in the License Territory by a third party which poses a material threat to Company's rights under this Agreement, Company may by notice request Hospital to take steps to protect such Patent Right. Hospital shall notify Company within [***] of the receipt of such notice whether Hospital intends to prosecute the alleged infringement. If Hospital notifies Company that it intends to so prosecute, Hospital shall, within [***] of its notice to Company either (i) cause such infringement to terminate, or (ii) initiate legal proceedings against the infringer. If Hospital does not do so within this [***] period, Hospital and Company will discuss in good faith the best path forward to terminate the infringement. (a) Notwithstanding Section 7.1, if a Patent Right is listed by Company or its Sublicensee on the "Approved Drug Products with Therapeutic Equivalence Evaluations" (referred to as the "Orange Book") by the U.S. Food and Drug Administration ("FDA") in connection with an approved Product, or its equivalent in another country, the Parties agree to discuss in good faith how to handle the litigation and which party should take the lead responsibility and pay for the action. (b) Hospital shall not offer a non-exclusive license to a generic company to make or sell Product without Company's prior written consent. 7.2 Cooperation. Both Parties agree to cooperate with each other in any action taken under Section 7, provided that the acting Party reimburses the other for reasonable costs and expenses incurred in connection with providing such assistance, except for the expense of any independent counsel retained by the non-acting Party. View More

Patent Prosecution and Maintenance. As long as the Licensee has paid patent costs as provided for in this Article, The Regents shall diligently endeavor to prosecute and maintain the United States and foreign patents comprising Regents' Patent Rights using counsel of its choice. The Licensee agrees that the Patent Rights are being managed by Kenneth Jenkins. If a new patent attorney is engaged by The Regents for the management and prosecution of the Patent Rights such counsel will be selected after good faith consultation with Lic...ensee and using reasonable efforts to find mutually acceptable counsel. The Regents will provide the Licensee with copies of all relevant documentation so that the Licensee will be informed of the continuing prosecution and may comment upon such documentation sufficiently in advance of any initial deadline for filing a response, provided, however, that if the Licensee has not commented upon such documentation in a reasonable time for The Regents to sufficiently consider the Licensee's comments prior to a deadline with the relevant government patent office, or The Regents must act to preserve the Patent Rights, The Regents will be free to respond without consideration of the Licensee's comments, if any. The Licensee agrees to keep this documentation confidential. The Regents' counsel will take instructions only from The Regents, and all patents and patent applications under this Agreement will be assigned solely to The Regents. The Regents shall use all reasonable efforts to amend any patent application to include claims reasonably requested by the Licensee to protect the products contemplated to be sold under this Agreement and to file and prosecute patents in foreign countries indicated by and paid for by Licensee. 20.2 Patent Term. The Licensee shall apply for an extension of the term of any patent included within Regents' Patent Rights if the Licensee determines doing so is appropriate under the Drug Price Competition and Patent Term Restoration Act of 1984 and/or European, Japanese and other foreign counterparts of this Law. The Licensee shall prepare all documents, and The Regents agrees to execute the documents and to take additional action as the Licensee reasonably requests in connection therewith. 20.3 Costs. The Licensee will bear all costs of preparing, filing, prosecuting and maintaining all United States and foreign patent applications contemplated by this Agreement ("Patent Prosecution Costs"). Patent Prosecution Costs billed by The Regents' counsel will be rebilled to the Licensee and are due within thirty (30) days of rebilling by The Regents. These Patent Prosecution Costs will include, without limitation, patent prosecution costs for the Invention incurred by The Regents prior to the execution of this Agreement and any patent prosecution costs that may be incurred for patentability opinions, re-examination, re-issue, interferences, oppositions or inventorship determinations. Prior Patent Prosecution Costs will be due within thirty (30) days after the later of execution of this Agreement and billing by The Regents. If The Regents reduces the exclusive license granted herein to a non-exclusive license pursuant to Paragraph 12.7, and The Regents grants additional licenses to the Patent Rights within the Field of Use, then future 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 subsequently granted license agreement. 20.4 Effects of Termination. The Licensee will be obligated to pay any Patent Prosecution Costs incurred during the three (3)-month period after receipt by either party of a Notice of Termination, even if the invoices for such Patent Prosecution Costs are received by the Licensee after the end of the three (3)-month period following receipt of a Notice of Termination. The Licensee may terminate its obligation to pay Patent Prosecution Costs with respect to any given patent application or patent under Patent Rights in any or all designated countries upon three (3)-months' written notice to The Regents. The Regents may continue prosecution and/or maintenance of such application(s) or patent(s), and applications in foreign countries where Licensee has elected not to file, at its sole discretion and expense, provided, however, that the Licensee will have no further right or licenses thereunder. Non-payment of Patent Prosecution Costs may be deemed by The Regents as an election by the Licensee not to maintain such application(s) or patent(s). View More

Patent Prosecution and Maintenance. 5.1Patent Prosecution and Maintenance. Subject to Section 5.2, for each patent application and patent included within the Licensed Patents, Licensor shall: (a)prepare, file, prosecute, and maintain such Licensed Patent at its sole cost and expense using reasonable care and skill and using counsel reasonably acceptable to Licensee; (b)keep Licensee currently informed of the filing and progress of all material aspects of the prosecution of such patent application and the issuance of patents from a...ny such patent application; (c)provide Licensee with a copy of such patent application, amendments thereto, and other related correspondence to and from patent offices, and, to the extent reasonably practicable, permit Licensee an opportunity to offer its comments thereon before making a submission to a patent office and Licensor shall consider in good faith Licensee's comments; (d)consult with Licensee concerning any decisions that could affect the scope or enforcement of any issued claims or the potential abandonment of such patent application or patent; and (e)notify Licensee in writing of any changes in the scope or status of such patent or patent application. 5.2Abandonment. If Licensor plans to abandon the Patent Application or any other patent application or patent included in the Licensed Patents in the Territory, Licensor shall notify Licensee in writing at least ninety (90) days in advance of the due date of any payment or other action that is required to prosecute and maintain such Licensed Patent. Following such notice, Licensee will have the right, in its sole discretion, to assume control and direction of the prosecution and maintenance of such Licensed Patent at its sole cost and expense in such country, and Licensor shall, at Licensee's request, assign to Licensee such patent application or patent. Effective as of the effective 10 date of any such assignment under this Section 5.2, such patent application or patent shall no longer be a Licensed Patent. View More

Patent Prosecution and Maintenance. Penn controls the preparation, prosecution and maintenance of the Patent Rights and the selection of patent counsel, with input from Company. For purposes of this Article 7, the word "maintenance" includes any interference negotiations, claims, or proceedings, in any forum, brought by Penn, CU, UFLA, Company, a third party, or the United States Patent and Trademark Office relating to the Patent Rights, and any requests by Penn, CU, UFLA or Company that the United States Patent and Trademark Offi...ce reexamine or reissue any patent in the Patent Rights. After first BLA approval for the first Licensed Product, Company shall be obligated to seek, within the time period set forth by statute, a patent term extension for a patent under the licensed Patent Rights, provided that the remedy set forth in the immediately following sentence shall be Company's sole and exclusive liability and Penn's sole and exclusive remedy for any failure by Company to satisfy such obligation. If Company does not seek a patent term extension for a patent under the licensed Patent Rights, then Company will pay Penn a royalty of [**] percent ([**]%) of Net Sales in the United States, and [**] percent ([**]%) of Net Sales in countries outside the United States during the Term of the License, subject to any applicable reduction to such royalties under Section 3.2. For clarity, if Company seeks to obtain such a patent term extension within the time period set forth by statute, Company shall pay Penn a royalty of [**] percent ([**]%) of Net Sales in the United States and [**] percent ([**]%) of Net Sales in countries outside the United States during the Term of the License, subject to any applicable reduction to such royalties under Section 3.2. 7.2 Payment and Reimbursement. Within [**] days after the Effective Date, Company will reimburse Penn for all historically accrued or unpaid attorneys' fees, expenses, official fees and all other charges accumulated prior to the Effective Date incident to the preparation, filing, prosecution and maintenance of U.S. Patent No. [**], to the extent not previously reimbursed by Company under the Original Agreement. Company will reimburse Penn for all documented attorneys' fees, expenses, official fees and all other charges accumulated on or after the Effective Date incident to the maintenance of U.S. Patent No. [**], within [**] days after Company's receipt of invoices for such fees, expenses and charges. Penn will be solely responsible for all attorneys' fees, expenses, official fees and all other charges accumulated on or after the Effective Date incident to the preparation, filing, prosecution, and maintenance of all other Patent Rights. Penn reserves the right to require the Company to provide a deposit in advance of incurring out of pocket patent expenses for U.S. Patent No. [**] estimated by counsel to exceed $[**]. If Company fails to reimburse patent expenses under this Section 7.2, or provide a requested deposit with respect to U.S. Patent No. [**], then Penn will be free at its discretion and expense to either abandon U.S. Patent No. [**] or to continue such maintenance activities, and U.S. Patent No. [**] and any continuation will be automatically excluded from the term "Patent Rights" hereunder. Penn is free at its discretion and expense to either abandon or continue the preparation, filing, prosecution, and maintenance of all Patent Rights other than U.S. Patent No. [**] at any time. View More