Domestic Filing and Prosecution. JHU shall have sole control over the selection of counsel, filing, prosecution, maintenance and management of all issued patents and pending and future patent applications in the United States that are subject to this AGREEMENT. JHU, at LICENSEE’s expense, shall have the right to file, prosecute and maintain all patents and patent applications included in the PATENT RIGHTS. JHU shall request its patent counsel to timely copy LICENSEE on all official actions and written correspondence with any patent office and to afford LICENSEE an opportunity to comment on prosecution matters. LICENSEE may elect to abandon its participation in, and rights to, a patent application or issued patent filed in the United States, provided that LICENSEE notifies JHU in writing at least ninety (90) days before any due date for any pending Office Action or matter or any maintenance fee due date in the case of an issued patent. Such election shall not relieve LICENSEE of the obligation to reimburse JHU for PATENT COSTS and PAST PATENT COSTS associated with such application that were incurred before JHU received actual notice of LICENSEE’s abandonment. Thereafter, JHU may file, prosecute, and/or maintain such patent applications or patents at its own expense and for its own benefit and any PATENT RIGHTS granted on such applications or patents shall be excluded from the LICENSED PATENTS. Failure to provide such notification may be considered by JHU to be LICENSEE’s authorization to proceed at LICENSEE’s expense.
Domestic Filing and Prosecution. Except as otherwise provided in Section 9.1, JHU shall have sole control over the selection of counsel, filing, prosecution, maintenance, and management of all issued patents and pending and future patent applications in the United States that are subject to this AGREEMENT. Except as otherwise provided in Section 9.1, JHU, at LICENSEE’s expense, shall have the right to file, prosecute and maintain all patents and patent applications included in the PATENT RIGHTS. JHU shall request its patent counsel to timely copy LICENSEE on all official actions and written correspondence with any patent office, and to afford LICENSEE an opportunity to comment on prosecution matters, and consult with LICENSEE concerning any decisions that could affect the scope or enforcement of any claims. If, upon agreement with JHU, LICENSEE is prosecuting the patent and patent applications, then (a) LICENSEE shall request its patent counsel to timely copy JHU on all official actions and written correspondence with any patent office and to afford JHU an opportunity to comment on prosecution matters and (b) JHU will provide all reasonable cooperation and assistance to LICENSEE, including by providing access to relevant documents, data, information, records, procedures, results, studies, analyses, and other materials requested by LICENSEE, and by making its employees available at reasonable business hours. Either party may elect to abandon its participation in, and rights to, a patent application or issued patent filed in the United States, provided, that the electing party notifies the other party in writing at least ninety (90) days before any due date for any pending Office Action or matter or any maintenance fee due date in the case of an issued patent. Such election, if made by the LICENSEE, shall not relieve LICENSEE of the obligation to reimburse JHU for PATENT COSTS and PAST PATENT COSTS associated with such application that were incurred before JHU received actual notice of LICENSEE’s abandonment. Following such an election, the non-electing party may file, prosecute, and/or maintain such patent applications or patents at its own expense and for its own benefit and any PATENT RIGHTS granted on such applications or patents shall be excluded from the LICENSED PATENTS. Failure to provide such notification may be considered by JHU to be LICENSEE’s authorization to proceed at LICENSEE’s expense.
