Common use of Patent Prosecution and Cost Recovery Clause in Contracts

Patent Prosecution and Cost Recovery. 7.1 University or its designee shall have sole control over the filing, prosecution and maintenance of any and all patent applications, whether pending or not yet filed as of the Effective Date of this Agreement, in Licensed Patents, and of the maintenance and other management of any and all issued patents in Licensed Patents. The Parties agree to use the Seattle, Washington law firm of Xxxxxxxxxxx, X’Xxxxxx, Xxxxxxx and Kindness as legal counsel for all patent matters and to change such counsel by mutual agreement. 7.2 University shall keep Licensee informed of the status of any and all patents and patent applications comprising Licensed Patents and shall provide to Licensee timely copies of all correspondence with the United States Patent and Trademark Office (as well as any foreign equivalent bodies), and shall provide Licensee with the opportunity from time to time to advise University on courses of action respecting the filing of new patent applications relating to the Invention, prosecution of patent applications, and management of patents in Licensed Patents, provided University shall have sole authority to prosecute Licensed Patents. If University determines that it will not maintain any of the Licensed Patents, University will provide timely notice to Licensee and shall provide to Licensee reasonable opportunity to maintain such Licensed Patents. 7.3 Licensee agrees to reimburse University for all fees and costs relating to the preparation (including any investigation and analysis directly relating to such preparation), filing, prosecution and maintenance of patent applications, including, without limitation, interferences, oppositions, and reexaminations, and maintenance and defense of patents, in Licensed Patents, whether incurred prior to the execution of this Agreement or during the term of this Agreement. Such fees and costs shall not include costs incurred by the University in the use of its own resources, such as employee time, and shall not extend to patenting fees and costs incurred by University after termination of this Agreement. Licensee agrees to pay invoices for such fees and costs submitted by University with thirty (30) days after receipt of any such invoice. Alternatively, University may instruct its legal counsel to send copies of all invoices related to the Licensed Patents directly to Licensee, and Licensee shall reimburse the invoicer directly as if that invoicer were University. University shall further instruct its legal counsel to notify University should any such invoice remain unreimbursed for a period of more than thirty days from the date of invoice. In any country where Licensee fails to pay fees and costs invoiced to Licensee by University within sixty (60) days of the date of such invoice, University may file, prosecute and/or maintain a patent application or patent at its own expense and for its own exclusive benefit, and Licensee thereafter shall not be licensed under such patent or patent application within such country.

Patent Prosecution and Cost Recovery. 7.1 University or its designee UW shall have sole control over the filing, prosecution and maintenance of any and all patent applications, whether pending or not yet filed as at the time of the Effective Date execution of this Agreement, in Licensed PatentsLICENSED PATENTS, and of the maintenance and other management of any and all issued patents in Licensed PatentsLICENSED PATENTS. The Parties agree to use the Seattle, Washington law firm of Xxxxxxxxxxx, X’Xxxxxx, Xxxxxxx and Kindness as legal counsel for all patent matters and to change such counsel by mutual agreement. 7.2 University UW shall keep Licensee informed of the status of any and all patents and patent applications comprising Licensed Patents LICENSED PATENTS, consult with Licensee regarding the prosecution and shall provide to Licensee timely copies maintenance of all correspondence with the United States Patent and Trademark Office (as well as any foreign equivalent bodies)LICENSED PATENTS, and shall provide Licensee with the opportunity from time to time to advise University UW on courses of action respecting the action, filing and prosecution of new patent applications relating to the InventionINVENTIONS and all reissues, reexaminntions, extensions, divisionals, continuations, and continuations-in-part thereof, and management of patents in LICENSED PATENTS (including the opportunity to appear before patent examiners together with UW's patent counsel); provided, however, that UW will have the right to make final determinations with respect to such prosecution and maintenance. 7.2 Licensee agrees to reimburse UW for all reasonable fees and costs relating to the filing and prosecution of patent applications, and management of patents in Licensed Patents, provided University shall have sole authority to prosecute Licensed Patents. If University determines that it will not maintain any of the Licensed Patents, University will provide timely notice to Licensee and shall provide to Licensee reasonable opportunity to maintain such Licensed Patents. 7.3 Licensee agrees to reimburse University for all fees and costs relating to the preparation (including any investigation and analysis directly relating to such preparation), filing, prosecution and maintenance of patent applications, including, without limitation, interferences, oppositions, and reexaminations, and maintenance and defense of patents, in Licensed PatentsLICENSED PATENTS, whether incurred prior to the execution of this Agreement or during the term of this Agreement. Agreement Such fees and costs shall not include costs incurred by the University in the use of its own resources, such as employee time, and shall not extend to patenting fees and costs incurred by University UW after termination of this Agreement. Licensee agrees to pay invoices for such fees and costs submitted by University with thirty (30) days after UW upon receipt of any such invoice. Alternatively, University UW may instruct choose to have its legal patent counsel to send copies of all submit invoices related to the Licensed Patents directly to Licensee, and Licensee shall reimburse the invoicer directly as if that invoicer were University. University shall further instruct its legal counsel to notify University should any such invoice remain unreimbursed for a period of more than thirty days from the date of invoice. In any country where Licensee fails to pay fees and costs invoiced to Licensee by University within sixty (60) days of the date of such invoice, University may file, prosecute and/or maintain a patent application or patent at its own expense and for its own exclusive benefit, and Licensee thereafter shall not be licensed under such patent or patent application within such countrypayment.

Patent Prosecution and Cost Recovery. 7.1 University or its designee UW shall have sole control over the filing, prosecution and maintenance of any and all patent applications, whether pending or not yet filed as at the time of the Effective Date execution of this Agreement, in Licensed PatentsLICENSED PATENTS, and of the maintenance and other management of any and all issued patents in Licensed PatentsLICENSED PATENTS. The Parties agree to use the Seattle, Washington law firm of Xxxxxxxxxxx, X’Xxxxxx, Xxxxxxx and Kindness as legal counsel for all patent matters and to change such counsel by mutual agreement. 7.2 University UW shall keep Licensee informed of the status of any and all patents and patent applications comprising Licensed Patents LICENSED PATENTS, consult with Licensee regarding the prosecution and shall provide to Licensee timely copies maintenance of all correspondence with the United States Patent and Trademark Office (as well as any foreign equivalent bodies)LICENSED PATENTS, and shall provide Licensee with the opportunity from time to time to advise University UW on courses of action respecting the action, filing and prosecution of new patent applications relating to the InventionINVENTIONS and all reissues, reexaminations, extensions, divisionals, continuations, and continuations-in-part thereof, and management of patents in LICENSED PATENTS (including the opportunity to appear before patent examiners together with UW's patent counsel); provided, however, that UW will have the right to make final determinations with respect to such prosecution and maintenance. 7.2 Licensee agrees to reimburse UW for all reasonable fees and costs relating to the filing and prosecution of patent applications, and management of patents in Licensed Patents, provided University shall have sole authority to prosecute Licensed Patents. If University determines that it will not maintain any of the Licensed Patents, University will provide timely notice to Licensee and shall provide to Licensee reasonable opportunity to maintain such Licensed Patents. 7.3 Licensee agrees to reimburse University for all fees and costs relating to the preparation (including any investigation and analysis directly relating to such preparation), filing, prosecution and maintenance of patent applications, including, without limitation, interferences, oppositions, and reexaminations, and maintenance and defense of patents, in Licensed PatentsLICENSED PATENTS, whether incurred prior to the execution of this Agreement or during the term of this Agreement. Agreement Such fees and costs shall not include costs incurred by the University in the use of its own resources, such as employee time, and shall not extend to patenting fees and costs incurred by University UW after termination of this Agreement. Licensee agrees to pay invoices for such fees and costs submitted by University with thirty (30) days after UW upon receipt of any such invoice. Alternatively, University UW may instruct choose to have its legal patent counsel to send copies of all submit invoices related to the Licensed Patents directly to Licensee, and Licensee shall reimburse the invoicer directly as if that invoicer were University. University shall further instruct its legal counsel to notify University should any such invoice remain unreimbursed for a period of more than thirty days from the date of invoice. In any country where Licensee fails to pay fees and costs invoiced to Licensee by University within sixty (60) days of the date of such invoice, University may file, prosecute and/or maintain a patent application or patent at its own expense and for its own exclusive benefit, and Licensee thereafter shall not be licensed under such patent or patent application within such countrypayment.