Common use of Patent Prosecution and Infringement Clause in Contracts

Patent Prosecution and Infringement. 12.1 After the Effective Date of this Agreement, LICENSEE shall have the primary responsibility for the filing, prosecution, and maintenance of all Licensed Patent(s), including the conduct of all interference, opposition, nullity, and revocation proceedings, using counsel of its choice reasonably acceptable to STANFORD; provided, however, that STANFORD shall have reasonable opportunity to advise and consult with LICENSEE on such matters and may instruct LICENSEE to take such action as STANFORD believes reasonably necessary to protect the Licensed Patent(s). Counsel shall provide both LICENSEE and STANFORD with copies of all material correspondence related to filing, prosecution, and maintenance of the Licensed Patent(s). Invoices for legal services shall be sent directly to LICENSEE with a copy directed to STANFORD. If LICENSEE decides to abandon any patent or patent application within the Licensed Patent(s), it shall give timely notice to STANFORD, which may continue prosecution or maintenance at its sole expense; and any such abandoned patent or patent application shall cease to be a Licensed Patent(s) as of the date of such notice. 12.2 Payment of all reasonable fees and costs relating to the filing, prosecution, and maintenance of the Licensed Patent(s) after the Effective Date of this Agreement shall be the responsibility of LICENSEE. 12.3 STANFORD shall promptly inform LICENSEE of any suspected infringement of any Licensed Patent(s) by a third party. LICENSEE shall have the right at its expense to initiate and control any proceeding relating to any infringement by a third party or any Licensed Patent(s), any declaratory action alleging invalidity or noninfringement of any Licensed Patent(s), or any interference, opposition, nullity or revocation proceeding relating to any Licensed Patent(s) ("Protective Action"). In pursuing such Protective Action, LICENSEE shall provide STANFORD with material information related to the Protective Action and shall have the right, but not the obligation, to join STANFORD as a party to the Protective Action at LICENSEE's expense. STANFORD shall have the right to participate in the Protective Action with its own counsel at its own expense. If LICENSEE brings a Protective Action, it may enter into a settlement, consent judgment, or other voluntary final disposition of such Protective Action at its sole option. Any damages recovered by a Protective Action shall be used first to reimburse LICENSEE for the costs (including attorneys' and expert fees) of such Protective Action actually paid by LICENSEE; and the remainder, if any shall be retained by LICENSEE, except that LICENSEE shall pay STANFORD **** of said remainder. 12.4 If LICENSEE decides not to bring a Protective Action after LICENSEE receives notice from STANFORD under Section 12.3, LICENSEE shall inform STANFORD and STANFORD may institute a Protective Action. In such event, STANFORD shall control such Protective Action, including any settlement, consent judgment or other voluntary final disposition thereof at its sole option, shall bear the entire cost of such Protective Action, and shall be entitled to retain the entire amount of any recovery or settlement. STANFORD may, at its expense, join LICENSEE as a party to such Protective Action. 12.5 Should either STANFORD or LICENSEE commence a Protective Action under this Article 12 and thereafter elect to abandon the same, it shall give timely notice to the other party who may, if it so desires, continue prosecution of such Protective Action, provided, however, that the sharing of past and future expenses and any recovery in such Protective Action shall be as agreed upon between STANFORD and LICENSEE. 12.6 In any Protective Action initiated by a party under this Article 12, the other party hereto shall, at the request and expense of the party initiating such Protective Action, cooperate in all respects and make available relevant records, papers, information, samples, and the like.

Patent Prosecution and Infringement. 12.1 After 7.1. Licensee shall, in the Effective Date name of UKRF, apply for, seek prompt issuance of, and maintain during the term of this Agreement, LICENSEE shall have Agreement any Patent Rights in the primary responsibility for the filing, United States and in foreign countries. The prosecution, filing and maintenance of all Licensed Patent(s)patents shall be the primary responsibility of Licensee, including the conduct of all interference, opposition, nullity, and revocation proceedings, using counsel of its choice reasonably acceptable to STANFORD; provided, however, that STANFORD who shall have reasonable opportunity to advise and consult with LICENSEE on such matters UKRF concerning the foregoing and may instruct LICENSEE to take such action as STANFORD believes reasonably necessary to protect the Licensed Patent(s). Counsel shall provide both LICENSEE and STANFORD with copies of all material correspondence related pertinent filings to filing, prosecution, and maintenance of the Licensed Patent(s). Invoices for legal services shall be sent directly to LICENSEE with a copy directed to STANFORD. If LICENSEE decides to abandon any patent or patent application within the Licensed Patent(s), it shall give timely notice to STANFORD, which may continue prosecution or maintenance at its sole expense; and any such abandoned patent or patent application shall cease to be a Licensed Patent(s) as of the date of such noticeUKRF. 12.2 7.2. Payment of all reasonable fees and costs relating to the filing, prosecution, prosecution and maintenance of the Licensed Patent(s) after the Effective Date of this Agreement all patents shall be the responsibility of LICENSEELicensee. 12.3 STANFORD shall promptly inform LICENSEE 7.3.1. If at any time during the term of any suspected this Agreement, Licensee furnishes to UKRF reasonably convincing written evidence of an infringement of any Licensed Patent(sa patent included in the Patent Rights which adversely and substantially affects the commercial operations of Licensee under the license granted hereunder,and UKRF shall within three (3) months after receipt of such evidence fail to cause such infringement to terminate or to bring a suit or action to compel termination, then payment of royalties under Section 5 hereof shall be waived so long as such infringement continues; provided, however, that such royalties shall not be so waived so long as at least one suit or action is being prosecuted by UKRF for infringement of such patent. 7.3.2. If after said three (3) months, UKRF fails to cause such infringement to terminate or to bring a third party. LICENSEE shall have the right at its expense suit or action to initiate and control any proceeding relating to any infringement by a third party or any Licensed Patent(s)compel termination, any declaratory action alleging invalidity or noninfringement of any Licensed Patent(s), or any interference, opposition, nullity or revocation proceeding relating to any Licensed Patent(s) ("Protective Action"). In pursuing such Protective Action, LICENSEE shall provide STANFORD with material information related to the Protective Action and Licensee shall have the right, but not the obligation, to bring such suit or action to compel termination and shall have the right for such purpose to join STANFORD UKRF as a party to the Protective Action plaintiff at LICENSEELicensee's expense. STANFORD UKRF independently shall have the right to participate join any such suit or action brought by Licensee and, in the Protective Action with its own counsel at its own expense. If LICENSEE brings a Protective Action, it may enter into a settlement, consent judgment, or other voluntary final disposition of such Protective Action at its sole option. Any damages recovered by a Protective Action shall be used first to reimburse LICENSEE for the costs (including attorneys' and expert fees) of such Protective Action actually paid by LICENSEE; and the remainder, if any shall be retained by LICENSEE, except that LICENSEE shall pay STANFORD **** of said remainder. 12.4 If LICENSEE decides not to bring a Protective Action after LICENSEE receives notice from STANFORD under Section 12.3, LICENSEE shall inform STANFORD and STANFORD may institute a Protective Action. In such event, STANFORD shall control pay one-half of the cost of such Protective Action, including any suit or action from the date of joining. No settlement, consent judgment or other voluntary final disposition thereof of the suit may be entered into without the consent of UKRF, which consent shall not unreasonably be withheld. Any damages recovered by such suit or action shall be first used to reimburse each party hereto for the cost of such suit or action (including attorney's fees) actually paid by each party hereto as the case may be, then to reimburse UKRF for any royalties waived under this Section 7.3 and the residue, if any, shall be divided equally between the parties hereto. 7.4. In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought against Licensee, UKRF, at its sole option, shall bear have the entire cost right, within thirty (30) days after commencement of such Protective Actionaction, to intervene and shall be entitled to retain take over the entire amount sole defense of any recovery or settlement. STANFORD may, the action at its own expense, join LICENSEE as a party to such Protective Action. 12.5 Should either STANFORD or LICENSEE commence a Protective Action under this Article 12 and thereafter elect to abandon the same, it shall give timely notice to the other party who may, if it so desires, continue prosecution of such Protective Action, provided, however, that the sharing of past and future expenses and any recovery in such Protective Action shall be as agreed upon between STANFORD and LICENSEE. 12.6 7.5. In any Protective Action initiated by a infringement suit as either party under may institute to enforce the Patent Rights pursuant to this Article 12Agreement, the other party hereto shall, at the request and expense of the party initiating such Protective Actionsuit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, samples and the like.

Patent Prosecution and Infringement. 12.1 After the Effective Date of this Agreement, LICENSEE shall have the primary responsibility for the filing, prosecution, and maintenance of all Licensed Patent(s), including the conduct of all interference, opposition, nullity, and revocation proceedings, using counsel of its choice reasonably acceptable to STANFORD; provided, however, that STANFORD shall have reasonable opportunity to advise and consult with LICENSEE on such matters and may instruct LICENSEE to take such action as STANFORD believes reasonably necessary to protect the Licensed Patent(s). Counsel shall provide both LICENSEE and STANFORD with copies of all material correspondence related to filing, prosecution, and maintenance of the Licensed Patent(s). Invoices for legal services shall be sent directly to LICENSEE with a copy directed to STANFORD. If LICENSEE decides to abandon any patent or patent application within the Licensed Patent(s), it shall give timely notice to STANFORD, which may continue prosecution or maintenance at its sole expense; and any such abandoned patent or patent application shall cease to be a Licensed Patent(s) as of the date of such notice. 12.2 6.1 Payment of all reasonable fees and costs relating to the filing, prosecution, and maintenance of the Licensed Patent(s) Patent Rights after the Effective Date date of this Agreement shall be the responsibility of LICENSEEODI (a) If at any time during the term of this Agreement, ODI furnishes to REI reasonably convincing written evidence of an infringement, whether direct or indirect, of the Patent Rights which eliminates the commercial viability of sales of Licensed Products under the license granted hereunder, and REI shall within three (3) months after receipt of such evidence fail to cause such infringement to terminate or to bring a suit or action to compel termination, then payment of royalties due under ARTICLE IV hereof shall be waived so long as such infringement continues; provided, however, that such royalties shall not be so waived so long as at least one suit or action is being prosecuted by REI for infringement of a patent covering the Invention. 12.3 STANFORD shall promptly inform LICENSEE of any suspected (b) If after said three (3) months, REI fails to cause such infringement of any Licensed Patent(s) by to terminate or to bring a third party. LICENSEE shall have the right at its expense suit or action to initiate and control any proceeding relating to any infringement by a third party or any Licensed Patent(s)compel termination, any declaratory action alleging invalidity or noninfringement of any Licensed Patent(s), or any interference, opposition, nullity or revocation proceeding relating to any Licensed Patent(s) ("Protective Action"). In pursuing such Protective Action, LICENSEE shall provide STANFORD with material information related to the Protective Action and ODI shall have the right, but not the obligation, to bring such suit or action to compel termination and shall have the right for such purpose to join STANFORD REI as a party to the Protective Action plaintiff at LICENSEE's ODI’s expense. STANFORD REI independently shall have the right to participate join any such suit or action brought by 01)I and, in the Protective Action with its own counsel at its own expense. If LICENSEE brings a Protective Action, it may enter into a settlement, consent judgment, or other voluntary final disposition of such Protective Action at its sole option. Any damages recovered by a Protective Action shall be used first to reimburse LICENSEE for the costs (including attorneys' and expert fees) of such Protective Action actually paid by LICENSEE; and the remainder, if any shall be retained by LICENSEE, except that LICENSEE shall pay STANFORD **** of said remainder. 12.4 If LICENSEE decides not to bring a Protective Action after LICENSEE receives notice from STANFORD under Section 12.3, LICENSEE shall inform STANFORD and STANFORD may institute a Protective Action. In such event, STANFORD shall control pay one-half of the cost of such Protective Action, including any suit or action from the date of joining. No settlement, consent judgment or other voluntary final disposition thereof at its sole optionof the suit may be entered into without the consent of ODI, which consent shall bear not unreasonably be withheld. Any damages recovered by such suit or action shall be first used to reimburse each party hereto for the entire cost of such Protective Actionsuit or action (including attorney’s fees and costs) actually paid by each party hereto as the case may be, then to reimburse REI for any royalties and minimum royalties waived under this Section 6.2 and the residue, if any, shall be entitled to retain divided equally between the entire amount of any recovery or settlement. STANFORD may, at its expense, join LICENSEE as a party to such Protective Actionparties hereto. 12.5 Should either STANFORD or LICENSEE commence a Protective Action under this Article 12 and thereafter elect to abandon the same, it shall give timely notice to the other party who may, if it so desires, continue prosecution of such Protective Action, provided, however, that the sharing of past and future expenses and any recovery in such Protective Action shall be as agreed upon between STANFORD and LICENSEE. 12.6 6.2 In any Protective Action initiated by a infringement suit that either party under may institute to enforce the Patent Rights pursuant to this Article 12Agreement, the other party hereto shall, at the request and expense of the party initiating such Protective Actionsuit, cooperate in all respects and, to the extent possible, have its officers, employees, and agents testify when requested and make available relevant records, papersdocuments, information, samples, samples and the like.