Provision Language
7. PATENT FILING, PROSECUTION, AND MAINTENANCE
7.1 The Licensee, [***] the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, [***] furnish copies of [***] patent-related documents to the NIAID. The Licensee shall [***] select [***] registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the NIAID. The NIAID shall provide appropriate powers of attorney, [***] necessary to undertake such action to the patent attorneys or patent agents providing these services. [***]
7.2 The Parties shall promptly inform one another as to all [***] matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights.
11. INFRINGEMENT AND PATENT ENFORCEMENT
11.1 The NIAID and the Licensee agree to notify each other promptly of each infringement or possible infringement of the Licensed Patent Rights, as well as, any facts which may affect the validity, scope, or enforceability of the Licensed Patent Rights of which either party becomes aware.
11.2 Pursuant to this Agreement and the provisions of 35 U.S.C. Chapter 29, the Licensee may:
(a) bring suit in its own name, at its own expense, and on its own behalf for infringement of presumably valid claims in the Licensed Patent Rights;
(b) in any suit, enjoin infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for the infringement; or
(c) settle any claim or suit for infringement of the Licensed Patent Rights provided, however, that the NIAID and appropriate Government authorities shall [***] such actions; and
(d) if the Licensee desires to initiate a suit for patent infringement, the Licensee shall notify the NIAID in writing [***]. The NIAID shall have a continuing right to intervene in the suit. The Licensee may request the Government to initiate or join in any suit if necessary to avoid dismissal of the suit. Should the Government be made a party to any suit, the Licensee shall reimburse the Government for any costs, expenses, or fees which the Government incurs as a result of the motion or other action, including all costs incurred by the Government in opposing the motion or other action. In all cases, the Licensee agrees to keep the NIAID reasonably apprised of the status and progress of any litigation. Before the Licensee commences an infringement action, the Licensee shall notify the NIAID and give careful consideration to the views of the NIAID and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.3 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the Licensed Patent Rights shall be brought against the Licensee or raised by way of counterclaim or affirmative defense in an infringement suit brought by the Licensee under Paragraph 11.2, pursuant to this Agreement and the provisions of 35 U.S.C. Chapter 29 or other statutes, the Licensee may:
(a) defend the suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the Licensed Patent Rights;
(b) in any suit, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for the infringement;
(c) settle any claim or suit for declaratory judgment involving the Licensed Patent Rights-provided, however, that the NIAID and appropriate Government authorities shall be consulted prior to any such actions and shall have a continuing right to intervene in the suit; and if NIAID does not notify the Licensee of its intent to respond to the legal action within a reasonable time, the Licensee shall be free to do so.
11.4 The Licensee shall take no action to compel the Government either to initiate or to join in any declaratory judgment action. The Licensee may request the Government to initiate or to join any suit if necessary to avoid dismissal of the suit. Should the Government be made a party to any suit by motion or any other action of the Licensee, the Licensee shall reimburse the Government for any costs, expenses, or fees, which the Government incurs as a result of the motion or other action. If the Licensee elects not to defend against the declaratory judgment action, the NIAID, at its option, may do so at its own expense. In all cases, the Licensee agrees to keep the NIAID reasonably apprised of the status and progress of any litigation. Before the Licensee commences an infringement action, the Licensee shall notify the NIAID and [***] the views of the NIAID and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.5 In any action under Paragraphs 11.2, 11.3 or 11.4 the expenses including costs, fees, attorney fees, and disbursements, shall be paid by the Licensee. The value of any recovery made by the Licensee through court judgment or settlement shall be treated as Net Sales and subject to royalties as specified in Appendix C.
11.6 The NIAID shall cooperate fully with the Licensee in connection with any action under Paragraphs 11.2, 11.3 or 11.4. The NIAID agrees promptly to provide access to all necessary documents and to render reasonable assistance in response to a request by the Licensee.
11.7 [***]