6. Royalties and Reimbursement
6.8 With regard to unreimbursed expenses associated with the preparation, filing, prosecution, and maintenance of all patent applications and patents included within the Licensed Patent Rights and paid by IC prior to the effective date of this Agreement, the Licensee shall require each Sublicensee to pay Licensee, and Licensee shall pay IC upon the grant of each Sublicense, as an additional royalty, within sixty (60) days of IC’s submission of a statement and request for payment to the Licensee, an amount equivalent to a Pro Rata Share of the unreimbursed patent expenses previously paid by IC. The Licensee’s obligation for each of its Sublicensee(s) under this clause shall not exceed 25% per Sublicensee of said unreimbursed expenses previously paid by IC.
6.9 With regard to unreimbursed expenses associated with the preparation, filing, prosecution, and maintenance of all patent applications and patents included within the Licensed Patent Rights and paid by IC on or after the effective date of this Agreement, IC, at its sole option, may require the Licensee to collect from Sublicensee(s) and to pay IC:
(a) on an annual basis, within sixty (60) days of IC’s submission of a statement and request for payment, a royalty amount equivalent to the lesser of (a) a Pro Rata Share or (b) twenty-five percent (25%) of these unreimbursed expenses paid during the previous calendar year(s) for each of its Sublicensee(s);
(b) the lesser of (a) a Pro Rata Share or (b) twenty-five percent (25%) of these unreimbursed expenses for each of its Sublicensee(s) directly to the law firm employed by IC to handle these functions. However, in this event, IC and not the Licensee shall be the client of the law firm,
6.10 Under exceptional circumstances, the Licensee may be given the right to assume responsibility for the preparation, filing, prosecution, or maintenance of any patent application or patent included with the Licensed Patent Rights. In that event, the Licensee shall directly pay the attorneys or agents engaged to prepare, file, prosecute, or maintain these patent applications or patents and shall provide IC with copies of each invoice associated with these services as well as documentation that these invoices have been paid.
6.11 IC agrees, upon written request, to provide the Licensee with summaries of patent prosecution invoices for which IC has requested payment from the Licensee under Paragraphs 6.8 and 6.9. The Licensee agrees that all information provided by IC related to patent prosecution costs shall be treated as confidential commercial information and shall not be released to a third party, other than to Licensee’s Sublicensee(s) as confidential commercial information, except as required by law or a court of competent jurisdiction.
6.12 The Licensee may elect to surrender its rights for any individual Sublicensee in any country of the Licensed Territory under any of the Licensed Patent Rights upon sixty (60) days written notice to IC and owe no payment obligation for that Sublicensee under Paragraph 6.9 for patent-related expenses paid in that country after the effective date of the written notice.
7. Patent Filing, Prosecution and Maintenance
7.1 IC agrees to take responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights.
11. Infringement and Patent Enforcement
11.1 IC 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 In the event that a declaratory judgment action alleging invalidity of any of the Licensed Patent Rights shall be brought against IC, IC agrees to notify the Licensee that an action alleging invalidity has been brought. IC does not represent that it shall commence legal action to defend against a declaratory action alleging invalidity. The Licensee shall take no action to compel the Government either to initiate or to join in any declaratory judgment action. 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. Upon the Licensee’s payment of all costs incurred by the Government as a result of the Licensee’s joinder motion or other action, these actions by the Licensee shall not be considered a default in the performance of any material obligation under this Agreement.
12. Negation of Warranties and Indemnification
12.5 IC does not represent that it shall commence legal actions against third parties infringing the Licensed Patent Rights.
14. General Provisions
14.9 The Licensee agrees to require Sublicensee(s) to mark the Licensed Products or their packaging sold in the United States with all applicable U.S. patent numbers and similarly to indicate “Patent Pending” status. All Licensed Products manufactured in, shipped to, or sold in other countries shall be marked in a manner to preserve IC patent rights in those countries.