Provision Language
ARTICLE 3 – CONSIDERATION
3.1 LICENSEE shall pay the following to MICHIGAN.
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(f) LICENSEE shall reimburse MICHIGAN for patent expenses incurred prior to the EFFECTIVE DATE, according to the following schedule: _______. LICENSEE has had an opportunity to investigate and inquire as to such prior patent expenses prior to the execution of this agreement. Patent expenses incurred after the EFFECTIVE DATE are addressed in Article 7 below.
ARTICLE 4 – REPORTS
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4.5 LICENSEE shall provide written notice to MICHIGAN at least 90 days prior to bringing any action, including administratively, seeking either to invalidate any claim of under any MICHIGAN patent rights or a declaration of non-infringement. LICENSEE shall include with such written notice an identification of all prior art it believes may invalidate or render unenforceable any such claim, along with an explanation thereof. LICENSEE agrees to dismiss with prejudice any action filed in violation of this provision.
ARTICLE 7 – PATENT APPLICATIONS AND MAINTENANCE
7.1 MICHIGAN shall have the right to control all aspects of filing, prosecuting, and maintaining all of the patents and patent applications that form the basis for the PATENT RIGHTS, including (a) administrative reexaminations and reviews; and (b) disputes (including litigation) regarding inventorship and derivation, and interferences. LICENSEE shall fully cooperate with MICHIGAN in activities relating to the PATENT RIGHTS, including said activities. Upon MICHIGAN’s request, to the fullest extent permitted by law, LICENSEE shall apply for and prosecute, or support in any reasonable way MICHIGAN’s application for, a patent term extension for patents included in the PATENT RIGHTS.
7.2 MICHIGAN shall notify LICENSEE of all information received by MICHIGAN relating to the filing and prosecution of the PATENT RIGHTS, and shall make reasonable efforts to allow LICENSEE to review, comment, and advise upon such information. LICENSEE shall hold such information confidential and to use the information provided by MICHIGAN only for the purpose of advancing MICHIGAN’s PATENT RIGHTS.
7.3 LICENSEE shall reimburse MICHIGAN for all fees and costs relating to the activities described in this Article. Such reimbursement shall be made within thirty days of receipt of MICHIGAN’s invoice and shall be subject to the interest and other requirements specified in Article 4 above. LICENSEE agrees that unless it fully complies with all Paragraphs in this Agreement relating to entity status, LICENSEE shall be obligated to reimburse MICHIGAN for “Large Entity” patent fees.
ARTICLE 8 – ENFORCEMENT
8.1 Each party shall promptly advise the other in writing of any known acts of potential infringement of the PATENT RIGHTS by another party. [After the earlier of (a) the FIRST COMMERCIAL SALE or (b) LICENSEE makes any required Investigational Device Exemption or Investigational New Drug Application (or equivalent) filing with the Food and Drug Administration, LICENSEE has the first option to enforce the PATENT RIGHTS against infringement by other parties within the TERRITORY and the FIELD OF USE, including those prior to the EFFECTIVE DATE. LICENSEE shall not file any suit without (a) first performing a thorough, diligent investigation of the merits of such suit, including with respect to the validity and enforceability of the PATENT RIGHTS; (b) there being reasonable legal and economic bases for doing so; and (c) notifying MICHIGAN twenty days before any such filing. This right to enforce includes filing, prosecuting, and settling all infringement actions at its expense, except that LICENSEE shall make any such settlement only with the advice and consent of MICHIGAN. LICENSEE has the right to file suit using counsel of its choosing, subject to MICHIGAN’s approval, which shall not be unreasonably withheld or delayed. LICENSEE may grant to third parties the right to enforce hereunder, but only with the express written permission of MICHIGAN.
8.2 If LICENSEE has complied with Paragraph 8.1, MICHIGAN shall provide reasonable assistance to LICENSEE with respect to such actions, but only if LICENSEE promptly reimburses MICHIGAN for out-of-pocket expenses incurred in connection with any such assistance rendered at LICENSEE’S request or reasonably required by MICHIGAN, including but not limited to expenses incurred in complying with discovery duties. LICENSEE shall defend, indemnify and hold harmless MICHIGAN with respect to any claims asserted by an alleged infringer reasonably related to the enforcement of the PATENT RIGHTS under this Article, including but not limited to antitrust counterclaims and claims for recovery of attorney fees.
8.3 MICHIGAN and its employees have a vital interest in the validity, interpretation, and enforceability of the PATENT RIGHTS. If a third party files a suit, including as a counterclaim, alleging that any of the PATENT RIGHTS is invalid or unenforceable, then the parties shall jointly control the defense of such claim. Each party shall consult with the other with respect to the defense of such claim, and shall reasonably consider the other party’s input. In furtherance of such joint control, at the onset of such claim and as reasonable during the pendency of any such claim, the parties shall meet and confer in good faith to set a plan for handling the defense thereof. The parties expect that in general LICENSEE will have the right to lead daily activities, including but not limited to discovery, relating to the defense. Notwithstanding, in the event that the parties cannot agree on how to proceed with respect to such claim, MICHIGAN shall have the right to control the defense thereof on either a temporary or permanent basis. LICENSEE shall be responsible for the reasonable costs and fees associated with the activities under this Paragraph 8.3. The parties shall consider reasonable controls on costs and fees as part of an aforementioned meet and confer with respect to the handling of the defense. Notwithstanding, if a third party asserts jurisdiction for any such action solely as the result of acts of MICHIGAN, then MICHIGAN shall be responsible for such reasonable costs and fees.
8.4 If LICENSEE enforces the PATENT RIGHTS and recovers damages in litigation or settlement thereof, the award shall be applied first to satisfy LICENSEE’s and MICHIGAN’s reasonable expenses and legal fees for the litigation. The remaining balance shall be divided equally between LICENSEE and MICHIGAN. This provision shall control the division of revenues where a sublicense, covenant not to sue, or assignment of rights is granted as part of a settlement of such lawsuit (including prospective rights).
ARTICLE 13 – MISCELLANEOUS PROVISIONS
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13.4 LICENSEE agrees to mark the LICENSED PRODUCTS sold in the United States with all applicable United States patent numbers as necessary to meet the requirements of 35 U.S.C. 287 so that the full benefits of patent enforcement may be realized. All LICENSED PRODUCTS shipped to or sold in other countries shall be marked to comply with the patent laws and practices of the countries of manufacture, use and SALE.
