Common use of FILING PATENT APPLICATIONS Clause in Contracts

FILING PATENT APPLICATIONS. A. The Parties agree that the Party initially indicated as having an ownership interest in any Subject Inventions shall have the responsibility for filing and prosecuting any U.S. and foreign patent application(s) thereon. B. The Parties agree that if neither Party desires to file a patent application for any invention, notification of such negative intent shall be made to the DOE within twelve (12) months after the initial disclosure of such invention, but not later than sixty (60) days prior to the time when any statutory bar might foreclose filing of a U.S. patent application. The Participant further agrees to notify the Contractor promptly if it decides not to continue the prosecution of any application for, to pay the maintenance fees on, or defend in a re- examination or opposition proceeding on, a patent on a Subject Invention. The purpose of the foregoing notification is to allow the Government to file patent applications and/or continue prosecution, maintenance or defense of a patent in its own name if it so chooses, and each of the Parties agrees to provide the necessary documents to enable the Government to do so. The obligation contained in Article VIII, Paragraph B prohibiting licensing shall extinguish upon a decision by Participant not to file, prosecute, maintain or defend a patent application hereunder.