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 first opportunity to file U.S. and foreign patent applications; but if such Party does not file such applications within six (6) months after disclosure, then the other Party to this CRADA may file patent applications on such Subject Inventions and the Party initially having ownership interests shall fully cooperate in this effort. The Parties shall share equally in the costs for the prosecution, filing and maintenance of joint Subject Inventions where both Parties elect to retain title to their undivided rights. B. The Parties agree that DOE has the right to file patent applications in any country if neither Party desires to file a patent application for any Subject Invention. Notification of such negative intent shall be made in writing to the DOE Contracting Officer within nine (9) months after the initial disclosure of such Subject Invention or not later than sixty (60) days prior to the time when any statutory bar might foreclose filing of a U.S. patent application. C. A Party electing title or filing a patent application in the United States or in an foreign country shall advise the other Party and the DOE if it no longer desires to continue prosecution or retain title in the United States or any foreign country. The other Party and then the DOE will be afforded the opportunity to take title and retain the patent rights in the United States or any such foreign country. D. Every twelve (12) months from the date of the CRADA, each Party shall deliver to the other Party interim reports listing the Subject Inventions, if any, it has produced during the preceding twelve (12) month period. If a Party has produced no Subject Invention for any twelve (12) month period, the Party's interim report for that period will explicitly state so.

FILING PATENT APPLICATIONS. A. The Parties agree that the Party initially indicated as having an ownership interest in any Subject Inventions ("Inventing Party") shall have the first opportunity to file U.S. and foreign patent Patent applications; but if such Party . If the Contractor or Participant does not file such applications within six (6) months one year after disclosureelection, then the other Party to this CRADA exercising an option pursuant to Article XV may file patent applications on such Subject Inventions Inventions. If a patent application is filed by the other Party ("Filing Party"), the Inventing Party shall reasonably cooperate and assist the Filing Party, at the Filing Party's expense, in executing a written assignment of the Subject Invention to the Filing Party and in otherwise perfecting the patent application, and the Filing Party initially having ownership interests shall fully cooperate in this efforthave the right to control the prosecution of the patent application. The Parties shall agree between themselves as to who will file patent applications on any joint Subject Invention. Unless otherwise negotiated between the Parties, the Parties shall share equally in the costs for the prosecution, filing and maintenance of joint Subject Inventions where both Parties elect to retain title to their undivided rights. B. The Parties agree that DOE has the right to file patent applications in any country if neither Party desires to file a patent application for any Subject Invention. Notification of such negative intent shall be made in writing to the DOE Contracting Officer within nine (9) 3 months after of the initial disclosure decision of such the non-Inventing Party to not file a patent application for the Subject Invention pursuant to Article XV or not later than sixty (60) 60 days prior to the time when any statutory bar might foreclose filing of a U.S. patent application. C. The Parties agree to include within the beginning of the specification of any U.S. patent applications and any patent issuing thereon (including foreign patents) covering a Subject Invention, the following statement: "This invention was made under a CRADA NO. ORNL05-0715 BETWEEN SENSOR HOLDINGS INCORPORATED AND UT-BATTELLE, LLC operated for the United States Department of Energy. The Government has certain rights in this invention." D. A Party electing title or filing a patent application in the United States or in an any foreign country shall advise the other Party and the DOE if it no longer desires to continue prosecution prosecution, pay maintenance fees, or retain title in the United States or any foreign country. The other Party and then the DOE will be afforded the opportunity to take title and retain the patent rights in the United States or in any such foreign country. D. Every twelve (12) months from the date of the CRADA, each Party shall deliver to the other Party interim reports listing the Subject Inventions, if any, it has produced during the preceding twelve (12) month period. If a Party has produced no Subject Invention for any twelve (12) month period, the Party's interim report for that period will explicitly state so.