Common use of Patent Prosecution and Infringement Clause in Contracts

Patent Prosecution and Infringement. LICENSEE shall have the primary responsibility for the prosecution, filing and maintenance of all Licensed Patents, including the conduct of all interference, opposition, nullity and revocation proceedings, using counsel of its choice; provided, however, that STANFORD shall have reasonable opportunity to advise and consult with LICENSEE on such matters and may instruct LICENSEE to take such action as STANFORD reasonably believes necessary to protect the Licensed Patent(s). Counsel shall concurrently provide STANFORD and LICENSEE with copies of all material correspondence related to the prosecution of the patent applications within the Licensed Patent(s). Invoices for legal services incurred in connection with the prosecution, filing and maintenance of all Licensed Patents shall be sent directly to STANFORD with a copy directed to LICENSEE. Should LICENSEE elect to abandon any patent or patent application in any country, it shall give timely notice to STANFORD, who may continue prosecution or maintenance, at its sole expense and LICENSEE shall have no further rights with respect to such patent application or patent in such country. In the event that a conflict arises with respect to patent counsel selected by LICENSEE, STANFORD may, with just cause and after consulting with LICENSEE, select new patent counsel reasonably acceptable to LICENSEE.