Common use of PATENT PROSECUTION AND PROTECTION Clause in Contracts

PATENT PROSECUTION AND PROTECTION. 2.1 EMORY shall direct the filing, prosecution and maintenance of all patent applications and patents under the PATENT RIGHTS. EMORY shall prepare and file appropriate United States and foreign country patent applications covering the INVENTIONS and shall provide to INSTITUTION all serial numbers and filing dates, together with copies of all the applications, including copies of all patent prosecution actions, responses and other communications. As reasonable under the circumstances and relevant deadlines, EMORY will give INSTITUTION an opportunity to comment during all such patent prosecutions. 2.2 If foreign patent application filings are contemplated after the Effective Date, EMORY shall, after consulting with INSTITUTION and within two (2) months in advance of any deadline to file foreign patent applications (PCT or national stage applications), make an election whether, when, and in what countries, it wishes to file foreign patent applications. EMORY shall notify INSTITUTION, in writing, of its election regarding foreign filing. If foreign applications are filed, EMORY shall provide to INSTITUTION all serial numbers and filing dates. EMORY also shall provide to INSTITUTION copies of foreign patent applications and patent office actions as INSTITUTION may request in the course of prosecution. 2.3 EMORY shall bear "[insert number]" percent ("[insert number]" %) and INSTITUTION shall bear "[insert number]" percent ("[insert number]" %) of the costs for filing, prosecution, maintenance and enforcement of the PATENT RIGHTS. If EMORY anticipates the possibility of any extraordinary costs, EMORY shall provide INSTITUTION with full particulars and shall discuss with INSTITUTION a mutually acceptable course of action prior to incurring such expenditures. If LICENSEE(s) agrees to pay for any portion of costs for PATENT RIGHTS, EMORY shall be responsible for "[insert number]" percent ("[insert number]" %) and INSTITUTION shall be responsible for "[insert number]" percent ("[insert number]" %) of costs not reimbursed by licensee(s). Costs paid by the parties and specifically reimbursed later by a LICENSEE shall be split between the parties using the same percentage as previously specified in this Paragraph 2.3- "[insert number]" percent ("[insert number]" %) to EMORY and "[insert number]" percent ("[insert number]" %) to INSTITUTION. INSTITUTION shall reimburse EMORY for its share of all costs within thirty (30) days of receipt of an invoice from EMORY and copies of invoices paid or incurred by EMORY for which EMORY is requesting reimbursement. Reimbursement by INSTITUTION shall be made by check made payable to Emory University and sent to EMORY according to the provisions for notices in Article 8 herein. 2.4 If INSTITUTION elects not to share the expenses or assist in filing a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent within the PATENT RIGHTS, in any country, it shall notify EMORY in writing. Under such circumstances, INSTITUTION has the right and may have the obligation to release such PATENT RIGHTS to INSTITUTION inventors, the United States Government or another research funding entity. EMORY may, at its sole discretion and sole expense, contract with INSTITUTION inventors to continue the prosecution and/or maintenance of such application or patent if such PATENT RIGHTS are released to INSTITUTION inventors. 2.5 In the event that INSTITUTION elects not to share the expenses or assist in filing a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent within the PATENT RIGHTS, in any country, and such PATENT RIGHTS are not released to INSTITUTION inventors, the United States Government or another research funding entity, INSTITUTION shall assign ownership of such PATENT RIGHTS to EMORY and shall execute an agreement so assigning such rights. 2.6 For the PATENT RIGHTS in any country in which INSTITUTION elects not to prepare or file a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent, EMORY shall have no obligation to INSTITUTION under the terms in Sections, 2.3, 3, 4, 5, and 6 of this AGREEMENT for such PATENT RIGHTS. 2.7 If EMORY elects not to prepare or file a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent within the PATENT RIGHTS, in any country, it shall notify INSTITUTION in writing. Under such circumstances, EMORY has the right and may have the obligation to release such PATENT RIGHTS to EMORY inventors, the United States Government or another research funding entity. INSTITUTION may, at its sole discretion and sole expense, contract with EMORY inventors to continue the prosecution and/or maintenance of any such application or patent, where such rights have been waived to EMORY inventors. 2.8 In the event that EMORY elects not to prepare or file a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent within the PATENT RIGHTS, in any country, and such PATENT RIGHTS are not released to EMORY inventors, the United States Government or another research funding entity, EMORY shall assign ownership of such PATENT RIGHTS to INSTITUTION and shall execute an agreement so assigning such rights. 2.9 For the PATENT RIGHTS in any country in which EMORY elects not to prepare or file a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent, INSTITUTION shall have no obligation to EMORY under the terms in Sections, 2.3, 3, 4, 5, and 6 of this AGREEMENT for such PATENT RIGHTS. 2.10 EMORY shall record Assignments of PATENT RIGHTS in the United States Patent and Trademark Office and shall provide INSTITUTION with a photocopy of each recorded Assignment. 2.11 EMORY shall promptly provide to INSTITUTION copies of all patents issued under PATENT RIGHTS. 2.12 EMORY makes no representations and grants no warranties, and INSTITUTION will hold EMORY harmless, regarding the scope of any patents that might issue or that any patents will issue among the PATENT RIGHTS.

PATENT PROSECUTION AND PROTECTION. 2.1 EMORY 4.1 Ixion shall have the exclusive right to maintain Patent Rights, subject to UFRF's rights in Section 4.4. Ixion shall be responsible for all costs and expenses with respect to prosecuting and maintaining Patent Rights and with respect to any re-examinations, interferences, oppositions or invalidity litigation. 4.2 Ixion and UFRF will use all reasonable efforts to cooperate with each other with respect to patent maintenance, licensing, and execution of assignments of Patent Rights contemplated under this Agreement. 4.3 Ixion will reimburse UFRF for any past and future costs and charges it may have incurred or may in the future incur with respect to any filing, prosecuting and maintaining Patent Rights or the pursuit of any reexamination, interference, opposition or invalidity litigation proceedings related to Patent Rights, provided that for future costs Ixion shall have approved the incurrence of such cost in advance. Ixion will reimburse UFRF for all of these costs and charges within 30 days following receipt of an itemized invoice from UFRF. 4.4 Ixion agrees that UFRF shall have the right to contact Ixion's patent counsel with respect to any matters relating to the Patent Rights and Ixion shall direct such counsel to provide any information concerning the filing, prosecution and or maintenance of all patent applications and patents under any Patent Rights at the PATENT RIGHTSsame time such information is provided to Ixion. EMORY shall prepare and file appropriate United States and foreign country patent applications covering the INVENTIONS and shall provide to INSTITUTION all serial numbers and filing dates, together with copies of all the applications, At least 30 days before Ixion abandons any Patent Right (including copies of all patent prosecution actions, responses and other communications. As reasonable under the circumstances and relevant deadlines, EMORY will give INSTITUTION an opportunity to comment during all such patent prosecutions. 2.2 If foreign patent application filings are contemplated after the Effective Date, EMORY shall, after consulting with INSTITUTION and within two (2) months in advance of any deadline to file foreign patent applications (PCT or national stage applicationsapplication), make an election whether, when, and in what countries, it wishes to file foreign patent applicationsIxion will first notify UFRF of such intention. EMORY UFRF shall notify INSTITUTION, in writing, of its election regarding foreign filing. If foreign applications are filed, EMORY shall provide to INSTITUTION all serial numbers and filing dates. EMORY also shall provide to INSTITUTION copies of foreign patent applications and patent office actions as INSTITUTION may request in the course of prosecution. 2.3 EMORY shall bear "[insert number]" percent ("[insert number]" %) and INSTITUTION shall bear "[insert number]" percent ("[insert number]" %) of the costs for filing, prosecution, maintenance and enforcement of the PATENT RIGHTS. If EMORY anticipates the possibility of any extraordinary costs, EMORY shall provide INSTITUTION with full particulars and shall discuss with INSTITUTION a mutually acceptable course of action prior to incurring such expenditures. If LICENSEE(s) agrees to pay for any portion of costs for PATENT RIGHTS, EMORY shall be responsible for "[insert number]" percent ("[insert number]" %) and INSTITUTION shall be responsible for "[insert number]" percent ("[insert number]" %) of costs not reimbursed by licensee(s). Costs paid by the parties and specifically reimbursed later by a LICENSEE shall be split between the parties using the same percentage as previously specified in this Paragraph 2.3- "[insert number]" percent ("[insert number]" %) to EMORY and "[insert number]" percent ("[insert number]" %) to INSTITUTION. INSTITUTION shall reimburse EMORY for its share of all costs within thirty (30) days of receipt of an invoice from EMORY and copies of invoices paid or incurred by EMORY for which EMORY is requesting reimbursement. Reimbursement by INSTITUTION shall be made by check made payable to Emory University and sent to EMORY according to the provisions for notices in Article 8 herein. 2.4 If INSTITUTION elects not to share the expenses or assist in filing a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent within the PATENT RIGHTS, in any country, it shall notify EMORY in writing. Under such circumstances, INSTITUTION has have the right and may have the obligation to release such PATENT RIGHTS to INSTITUTION inventors, the United States Government or another research funding entity. EMORY may, at its sole discretion and sole expense, contract with INSTITUTION inventors to continue assume the prosecution and/or or maintenance of such application or patent if Patent right at its own expense. In such PATENT RIGHTS are released event, with regard to INSTITUTION inventors. 2.5 In any Patent Rights issuing out of such application, the event that INSTITUTION elects rights and obligations of the parties under this Agreement with respect to the use and licensing of such rights shall be reversed unless the parties agree in writing otherwise. By way of example but not limitation, UFRF shall then have the right to license such rights to others and Ixion shall have agreed not to share the expenses or assist in filing a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent within the PATENT RIGHTS, in any country, and such PATENT RIGHTS are not released to INSTITUTION inventors, the United States Government or another research funding entity, INSTITUTION shall assign ownership of such PATENT RIGHTS to EMORY and shall execute an agreement so assigning such rights. 2.6 For the PATENT RIGHTS in any country in which INSTITUTION elects not to prepare or file a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent, EMORY shall have no obligation to INSTITUTION under the terms in Sections, 2.3, 3, 4, 5, and 6 of this AGREEMENT for such PATENT RIGHTS. 2.7 If EMORY elects not to prepare or file a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent within the PATENT RIGHTS, in any country, it shall notify INSTITUTION in writing. Under such circumstances, EMORY has the right and may have the obligation to release such PATENT RIGHTS to EMORY inventors, the United States Government or another research funding entity. INSTITUTION may, at its sole discretion and sole expense, contract with EMORY inventors to continue the prosecution and/or maintenance of any such application or patent, where license such rights have been waived to EMORY inventors. 2.8 In the event that EMORY elects not to prepare or file a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent within the PATENT RIGHTS, in any country, and such PATENT RIGHTS are not released to EMORY inventors, the United States Government or another research funding entity, EMORY shall assign ownership of such PATENT RIGHTS to INSTITUTION and shall execute an agreement so assigning such rights. 2.9 For the PATENT RIGHTS in any country in which EMORY elects not to prepare or file a patent application under the PATENT RIGHTS or chooses not to prosecute or maintain a patent application or issued patent, INSTITUTION shall have no obligation to EMORY under the terms in Sections, 2.3, 3, 4, 5, and 6 of this AGREEMENT for such PATENT RIGHTS. 2.10 EMORY shall record Assignments of PATENT RIGHTS others in the United States Patent Diagnostic Field and Trademark Office and shall provide INSTITUTION with a photocopy UFRF will pay Ixion 25% of each recorded Assignmentthe Net Royalty Income received by UFRF. 2.11 EMORY shall promptly provide to INSTITUTION copies of all patents issued under PATENT RIGHTS. 2.12 EMORY makes no representations and grants no warranties, and INSTITUTION will hold EMORY harmless, regarding the scope of any patents that might issue or that any patents will issue among the PATENT RIGHTS.