EFFECT. LICENSOR, AT ITS SOLE DISCRETION, SHALL DETERMINE WHETHER ANY
OR ALL SUBLICENSES ENTERED INTO BY AND BETWEEN LICENSEE AND ITS SUBLICENSEES
PRIOR TO THE EFFECTIVE DATE OF TERMINATION OF THIS AGREEMENT SHALL BE CANCELED
OR ASSIGNED TO LICENSOR.
(III)
SECTIONS 1, 2(C), 3, 5, 6, 7, 8, 9, 10, 11
AND 12 SHALL SURVIVE TERMINATION OF THIS AGREEMENT.
(IV)
SUBJECT TO ITS OBLIGATIONS UNDER SECTION 3,
LICENSEE, ITS AFFILIATES AND SUBLICENSEES SHALL BE PERMITTED TO SELL ANY
INVENTORY OF LICENSED PRODUCT IN FULLY-FINISHED FORM ON HAND AT THE EFFECTIVE
DATE OF TERMINATION.
(v)
Each party will return to the other party or
certify in writing to the other party that it has destroyed all documents and
other tangible items it or its employees or agents have received or created
pursuant to this Agreement pertaining, referring or relating to the Confidential
Information of the other party.
5
8.
PATENT PROSECUTION AND INFRINGEMENT.
(A)
PATENT MATTERS. LICENSOR SHALL PAY WHEN DUE
ALL MAINTENANCE FEES FOR THE PATENT RIGHTS IN ACCORDANCE WITH APPLICABLE LAWS
AND REGULATIONS. LICENSOR SHALL HAVE SOLE RESPONSIBILITY FOR THE PROSECUTION OF
THE PATENT RIGHTS BEFORE THE APPLICABLE GOVERNING EXAMINING AUTHORITY, EXCEPT
THAT THE LICENSEE SHALL HAVE THE RIGHT TO PARTICIPATE, AT ITS OWN EXPENSE, IN
THE PROSECUTION ON ANY PATENT CLAIMS BEFORE THE APPLICABLE EXAMINING AUTHORITY
THAT ENCOMPASS SUBJECT MATTER IN THE FIELD OF USE, INCLUDING, BUT NOT LIMITED
TO, THE DRAFTING AND SUBMITTING TO THE EXAMINING AUTHORITY OF NEW PATENT CLAIMS
IN THE FIELD OF USE EITHER IN A PENDING, CONTINUATION OR DIVISIONAL APPLICATION
("NEW PATENT CLAIMS") AND TO REVIEW AND APPROVE ANY SUBMISSIONS TO THE EXAMINING
AUTHORITY BY LICENSOR THAT PERTAIN TO CLAIMS ENCOMPASSING SUBJECT MATTER IN THE
FIELD OF USE. IN THE EVENT LICENSEE REQUESTS THAT LICENSOR PROSECUTE ANY NEW
PATENT CLAIMS, LICENSOR SHALL PROSECUTE SUCH NEW PATENT CLAIMS AT LICENSEE'S
EXPENSE, SUBJECT TO LICENSEE'S RIGHT TO PARTICIPATE AS SET FORTH ABOVE. LICENSOR
SHALL KEEP LICENSEE PROMPTLY APPRISED OF ALL PROCEEDINGS CONCERNING PROSECUTION
OF THE PATENT RIGHTS BEFORE THE APPLICABLE EXAMINING AUTHORITY AND TIMELY
PROVIDE COPIES OF ALL CORRESPONDENCE, FILINGS AND ACTIONS WITH SUCH AUTHORITIES.
IF LICENSOR INTENDS TO ABANDON ANY OF THE PATENT RIGHTS, IT SHALL SO NOTIFY
LICENSEE OF ITS INTENT AT LEAST 30 DAYS PRIOR TO SUCH ABANDONMENT AND SHALL
ASSIGN ANY SUCH RIGHTS TO PROSECUTE TO LICENSEE. FOLLOWING SUCH ASSIGNMENT,
LICENSEE SHALL HAVE THE RIGHT TO PROSECUTE SUCH ABANDONED PATENT RIGHTS IN ITS
OWN NAME AT ITS OWN EXPENSE. LICENSEE AND LICENSOR SHALL COOPERATE FULLY WITH
EACH OTHER TO EXECUTE ALL NECESSARY DOCUMENTATION TO ENABLE EACH PARTY TO
PERFORM ITS DUTIES AND EXERCISE ITS RIGHTS UNDER THE TERMS OF THIS SECTION 8(A).
(B)
INFRINGEMENT. (I) WHEN INFORMATION COMES TO
THE ATTENTION OF LICENSOR OR LICENSEE TO THE EFFECT THAT ANY OF THE PATENT
RIGHTS IN THE FIELD OF USE HAVE BEEN OR ARE THREATENED TO BE INFRINGED OR
MISAPPROPRIATED BY A THIRD PARTY, LICENSEE, OR LICENSOR, SHOULD LICENSEE DECLINE
TO DO SO (AS SHALL BE EVIDENCED BY LICENSEE DELIVERING NOTICE