use reasonable efforts
to curtail further Patent Costs for such application or patent when such notice
of termination is received from LICENSEE.
UNIVERSITY, in its sole discretion
and at its sole expense, may continue prosecution and
17
maintenance of said application or patent, and LICENSEE shall have no further
license with respect thereto.
Non-payment of any portion of Patent Costs with
respect to any application or patent may be deemed by UNIVERSITY as an election
by LICENSEE to terminate its reimbursement obligations with respect to such
application or patent.
The University is not obligated to file, prosecute, or
maintain Patent Rights outside of the territory at any time or to file,
prosecute, or maintain Patent Rights to which Licensee has terminated its
License hereunder.
5.2
Patent Infringement.
(A)
IN THE EVENT LICENSEE
KNOWS THAT ONE OR MORE THIRD PARTIES ARE
SUBSTANTIALLY INFRINGING THE PATENT RIGHTS UNDER THIS AGREEMENT, LICENSEE
WILL
PROMPTLY NOTIFY UNIVERSITY
IN WRITING AND PROVIDE UNIVERSITY WITH REASONABLE
EVIDENCE OF SUCH INFRINGEMENT.
(B)
BOTH PARTIES TO THIS AGREEMENT ACKNOWLEDGE THAT DURING THE PERIOD
AND IN A JURISDICTION WHERE THE LICENSEE
HAS EXCLUSIVE RIGHTS UNDER THIS
AGREEMENT, NEITHER PARTY WILL NOTIFY A THIRD PARTY OTHER THAN NIH AND HHMI THAT
AN INFRINGEMENT OF PATENT RIGHTS OCCURRED WITHOUT FIRST OBTAINING CONSENT OF THE
OTHER PARTY.
BOTH PARTIES WILL USE THEIR BEST EFFORTS IN COOPERATION WITH EACH
OTHER TO TERMINATE THE INFRINGEMENT WITHOUT LITIGATION.
(C)
IF THE LICENSEE DESIRES THAT PATENT RIGHTS BE ENFORCED AGAINST
INFRINGERS, AND THE LICENSEE
HAS EXCLUSIVE RIGHTS UNDER PATENT RIGHTS, THE
LICENSEE
EITHER MAY REQUEST UNIVERSITY
TO TAKE LEGAL ACTION AGAINST THE PATENT
INFRINGER OR MAY REQUEST PERMISSION FROM UNIVERSITY
TO FILE SUIT AGAINST THE
PATENT INFRINGER.
LICENSEE'S
REQUEST MUST BE MADE IN WRITING AND MUST INCLUDE
REASONABLE EVIDENCE OF THE INFRINGEMENT AND RESULTING DAMAGES TO THE LICENSEE.
IF THE INFRINGING ACTIVITY HAS NOT BEEN ABATED WITHIN NINETY (90) DAYS FOLLOWING
THE EFFECTIVE DATE OF LICENSEE'S REQUEST, THEN UNIVERSITY AND THE NIH WILL HAVE
THE RIGHT TO ELECT ONE OF THE FOLLOWING:
(I)
COMMENCE SUIT ON THEIR OWN ACCOUNT; OR
(II)
REFUSE TO PARTICIPATE IN A SUIT AGAINST THE PATENT INFRINGER.
UNIVERSITY
and NIH will give written notice of their election to the LICENSEE
within one hundred (100) days following the effective date of LICENSEE's written
request.
The LICENSEE, thereafter, may bring suit for patent infringement if
and only if UNIVERSITY and the NIH elects not to commence suit and if the
infringement occurred during the period and in a jurisdiction where the
LICENSEE
had exclusive rights under this Agreement.
In the event LICENSEE
elects to bring suit in accordance with this Paragraph, UNIVERSITY
and NIH may
thereafter join such suit at their own expense.
(D)
THE PARTY WHO BROUGHT THE SUIT WILL PAY FOR ALL LEGAL COSTS AND
WILL RECOVER ANY AND ALL RECOVERIES; PROVIDED, HOWEVER, THAT IF UNIVERSITY
AND/OR THE NIH BROUGHT SUIT ON THEIR OWN ACCOUNT, THEN THE PARTIES AND THE NIH
MAY SHARE IN THE EXPENSE AND THE RECOVERIES WILL BE