covering joint inventions of the Parties.
SECTION 9.05
NEW PATENT FILINGS.
(A)
EACH PARTY, AT ITS OWN COST, SHALL PREPARE,
FILE, PROSECUTE AND MAINTAIN PATENTS TO COVER INVENTIONS MADE DURING THE TERM
SOLELY BY ITS OWN EMPLOYEES OR CONSULTANTS, AND SHALL USE REASONABLE EFFORTS TO
FILE INITIALLY ALL SUCH APPLICATIONS IN THE US OR THE APPROPRIATE FORUM UNDER
THE CIRCUMSTANCES.
IF A PARTY ELECTS NOT TO FILE, PROSECUTE OR MAINTAIN ANY
SUCH PATENT IN ANY COUNTRY, THE PARTY SHALL GIVE THE OTHER PARTY NOTICE THEREOF
WITHIN A REASONABLE PERIOD PRIOR TO ALLOWING SUCH PATENT TO LAPSE, BECOME
ABANDONED OR BECOME UNENFORCEABLE.
THE OTHER PARTY, AT ITS SOLE DISCRETION AND
COST, MAY FILE, PROSECUTE OR MAINTAIN SUCH
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PATENT IN ITS OWN NAME, IN WHICH CASE THE PARTY SHALL TRANSFER, FREE OF CHARGE,
ITS RIGHT AND OWNERSHIP IN SUCH PATENT IN THE APPLICABLE COUNTRY TO THE OTHER
PARTY.
(B)
SCHERING SHALL HAVE THE RIGHT TO FILE,
PROSECUTE AND MAINTAIN PATENTS TO COVER INVENTIONS MADE JOINTLY BY PERSONNEL OF
SONUS AND SCHERING OR BY CONSULTANTS OR OTHER THIRD PARTIES PROVIDING SERVICES
TO SONUS AND SCHERING JOINTLY IN THE COURSE OF THEIR COLLABORATION UNDER THIS
AGREEMENT (COLLECTIVELY "JOINT PATENTS") IN THE NAME AND ON BEHALF OF SCHERING
AND SONUS.
THE PARTIES SHALL BEAR EQUALLY ALL EXTERNAL COSTS AND EXPENSES
RELATED TO THE FILING, PROSECUTING AND MAINTENANCE OF JOINT PATENTS WORLDWIDE,
PROVIDED HOWEVER, THAT EITHER PARTY MAY ELECT NOT TO SHARE IN THE COSTS AND
EXPENSES RELATED TO THE FILING, PROSECUTING AND MAINTENANCE OF ANY SUCH JOINT
PATENT IN ANY COUNTRY, IN WHICH CASE THE OTHER PARTY MAY AT ITS OWN COST FILE,
PROSECUTE OR MAINTAIN SUCH PATENT IN ITS OWN NAME IN THE APPLICABLE COUNTRY, AND
THE PARTY WHICH DOES NOT SHARE IN THE COSTS AND EXPENSES SHALL TRANSFER, FREE OF
CHARGE, ITS RIGHT AND OWNERSHIP IN SUCH JOINT PATENT IN THE APPLICABLE COUNTRY
TO THE OTHER PARTY.
SECTION 9.06
ENFORCEMENT RIGHTS.
(A)
NOTIFICATION OF INFRINGEMENT.
EACH PARTY
SHALL GIVE PROMPT NOTICE TO THE OTHER OF ANY THIRD PARTY ACT WHICH COMES TO ITS
ATTENTION THAT MAY INFRINGE OR THREATEN TO INFRINGE EITHER THE SONUS TECHNOLOGY,
THE JOINT PATENTS OR THE SONUS MARKS IN THE TERRITORY, AND SHALL PROVIDE SUCH
OTHER PARTY WITH ALL AVAILABLE EVIDENCE OF SUCH INFRINGEMENT.
(B)
ENFORCEMENT IN THE TERRITORY - PATENTS.
SCHERING SHALL HAVE THE RIGHT, BUT NOT THE OBLIGATION, TO INSTITUTE, PROSECUTE
AND CONTROL, AT ITS OWN EXPENSE AND BY COUNSEL OF ITS OWN CHOICE, ANY ACTION OR
PROCEEDING WITH RESPECT TO INFRINGEMENT OF ANY SONUS PATENTS, SCHERING PATENTS
OR JOINT PATENTS COVERING THE MANUFACTURE, USE, IMPORTATION, SALE OR OFFER FOR
SALE OF ANY PRODUCT BEING DEVELOPED OR COMMERCIALIZED IN THE TERRITORY DURING
THE TERM.
SONUS SHALL HAVE THE RIGHT, AT ITS OWN EXPENSE, TO BE REPRESENTED IN
ANY SUCH ACTION BY COUNSEL OF ITS OWN CHOICE.
IF SCHERING FAILS TO BRING ANY
SUCH ACTION OR PROCEEDING OR OTHERWISE TAKE APPROPRIATE ACTION TO ABATE SUCH
INFRINGEMENT WITHIN A PERIOD OF ONE HUNDRED EIGHTY (180) DAYS OF