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ARTICLE 8 – PATENT PROSECUTION
8.1 INVENTOR shall have the right, but not the obligation, to apply for, seek issuance of, and maintain the PATENT RIGHTS during the TERM of this Agreement. Upon request by ENM, INVENTOR shall provide or request that its patent attorney(s) provide ENM with copies of correspondence with patent offices concerning PATENT RIGHTS.
8.2 In the event that INVENTOR elects not to prosecute and/or maintain any patent applications or patents that may be included within PATENT RIGHTS, INVENTOR shall so notify ENM in writing of such election no later than ninety (90) days prior to any applicable statutory bar date or response date, as the case may be, to permit ENM (at its own expense) to file, prosecute and/or maintain the patent application(s) and/or patent(s) that were the subject of such notice.
8.3 Any expenses ENM incurs in maintaining these PATENT RIGHTS will count as royalty payments to the INVENTOR under Article 6.1(B).
8.4 In the event that an INVENTION(S) or TECHNOLOGY is deemed unpatentable due to the prior public disclosure, negligence, or other such action by the INVENTOR, INVENTOR shall reimburse ENM for reasonable costs associated with ENM’s review and vetting of the related submission.
8.5 ENM shall mark all products covered by PATENT RIGHTS with patent numbers in accordance with the statutory requirements in the countries of manufacture, use, and sale, and pending the issue of any patents, ENM shall stamp the products, “Patent Applied For,” or the foreign equivalent as appropriate.
ARTICLE 9 – INFRINGEMENT
9.1 ENM shall inform INVENTOR promptly in writing of any alleged infringement of the PATENT RIGHTS by a third party and of any available evidence thereof.
9.2 INVENTOR shall have the right, but shall not the obligation; to prosecute at its own expense all infringements of the PATENT RIGHTS and, in furtherance of such right, ENM hereby agrees that INVENTOR may include ENM as a party plaintiff in any such suit, without expense to ENM. The total cost of any such infringement action commenced or defended solely by INVENTOR shall be borne by INVENTOR, and INVENTOR shall keep any recovery or damages for past infringement derived therefrom.
9.3 INVENTOR shall, in its sole and absolute discretion, determine whether pursuing remedies against the alleged infringer is warranted or justified or shall be likely to mitigate the alleged infringement.
9.4 If within six (6) months after having been notified of an alleged infringement, (i) INVENTOR shall have been unsuccessful in persuading the alleged infringer to desist, or (ii) INVENTOR shall not have determined, that pursuing remedies against the alleged infringer is unwarranted, unjustified, or counter-productive, or (iii) INVENTOR shall have brought an infringement action against the alleged infringer but is not diligently prosecuting such infringement action, or (iv) if INVENTOR shall have determined that pursuing remedies against the alleged infringer is warranted or justified but shall at any time thereafter notify ENM of its intention not to bring or to continue suit against any alleged infringer then, and in those events only, ENM shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the PATENT RIGHTS, and ENM may, for such purposes, include INVENTOR as a party plaintiff in any such suit, without expense to INVENTOR.Page | 4
9.5 In the event that ENM shall undertake the enforcement and/or defense of the PATENT RIGHTS by litigation, ENM may defer up to one hundred (100%) of the payments otherwise thereafter due INVENTOR under Article 5 of this Agreement and apply the same toward reimbursement of up to one hundred percent of ENM’s expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery of damages by ENM for each such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of ENM relating to such suit, and next applied and paid to INVENTOR to the full extent of such recovery, if necessary, to satisfy any outstanding payments under Article 6 past due or deferred pursuant to this Article 9. The balance remaining from any such recovery shall be divided equally between ENM and INVENTOR. ENM agrees to make all payments to INVENTOR under this Article 9.5 within sixty days of recovery of any damages.
9.6 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against ENM, INVENTOR, at its option, shall have the right, within thirty (30) days after receiving written notification of the commencement of such action, to intervene and take over the sole defense of the action at its own expense. Likewise, INVENTOR shall have the right to take over the defense of any counterclaim asserted against INVENTOR.
9.7 In any infringement suit that either party may institute to enforce the PATENT RIGHTS pursuant to this Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees and agents testify when requested and make available relevant records, papers, information, samples, specimens, and the like.