/Docs/G/NIH-License-Patent-Exclusive-CmA/Sec/0.md
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  • Infringement and Patent Enforcement
    1. IC and Licensee agree to notify each other promptly of each infringement or possible infringement of the Licensed Patent Rights, as well as, any facts which may affect the validity, scope, or enforceability of the Licensed Patent Rights of which either party becomes aware.
    2. Pursuant to this Agreement and the provisions of 35 U.S.C. Chapter 29, Licensee may:
      1. bring suit in its own name, at its own expense, and on its own behalf for infringement of presumably valid claims in the Licensed Patent Rights;
      2. in any suit, enjoin infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for the infringement; or
      3. settle any claim or suit for infringement of the Licensed Patent Rights provided, however, that IC and appropriate Government authorities shall have the first right to take such actions; and
      4. if Licensee desires to initiate a suit for patent infringement, Licensee shall notify IC in writing. If IC does not notify Licensee of its intent to pursue legal action within ninety (90) days, Licensee shall be free to initiate suit. IC shall have a continuing right to intervene in the suit. Licensee shall take no action to compel the Government either to initiate or to join in any suit for patent infringement. Licensee may request the Government to initiate or join in any suit if necessary to avoid dismissal of the suit. Should the Government be made a party to any suit, Licensee shall reimburse the Government for any costs, expenses, or fees which the Government incurs as a result of the motion or other action, including all costs incurred by the Government in opposing the motion or other action. In all cases, Licensee agrees to keep IC reasonably apprised of the status and progress of any litigation. Before Licensee commences an infringement action, Licensee shall notify IC and give careful consideration to the views of IC and to any potential effects of the litigation on the public health in deciding whether to bring suit.
    3. In the event that a declaratory judgment action alleging invalidity or non infringement of any of the Licensed Patent Rights shall be brought against Licensee or raised by way of counterclaim or affirmative defense in an infringement suit brought by Licensee under Paragraph 11.2, pursuant to this Agreement and the provisions of 35 U.S.C. Chapter 29 or other statutes, Licensee may:
      1. defend the suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the Licensed Patent Rights;
      2. in any suit, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for the infringement; and
      3. settle any claim or suit for declaratory judgment involving the Licensed Patent Rights-provided, however, that IC and appropriate Government authorities shall have the first right to take these actions and shall have a continuing right to intervene in the suit; and
      4. if IC does not notify Licensee of its intent to respond to the legal action within a reasonable time, Licensee shall be free to do so. Licensee shall take no action to compel the Government either to initiate or to join in any declaratory judgment action. Licensee may request the Government to initiate or to join any suit if necessary to avoid dismissal of the suit. Should the Government be made a party to any suit by motion or any other action of Licensee, Licensee shall reimburse the Government for any costs, expenses, or fees, which the Government incurs as a result of the motion or other action. If Licensee elects not to defend against the declaratory judgment action, IC, at its option, may do so at its own expense. In all cases, Licensee agrees to keep IC reasonably apprised of the status and progress of any litigation. Before Licensee commences an infringement action, Licensee shall notify IC and give careful consideration to the views of IC and to any potential effects of the litigation on the public health in deciding whether to bring suit.
    4. In any action under Paragraphs 11.2 or 11.3 the expenses including costs, fees, attorney fees, and disbursements, shall be paid by Licensee. The value of any recovery made by Licensee through court judgment or settlement shall be treated as Net Sales and subject to earned royalties.
    5. IC shall cooperate fully with Licensee in connection with any action under Paragraphs 11.2 or 11.3. IC agrees promptly to provide access to all necessary documents and to render reasonable assistance in response to a request by Licensee.