/Docs/G/NIH-License-Patent-Exclusive-CmA/Sec/0.md
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  • Patent Filing, Prosecution, and Maintenance
    1. Except as otherwise provided in this Article 7, IC agrees to take responsibility for, but to consult with, Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent related documents to Licensee.
    2. Upon IC’s written request, Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent related documents to IC. In this event, Licensee shall, subject to the prior approval of IC, select registered patent attorneys or patent agents to provide these services on behalf of Licensee and IC. IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. Licensee and its attorneys or agents shall consult with IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide IC sufficient opportunity to comment on any document that Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
    3. At any time, IC may provide Licensee with written notice that IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If IC elects to reassume these responsibilities, Licensee agrees to cooperate fully with IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide IC with complete copies of any and all documents or other materials that IC deems necessary to undertake such responsibilities. Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of IC’s choice.
    4. Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.