Common use of Enforcement in the Territory Clause in Contracts

Enforcement in the Territory. 42 (a) Each Party shall promptly notify the other Party in writing of any existing or threatened infringement, unauthorized use or misappropriation of the Atara Patent Rights in the Territory by reason of the Manufacture, use or sale of a product identical to or substantially similar to the Product (each, a “Competitive Infringement”) and shall provide all evidence in such Party’s possession demonstrating such infringement. (b) Subject to Section 9.3(c) hereto and MSK’s rights under the MSK Agreement, as between the Parties, Partner shall have the first right, but not the obligation, at its sole cost and expense, to initiate an infringement action or other appropriate suit to enforce the Product Patent Rights in the Territory against any Competitive Infringement (each such action, a “Competitive Infringement Action”). Atara shall provide to Partner reasonable assistance in such enforcement, at Partner’s request, including joining such action as a party plaintiff if required by applicable Laws to pursue such action. Partner shall keep ▇▇▇▇▇ regularly informed of the status and progress of such enforcement efforts, and shall reasonably consider ▇▇▇▇▇’s comments on any such efforts. Atara shall be entitled to separate representation in any such matter by counsel of its own choice and at its own expense, but Atara shall at all times cooperate fully with Partner in bringing such action. (c) If Partner, in its sole discretion, determines not to exercise its right to bring any Competitive Infringement Action against a Competitive Infringement of the Product Patent Rights in the Territory, then Atara shall be entitled to bring such Competitive Infringement Action at its sole cost and expense. (d) Subject to Section 9.3(e) hereto, Partner acknowledges that, as between the Parties, Atara has (i) the first right, but not the obligation, at its sole cost and expense, to enforce the Atara Patent Rights (other than the Product Patent Rights) in the Territory against any Competitive Infringement, and (ii) the sole right, but not the obligation, at its sole cost and expense to enforce any the Atara Patent Rights (including the Product Patent Rights) in the Territory against any other Third Party infringement, unauthorized use, misappropriation or threatened infringement thereof. Partner shall provide to Atara reasonable assistance in any enforcement of the Atara Patent Rights in the Territory against any Third Party infringement, at ▇▇▇▇▇’s request, including joining such action as a party plaintiff if required by applicable Laws to pursue such action. Atara shall keep Partner regularly informed of the status and progress of such enforcement efforts, and shall reasonably consider Partner’s comments on any such enforcement efforts. Partner shall be entitled to separate representation in such matter by counsel of its own choice and at its own expense, but Partner shall at all times cooperate fully with Atara in bringing such action. (e) If Atara, in its sole discretion, determines not to exercise its first right to bring a Competitive Infringement Action against any Competitive Infringement of the Atara Patent Rights (other than the Product Patent Rights) in the Territory, subject to Memorial Sloan Kettering Cancer Center’s secondary right to bring a Competitive Infringement Action against such Competitive Infringement of the Atara Patent Rights in the Territory as detailed in the MSK Agreement, Partner shall be entitled to bring such a Competitive Infringement Action at its sole cost and expense. (f) A Party with responsibility for enforcement against a Competitive Infringement under this Section 9.3 hereto shall not settle any Competitive Infringement Action that it brought under this Section 9.3 involving Atara Patent Rights without the prior written consent of the other Party, which consent shall not be unreasonably withheld, conditioned or delayed; provided that the other Party shall have the sole discretion to withhold consent in the event that such settlement would (i) restrict in any material respect the scope of the Atara Patent Rights or its rights or interests therein or otherwise adversely impact the Atara Patent Rights, or (ii) adversely impact the Development, Commercialization, any Regulatory Approval or any Regulatory Exclusivity of the Product in the Territory. (g) If either Party recovers monetary damages from any Third Party in a Competitive Infringement Action brought hereunder with respect to the Atara Patent Rights, including in a settlement, such recovery shall be allocated first to the reimbursement of any expenses incurred by the Parties in such litigation (including, for this purpose, a reasonable allocation of expenses of internal counsel), [***].

Enforcement in the Territory. 42 In the event that TW provides notice to ---------------------------- IN in accordance with Section 7.3 (a) Each "Notice of Third Party shall promptly Infringement"), the Parties agree that during the period and in a jurisdiction where TW has exclusive rights under this Agreement, neither will notify the other Party in writing of any existing or threatened infringement, unauthorized use or misappropriation suspected infringer of the Atara Patent Rights in alleged infringement without first obtaining the Territory by reason of the Manufacture, use or sale of a product identical to or substantially similar to the Product (each, a “Competitive Infringement”) and shall provide all evidence in such Party’s possession demonstrating such infringement. (b) Subject to Section 9.3(c) hereto and MSK’s rights under the MSK Agreement, as between the Parties, Partner shall have the first right, but not the obligation, at its sole cost and expense, to initiate an infringement action or other appropriate suit to enforce the Product Patent Rights in the Territory against any Competitive Infringement (each such action, a “Competitive Infringement Action”). Atara shall provide to Partner reasonable assistance in such enforcement, at Partner’s request, including joining such action as a party plaintiff if required by applicable Laws to pursue such action. Partner shall keep ▇▇▇▇▇ regularly informed of the status and progress of such enforcement efforts, and shall reasonably consider ▇▇▇▇▇’s comments on any such efforts. Atara shall be entitled to separate representation in any such matter by counsel of its own choice and at its own expense, but Atara shall at all times cooperate fully with Partner in bringing such action. (c) If Partner, in its sole discretion, determines not to exercise its right to bring any Competitive Infringement Action against a Competitive Infringement of the Product Patent Rights in the Territory, then Atara shall be entitled to bring such Competitive Infringement Action at its sole cost and expense. (d) Subject to Section 9.3(e) hereto, Partner acknowledges that, as between the Parties, Atara has (i) the first right, but not the obligation, at its sole cost and expense, to enforce the Atara Patent Rights (other than the Product Patent Rights) in the Territory against any Competitive Infringement, and (ii) the sole right, but not the obligation, at its sole cost and expense to enforce any the Atara Patent Rights (including the Product Patent Rights) in the Territory against any other Third Party infringement, unauthorized use, misappropriation or threatened infringement thereof. Partner shall provide to Atara reasonable assistance in any enforcement of the Atara Patent Rights in the Territory against any Third Party infringement, at ▇▇▇▇▇’s request, including joining such action as a party plaintiff if required by applicable Laws to pursue such action. Atara shall keep Partner regularly informed of the status and progress of such enforcement efforts, and shall reasonably consider Partner’s comments on any such enforcement efforts. Partner shall be entitled to separate representation in such matter by counsel of its own choice and at its own expense, but Partner shall at all times cooperate fully with Atara in bringing such action. (e) If Atara, in its sole discretion, determines not to exercise its first right to bring a Competitive Infringement Action against any Competitive Infringement of the Atara Patent Rights (other than the Product Patent Rights) in the Territory, subject to Memorial Sloan Kettering Cancer Center’s secondary right to bring a Competitive Infringement Action against such Competitive Infringement of the Atara Patent Rights in the Territory as detailed in the MSK Agreement, Partner shall be entitled to bring such a Competitive Infringement Action at its sole cost and expense. (f) A Party with responsibility for enforcement against a Competitive Infringement under this Section 9.3 hereto shall not settle any Competitive Infringement Action that it brought under this Section 9.3 involving Atara Patent Rights without the prior written consent of the other Party, which consent shall not be unreasonably withhelddenied, conditioned and that IN will take appropriate action with respect to the suspected infringer, including sending a demand letter, if necessary, within thirty (30) days of the date it receives notice from TW. Both Parties shall use their reasonable efforts in cooperation with each other to terminate any such suspected or delayedactual infringement without litigation. If such efforts fail, TW may request in writing that IN take legal action against the infringement, and if the infringing activity has not ceased within ninety (90) days following the effective date of such request, IN shall have the right to either commence suit or refuse to participate in such suit; provided that and IN shall give notice of its election in writing to TW within one hundred (100) days of receipt of TW's written request. TW may thereafter bring suit for patent infringement at its own expense if and only if IN elects not to commence suit and if the other Party infringement occurred during the period and in a jurisdiction where TW has exclusive rights under this Agreement under the Licensed Patent at issue. In such event, TW shall have the sole discretion control and decision-making authority with respect to withhold consent defending and enforcing the Licensed Patent solely in connection with such suit and further provided that IN does not thereafter join such suit. If TW elects to bring suit in accordance with this Section 7.5 ("Enforcement in the event Territory"), IN may thereafter join such suit at its own expense. Any such legal action as is decided upon shall be at the expense of the Party on account of whom suit is brought and all recoveries recovered thereby shall belong to such Party, provided, however, that such settlement would any legal action decided upon by TW and IN and fully participated in by both shall be at the joint expense of both Parties and all recoveries shall be allocated in the following order: (i) restrict in any material respect to each Party, reimbursement of costs and fees of outside attorneys and other related expenses to the scope of the Atara Patent Rights or its rights or interests therein or otherwise adversely impact the Atara Patent Rightsextent each Party paid for such costs, or fees, and expenses; and (ii) adversely impact the Development, Commercialization, any Regulatory Approval or any Regulatory Exclusivity of the Product in the Territory. (g) If either Party recovers monetary damages from any Third Party in a Competitive Infringement Action brought hereunder with respect to the Atara Patent Rights, including in a settlement, such recovery remaining amount shall be allocated first as follows: to IN, all settlement amounts, licenses, damages, and other recoveries based on infringement through the Effective Date, if any; and to TW, all settlement amounts, licenses, damages, and other recoveries based on infringement after the Effective Date, if any; or, if the remaining amount is insufficient to cover both, the Parties will share jointly in proportion to the reimbursement amount of such recoveries such Party would otherwise be entitled to receive. Each Party agrees to cooperate with the other in legal proceedings instituted hereunder but at the expense of the Party on account of whom suit is brought. Such legal proceedings shall be controlled by the Party bringing the action, except that IN may be represented by counsel of its choice in any action brought by TW. TW shall have no right to bring suit against any suspected or alleged infringer during the period and in a jurisdiction where TW does not have exclusive rights under this Agreement under the Licensed Patent at issue, unless the Parties agree otherwise. IN shall not grant any licenses to any Licensed Patent as part of any expenses incurred by the Parties in such litigation (includingsettlement under this Section 7.5 without obtaining TW's prior written consent, for this purpose, a reasonable allocation of expenses of internal counsel), [***]which consent shall not be unreasonably withheld.