Infringement by Third Parties Clause Samples
The "Infringement by Third Parties" clause defines the parties' rights and obligations if a third party infringes on intellectual property covered by the agreement. Typically, this clause outlines the process for notifying the affected party, who has the right to take legal action or defend the intellectual property, and may specify how any recovered damages are distributed. Its core function is to ensure that both parties are protected and coordinated in responding to unauthorized use or infringement by outsiders, thereby safeguarding the value of the intellectual property and clarifying responsibilities in such situations.
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Infringement by Third Parties. In the event that Novavax or the Company becomes aware of or has reasonable suspicions of third party activities in the Territory that could constitute infringement of the Novavax Patents or Patents that issue from Developed Know-How in the Territory, or with respect to ROW Patents anywhere in the world, or misappropriation of the Novavax Know-How or Developed Know-How in the Territory, or with respect to Developed Know-How any that is subject to the license granted to Novavax in Section 2.2 anywhere in the world (“ROW Know-How”), then such party shall promptly notify the other parties of such third party activities, including identification of the third party and delineation of the facts relating to such third party activities. The Company shall have the right (but shall not be obligated) to enforce the Novavax Patents, Novavax Know-How and Developed Know-How against any actual or alleged infringement or misappropriation thereof in the Territory by a third party (by bringing a suit, action or proceeding against such third party), at the Company’s sole expense. Novavax shall have the right (but shall not be obligated) to enforce the ROW Patents and ROW Know-How within the scope of the licenses granted to Novavax in Section 2.2 against any actual or alleged infringement or misappropriation thereof outside the Territory by a third party (by bringing a suit, action or proceeding against such third party), at Novavax’s sole expense. If the Company does not enforce the Novavax Patents or Know-How by (i) one hundred (100) days following the notice of alleged infringement or (ii) thirty (30) days before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such an action, whichever comes first, then Novavax shall have the right (but not the obligation) to enforce the Novavax Patents and Novavax Know-How against any actual or alleged infringement or misappropriation thereof in the Territory by a third party (by bringing a suit, action or proceeding against such party), at Novavax’s sole expense. The non-prosecuting party shall reasonably cooperate with the prosecuting party in such enforcement activities, at the prosecuting party’s expense, including by agreeing to be named as a party to (or bringing in its own name) such suit, action or proceeding for the benefit of the non-prosecuting party if required for such enforcement action to proceed. The prosecuting party shall keep the non-prosecuting party reasonably informed regar...
Infringement by Third Parties. 7.1 LICENSEE, at its expense, must enforce any patent exclusively licensed hereunder against infringement by third parties and is entitled to retain recovery from such enforcement. After reimbursement of LICENSEE’s reasonable legal costs and expenses related to such recovery, LICENSEE agrees to pay UTMDACC either: (a) the royalty detailed in Section 4.1(d) for any monetary recovery that is for sales of LICENSED PRODUCTS lost due to the infringement and fifty percent (50%) of punitive damages for willful infringement; or (b) fifty percent (50%) of reasonable royalties awarded and punitive damages for willful infringement in any recovery in which the award is for reasonable royalties. LICENSEE must notify UTMDACC in writing of any potential infringement within thirty (30) calendar days of knowledge thereof. If LICENSEE decides not to pursue an infringement enforcement action within six month of knowledge of such infringement, LICENSEE will notify UTMDACC and then BOARD or UTMDACC may, at its discretion, after considering the commercially reasonable bases for LICENSEE’s decision not to pursue such infringement enforcement action, pursue the enforcement of any patent licensed hereunder on behalf of itself and LICENSEE. In such case, the parties will discuss in good faith the appropriate settlement of such case and/or the appropriate distribution of any recovery from such action, which shall depend on LICENSEE’s involvement and effect of the LICENSEE’s ability to commercialize the LICENSED SUBJECT MATTER.
7.2 In any suit or dispute involving an infringer, the parties agree to cooperate fully with each other. At the request and expense of the party bringing suit, the other party will permit access during regular business hours, to all relevant personnel, records, papers, information, samples, specimens, and the like in its possession.
Infringement by Third Parties. (a) If a Third Party shall, in the reasonable opinion of either Party, infringe any Patent within the Licensed Technology controlled by Array or a Joint Patent or Joint Chemical Patent, then the Party having such opinion shall promptly notify the other Party. Each Party shall within five (5) working days or as soon as reasonably practicable thereafter advise the other Party of receipt of any notice of:
(i) any certification filed under the U.S. “Drug Price Competition and Patent Term Restoration Act of 1984” (“ANDA Act”), claiming that any Array Patent or Joint Patent or Joint Chemical Patent is invalid or claiming that the Array Patent or Joint Patent or Joint Chemical Patent will not be infringed by the manufacture, use or sale of a product for which an application under the ANDA Act is filed or;
(ii) any equivalent or similar certification or notice in any other jurisdiction.
(b) If any Patent within the Licensed Technology Controlled by Array or a Joint Patent or Joint Chemical Patent is infringed by a Third Party in any country in connection with the manufacture, use and sale of a product the same as or substantially similar to a Licensed Product in the Field in such country, AZ shall have the primary right, but not the obligation, to institute, prosecute, and control any action or proceeding with respect to such infringement of such Patent, by counsel of its own choice, and Array shall have the right, at its own expense, to be represented in that action by counsel of its own choice. If AZ fails to bring an action or proceeding within a period of one hundred twenty (120) days after a request by Array to do so, Array shall have the right to bring and control any such action by counsel of its own choice, and AZ shall have the right to be represented in any such action by counsel of its own choice at its own expense.
(c) If one Party brings any such action or proceeding in accordance with this Section 8.3.3, the second Party agrees to be joined as a party plaintiff if necessary and to give the first Party reasonable assistance and authority to file and prosecute the suit. The costs and expenses of the Party bringing suit under this Section shall be borne by such Party, and any damages or other monetary awards recovered shall be shared as follows: The amount of such recovery actually received by the Party controlling such action shall first be applied to the out-of-pocket costs of such action, and then (i) if AZ is the Party that brings such action or pro...
Infringement by Third Parties. 10.2.1 Licensee shall have the right, but not the obligation, to institute and prosecute any and all suits to enjoin any and all infringes of the Licensed Patents, where such infringements affects the Licensee's use of the Technology in the Field of License; and from time to time during the continuance of this Agreement, and at its own expense, may institute any suit or suits which it may deem necessary. Licensee shall be entitled to retain any and all money damages it receives in connection with such suit or suits. The Licensee shall have the right to institute and prosecute such suits, and to employ its own counsel for such suits; and Licensee shall pay for all services rendered by counsel so retained, and for all incidental costs and expenses. Licensee agrees that Licensor may join as a party plaintiff in any suit initiated by Licensee regarding the System, at Licensor's sole expense, where Licensor deems that joining as a party plaintiff is necessary and in Licensor's best interests.
10.2.2 Except to the extent that Licensee has instituted or plans to institute a suit under Article 10.2.1, Licensor shall have the right, but not the obligation, to institute and prosecute any and all infringes of the 552 Patent where such infringement affects Licensor's use, sale, or rights to the System, and from time to time during the continuance of this Agreement, and at its own expense, may institute any suit or suits it may deem necessary. The Licensor shall have the right to institute and prosecute such suits, and to employ its own counsel for such suits; and Licensor shall pay for all services rendered by counsel so retained, and for all incidental costs and expenses. Licensor agrees that Licensee may join as a party plaintiff in any suit initiated by Licensor pertaining to infringement in the Field of License regarding the System, at Licensee's sole expense, where Licensee deems that joining as a party plaintiff is necessary and in Licensee's best interests.
Infringement by Third Parties. 6.4.1 Each party shall notify the other if it becomes aware of infringement by third parties of any patent rights licensed hereunder, (other than Chiron Sublicensable Patents or CDC Sublicensable Patents) if such infringement is within the field of uses licensed to such party under this Agreement. The patent owning party shall have the exclusive right to take action against such infringement in its sole discretion, subject to this Section 6.4.
6.4.2 In the event that a third party is engaged in the sale of Probe IVD Products which infringe the Chiron HCV/HIV Patents (other than a Chiron Sublicensable Patent), the parties shall meet and confer, and negotiate in good faith regarding patent enforcement or licensing strategy, recognizing that (i) Chiron will control any litigation with respect to such patent enforcement, and (ii) that each party will have an interest in any settlement of such infringement involving a license under the Chiron HCV/HIV Patents which is not specifically authorized under Section 2.1.1 or 2.1.3. In general, the parties intend to utilize licensing solutions to the extent such licenses can be structured to fairly protect the economic interests of the parties. If, however, the parties agree to pursue legal action, the parties shall also agree upon a reasonable allocation of both litigation costs and recoveries.
6.4.3 In the event that (i) the parties fail to reach agreement pursuant to Section 6.4.2; and (ii) the infringing product sold by the third party in a country is "substantially competitive" with a CDC HCV/HIV Probe Product directed to HCV which is then sold by CDC, a CDC Affiliate, an Authorized Distributor or a CDC sublicensee in the same country (an "Affected CDC Product"); and (iii) CDC has notified Chiron pursuant to Section 6.4.1 of an Affected CDC Product in [CONFIDENTIAL TREATMENT REQUESTED] (the "6.4.1.Notice"), then the provisions of this Section 6.4.3 shall apply. For this purpose, a third party infringing product shall be considered "substantially competitive" in a country if it achieves a market share in at least [CONFIDENTIAL TREATMENT REQUESTED] of the market for Probe IVD Products directed to HCV in such country. For this purpose, "Major Country" shall mean the United States, Germany, the United Kingdom or Japan.
Infringement by Third Parties. (a) Curis and Genentech shall promptly notify the other in writing of any alleged or threatened infringement of any Curis Patent, Genentech Patent or Joint Patent of which they become aware.
(b) Genentech shall have the first right, but not the obligation, to bring and control any action or proceeding, at its own expense and by counsel of its own choice, with respect to infringement of any Genentech Patent.
(c) The enforcement of any Curis Patent that is subject to the provisions of Section 10.2(b) against any Third Party shall be governed by such Section 10.2(b).
(d) Curis shall have the first right, but not the obligation, to bring and control any action or proceeding with respect to infringements of any Curis Patent other than those subject to Section 10.2(b).
(e) The enforcement of any Joint Patent against any Third Party shall be governed by Section 10.2(d).
(f) The Party not bringing an action under this Section 10.4 shall have the right, at its own expense and by counsel of its own choice, to be represented in any action involving any patent owned solely by such Party or jointly by the Parties. If Curis fails to bring an action or proceeding with respect to a patent that is owned or Controlled by Curis and that is subject to an exclusive license granted under this Agreement to Genentech, Genentech within: (i) sixty (60) days following the notice of alleged infringement; or (ii) ten (10) days before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, Genentech shall have the right to bring and control any such action at its own expense and by counsel of its own choice, and Curis shall have the right, at its own expense and by counsel of its own choice, to be represented in any such action. In the event a Party brings an infringement action, the other Party shall cooperate fully, including if required to bring such action, the furnishing of a power of attorney. Neither Party shall have the right to settle any patent infringement action under this Section 10.4 in a manner that diminishes the rights or interests of the other Party without the consent of such other Party. Both the right of Genentech to bring infringement actions under this Section 10.4 and the distribution of any recovery received as a result of an action brought pursuant to this Section 10.4 shall be subject to the rights of applicable Existing Licensors under applicable Existing License Agreements. Except as p...
Infringement by Third Parties. 7.1. LICENSEE, at its expense, must enforce any patent exclusively licensed hereunder against infringement in the LICENSED FIELD by third parties and is entitled to retain recovery from such enforcement. After reimbursement of LICENSEE's reasonable legal costs and expenses related to such recovery, LICENSEE agrees to pay UTMDACC either: (a) the royalty detailed in Section 4.1(d) for any monetary recovery that is for sales of LICENSED PRODUCTS lost due to the infringement and related punitive damages; or (b) fifty percent (50%) of reasonable royalties awarded and related punitive damages in any recovery in which the award is for reasonable royalties. LICENSEE must notify UTMDACC in writing of any potential infringement within thirty (30) calendar days of knowledge thereof. If LICENSEE does not file suit against a substantial infringer in the LICENSED FIELD within six (6) months of knowledge thereof then BOARD or UTMDACC may, at its sole discretion, enforce any patent licensed hereunder on behalf of itself and LICENSEE, with UTMDACC retaining all recoveries from such enforcement, and/or reduce the license granted hereunder to non-exclusive.
7.2. In any suit or dispute involving an infringer, the parties agree to cooperate fully with each other. At the request and expense of the party bringing suit, the other party will permit access during regular business hours, to all relevant personnel, records, papers, information, samples, specimens, and the like in its possession.
Infringement by Third Parties. Each Party shall promptly notify the other Party in writing of any alleged or threatened infringement by a Third Party of any Tularik Patent, Roche Bioscience Patent or Joint Patent of which they become aware and provide the other Party with all evidence in its possession supporting said infringement. The Parties agree to cooperate in taking commercially reasonable legal actions to protect the commercial interests of the Parties in the Research Collaboration, Research Compounds, Development Compounds or a Product against infringement by Third Parties. The Party having responsibility for Patent Management shall take the lead in any such action. If, within [ * ] following learning of the infringement by a Third Party, such Party fails to take commercially reasonable action against the Third Party to [ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. halt such alleged infringement, the other Party shall, in its sole discretion, have the right to take such action in such country as it deems warranted in its own name and/or in the name of the other Party; the Party maintaining such action shall be responsible for [ * ] and shall be entitled to receive [ * ]. If more than one Party wishes to participate in taking action to protect the commercial interests of the Parties in the Product against infringement, then an authorized representative of each Party shall control such action; the costs of maintaining such action shall be [ * ], and the damages recovered from such action for the past infringement shall be [ * ]. Each Party shall render such reasonable assistance as the prosecuting Party may request.
Infringement by Third Parties. (a) In the event that either EC or CRISPR becomes aware of any infringement or threatened infringement in the CRISPR Field or Tracr Field by a Third Party of any Patent Right, such party shall promptly notify the other party in writing to that effect. To the extent that it is legally permitted to do so, CRISPR shall have the first right to bring and control any action or proceeding with respect to infringement of any Patent Right within the CRISPR Field or the Tracr Field, at its own expense and by counsel of its own choice. EC will at CRISPR’s expense join and cooperate fully in such action if EC is required to do so by CRISPR and shall request that ERS and Tracr shall join and cooperate fully in such action if and to the extent appropriate, all at CRISPR’s expense. CRISPR shall keep EC fully informed and up to date with respect to such infringement actions and shall take into account any reasonable suggestions made by EC. EC shall have the right if she chooses, to join the proceedings on her own accord, at her own expense, to be represented in any such action by counsel of her own choice, and to review and comment on any papers filed during such action. In addition, if the infringement relates to both the CRISPR Field and the ERS Field, ERS shall have the right if it chooses, to join the proceedings on its own accord, at its own expense, to be represented in any such action by counsel of its own choice, and to review and comment on any papers filed during such action, and if the infringement relates to both the CRISPR Field and the Tracr Field. Tracr shall have the right if it chooses, to join the proceedings on its own accord, at its own expense, to be represented in any such action by counsel of its own choice, and to review and comment on any papers filed during such action. EC may, if she wishes, delegate the performance of any participation rights and activities under this Section 5.5(a) to ERS.
(b) If CRISPR fails to bring am such action or proceeding within (i) […***…] following the notice of alleged infringement or (ii) […***…] before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, then EC shall have the right to bring and control any such action at her own expense and by counsel of her own choice. CRISPR shall join and cooperate fully in such action, at EC’s expense. CRISPR shall have the right, at its own expense, to be represented by counsel of its own choice in a...
Infringement by Third Parties. (a) Each party shall promptly notify the other if it is believed that substantial infringement or misappropriation of the Licensed Trademarks by a third party has occurred or has been threatened, or if it becomes aware of any challenge to the validity or interpretation of the Licensed Trademarks. Salix shall have the first right, but not the obligation, to assume the primary right and responsibility to take any and all actions seeking to prevent and/or cause the discontinuance of any infringement of the Licensed Trademarks, or defend such challenge. aaiPharma agrees that it will, at Salix’s request and expense, furnish such reasonable assistance as may be required to assist in preventing or discontinuing any such infringement or defending against such challenge, and shall join Salix as a named party if required by law or otherwise reasonably advisable to do so. If Salix brings suit under this paragraph:
(i) Salix shall defend the validity and enforceability of the Licensed Trademarks in any such suit in a commercially reasonable manner; and Salix shall be permitted to deduct the out-of-pocket expenses related to the suit and any related settlement from any recovery, lump-sum settlement or royalty payment made to Salix by the alleged infringer. Any remaining amount reasonably attributable to lost sales of Licensed [*] Confidential treatment requested; certain information omitted and filed separately with the SEC. Products shall be treated as if it were Net Sales made by Salix and included in the calculation of royalties pursuant to Section 3.1, with aaiPharma receiving a royalty thereon and Salix retaining the balance.
(b) If Salix chooses not to act under Section 13.2(a), aaiPharma shall have the right, at aaiPharma’s sole expense, to prevent and/or cause the discontinuance of any infringement of the Licensed Trademarks or defend any challenge to the validity or interpretation of the Licensed Trademarks. In such event, aaiPharma may, but is not required to, pursue discontinuance of the alleged infringement or deal with such challenge, or bring suit against such third party. Salix will, at the request and expense of aaiPharma, give reasonable assistance to aaiPharma in the prosecution of any such suit brought by aaiPharma pursuant to this subsection(b).
(c) Notwithstanding the foregoing, upon Salix’s exercise of the Assignment Option, aaiPharma shall have no further right to prosecute or otherwise participate in any litigation regarding the infringement of ...