Infringement of Patents. 12.1 From the Effective Date, Licensee shall forthwith notify Licensor in writing of any infringement, or suspected or threatened infringement, of any of the Patents by any third party that shall at any time come to its knowledge. 12.2 Licensee may in its sole discretion, take all appropriate steps (including all legal proceedings) as may be necessary to prevent or restrain any infringement by a third party of any of the Patents and shall be responsible for all costs and fees incurred by it in the taking of any such steps. 12.3 Licensee shall not be obliged to undertake any legal action. 60P shall indemnify Licensor against all costs, expenses, losses, damages, claims and counter-claims issued or made against Licensor as a result of, or in the course of, such action taken by Licensee under Section 12.2 on a full indemnity basis. 12.4 NUS and SHS shall (at 60P’s cost and expense) provide or procure the provision of such assistance in taking such steps (including any proceedings) as Licensee shall reasonably require. 12.5 If Licensee decides not to or fails to take appropriate steps to prevent or restrain any infringement by any third party of any of the Patent Rights (but not otherwise), Licensor shall be entitled to take action to prevent or restrain such infringement. In the event that L▇▇▇▇▇▇▇ decides to take action under this Section: (a) Licensor shall have full control over, and shall conduct at its own cost, any such action as it deems fit; (b) Licensee shall, at Licensor’s cost, provide or procure the provision of such assistance as Licensor shall reasonably require in taking such action; and (c) Licensor shall be entitled to retain any award of damages or other compensation obtained as a result of any such action (including any proceedings) being taken by Licensor.
Appears in 3 contracts
Sources: Exclusive License Agreement (60 Degrees Pharmaceuticals, Inc.), Exclusive License Agreement (60 Degrees Pharmaceuticals, Inc.), Exclusive License Agreement (60 Degrees Pharmaceuticals, Inc.)
Infringement of Patents. 12.1 From the Effective Date, 11.1 Licensee shall forthwith notify Licensors in writing of any infringement, or suspected or threatened infringement, of any of the Patent Rights or Other Patent Rights by any third party that shall at any time come to its knowledge. Each Licensor shall [***] notify Licensee and the other Licensor in writing of any infringement, or suspected or threatened infringement, of any of the Patents Patent Rights or Other Patent Rights by any third party that shall at any time come to its knowledge.
12.2 11.2 Licensee may (or, to the extent designated by Licensee, its Related Company or any Qualified Sublicensee) shall have the [***], to enforce the Patent Rights and/or Other Patent Rights and/or to defend the Patent Rights and/or Other Patent Rights (e.g., in its sole discretionany declaratory judgment, take all appropriate steps (including all legal proceedingsopposition, post grant challenge, inter partes review or biosimilar challenge) as may be necessary with respect to prevent the same.
11.3 In the event that any claims or restrain any infringement counter-claims are issued or made by a third party against Licensors as a result of any such action taken by Licensee (or its designee described in Section 11.2 above) under Section 11.2, Licensee (or such designee) shall have control over, and shall take steps to defend Licensors against such claims and/or counterclaims and shall have control over, and shall conduct [***], the defense of the Patents and shall be responsible for all costs and fees incurred by it Licensors in consultation with the taking of any such steps.
12.3 Licensors. Licensee shall not be obliged to undertake any legal action. 60P shall indemnify Licensor Licensors against all costs, expenses, losses, damages, Liabilities (as defined in Section 16.1 below) arising from such claims and counter-claims issued or made against Licensor as by a result of, or third party; provided that the indemnification procedures and other terms set out in the course of, Section 16.2 shall be deemed to apply mutatis mutandis (and any references in Section 16.2 below to Section 16.1 shall be deemed to be replaced by Section 11.3 for such action taken by Licensee under Section 12.2 on a full indemnity basispurposes).
12.4 NUS 11.4 Licensors shall reasonably cooperate, [***] and SHS shall (at 60PLicensee’s cost and expense) provide or procure the provision of such assistance [***] request, in taking such steps steps, including joining in any such action and cooperating with Licensee (including any proceedingsor such designee described in Section 11.2 above) as Licensee shall reasonably requirein connection therewith.
12.5 11.5 Any recoveries pursuant to Section 11.2 shall be used [***] Licensee (and/or its designee described in Section 11.2 above) [***], and any remainder shall be [***]. For clarity, [***] provision.
11.6 If Licensee (or its designee described in Section 11.2 above) decides not to or fails fails, within [***] pursuant to Section 11.1, to take appropriate steps to prevent or restrain any infringement by any third party of any of the Patent Rights (but not otherwise)Rights, Licensor then Licensors shall be entitled to take action to prevent or restrain such infringement. In the event that L▇▇▇▇▇▇▇ Licensors decides to take action under this Section:
(a) Licensor Licensors shall have full control over, and shall conduct at its own cost[***], any such action as it deems fit; provided that Licensors shall not initiate any legal. proceedings with respect to any such infringement unless such infringement is, in the reasonable opinion of the Licensors, commercially significant and Licensors have first consulted with Licensee in good faith regarding whether to initiate such infringement proceedings;
(b) Licensee shall, at Licensor’s cost[***], provide or procure the provision of such assistance as Licensor NUS shall reasonably require in taking such action; and
(c) Licensor Licensors shall be entitled to retain any award of damages or other compensation obtained [***] as a result of any such action (including any proceedings) [***] being taken by LicensorLicensors.
Appears in 1 contract
Infringement of Patents. 12.1 From the Effective Date, Licensee shall forthwith notify Licensor in writing of any infringement, or suspected or threatened infringement, of any of the Patents by any third party that shall at any time come to its knowledge.
12.2 Licensee may in its sole discretion, take all appropriate steps (including all legal proceedings) as may be necessary to prevent or restrain any infringement by a third party of any of the Patents and shall be responsible for all costs and fees incurred by it in the taking of any such steps.
12.3 Licensee shall not be obliged to undertake any legal action. 60P shall indemnify Licensor against all costs, expenses, losses, damages, claims and counter-claims issued or made against Licensor as a result of, or in the course of, such action taken by Licensee under Section 12.2 on a full indemnity basis.
12.4 NUS and SHS shall (at 60P’s cost and expense) provide or procure the provision of such assistance in taking such steps (including any proceedings) as Licensee shall reasonably require.
12.5 If Licensee decides not to or fails to take appropriate steps to prevent or restrain any infringement by any third party of any of the Patent Rights (but not otherwise), Licensor shall be entitled to take action to prevent or restrain such infringement. In the event that L▇▇▇▇▇▇▇▇ decides to take action under this Section:
(a) Licensor shall have full control over, and shall conduct at its own cost, any such action as it deems fit;
(b) Licensee shall, at Licensor’s cost, provide or procure the provision of such assistance as Licensor shall reasonably require in taking such action; and
(c) Licensor shall be entitled to retain any award of damages or other compensation obtained as a result of any such action (including any proceedings) being taken by Licensor.
Appears in 1 contract
Sources: Exclusive License Agreement (60 Degrees Pharmaceuticals, Inc.)
Infringement of Patents. 12.1 From the Effective Date, 11.1. Licensee shall forthwith notify Licensor Licensors in writing of any infringement, or suspected or threatened infringement, of any of the Patents Patent Rights by any third party that shall at any time come to its knowledge.
12.2 11.2. Licensee may in its sole discretionshall be responsible, take after consultation with Licensors, for taking all appropriate steps (including all legal proceedings) as may be necessary to prevent or restrain any infringement by a third party of any of the Patents Patent Rights and shall be responsible for all costs and fees incurred by it in the taking of any such steps.
12.3 11.3. Licensee shall not be obliged to undertake any legal action. 60P shall indemnify Licensor Licensors against all costs, expenses, losses, damages, claims and counter-claims issued or made against Licensor Licensors as a result of, or in the course of, such action taken by Licensee under Section 12.2 on a full indemnity basis11.2.
12.4 NUS and SHS 11.4. Licensors shall (at 60PLicensee’s cost and expense) provide or procure the provision of such assistance in taking such steps (including any proceedings) as Licensee shall reasonably require.
12.5 11.5. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the prior written consent of Licensors. Licensors shall not unreasonably withhold consent of any settlement, consent judgment or other voluntary final disposition of suit that does not admit the invalidity of any patent within Patent Rights and which does not purport to admit any fault or wrongdoing on the part of Licensor. Any recovery obtained as a result of such litigation shall (i) first, go to reimburse the Licensee for its out of pocket costs in connection with such litigation; (ii) second, from any damages awarded other than for willful infringement, Licensors shall receive the equivalent of their royalty based on the infringer’s sales of Licensed Product(s) or Licensed Processes (i.e., an amount equal to what Licensors would have received as if such infringing sales had been made by Licensee), and (iii) any damages awarded for infringement shall go [***] to the Licensee and [***] shall go to the Licensors.
11.6. If Licensee decides not to or fails to take appropriate steps to prevent or restrain any infringement by any third party of any of the Patent Rights (but not otherwise), Licensor Licensors shall be entitled to take action to prevent or restrain such infringement. In the event that L▇▇▇▇▇▇▇ decides Licensors decide to take action under this Section:
(a) Licensor Licensors shall have full control over, and shall conduct at its own cost, any such action as it deems fit;
(b) Licensee shall, at Licensor’s Licensors’ cost, provide or procure the provision of such assistance as Licensor Licensors shall reasonably require in taking such action; and
(c) Licensor Licensors shall be entitled to retain any award of damages or other compensation obtained as a result of any such action (including any proceedings) being taken by LicensorLicensors.
Appears in 1 contract
Sources: Exclusive License Agreement (Unum Therapeutics, Inc.)