Intellectual Property Management. 11.1. All Patent Costs incurred after the Effective Date shall be met solely by Centry. 11.2. The ownership of the Licensed Intellectual Property shall, at all times, remain vested solely in CRT, ICR and/or CPF as applicable. 11.3. Subject to Clauses 11.4, 11.5, 11.6 and 11.7 Centry shall be responsible for filing, prosecuting, and maintaining the Licensed Patents in CRT, ICR or CPF’s sole name and will use its Commercially Reasonable Efforts to maximise the duration and scope of the Licensed Patents in the Target Patent Countries. 11.4. Notwithstanding anything to the contrary in this Agreement, until Centry has satisfied the Financing Commitment CPF shall have the final decision making authority relating to the filing strategy for the Licensed Patents, as further set out in Clause 4.4. 11.5. Centry shall discuss the filing strategy for the Licensed Patents with CPF and shall take into consideration all comments received from CPF in respect of such strategy. If Centry elects not to file a Patent application, in any Target Patent Country, Centry shall promptly notify CPF of such decision and CPF shall have the right (but not the obligation) to file such an application and may transfer this right to CRT in its sole discretion. If CPF elects to exercise such right by notice in writing to Centry, CPF shall thereafter be solely responsible for the expense of filing, prosecuting and maintaining the corresponding Patent, which shall be excluded from the definition of Licensed Patents and the license granted under Clause 5. 11.6. Centry shall keep CPF reasonably informed in writing as to the prosecution and/or maintenance status of the Licensed Patents and shall promptly provide CPF with a copy of all submissions made to or responses received from the relevant Patent offices and all correspondence to and responses received from the relevant Patent agent in relation to the Licensed Patents in each applicable country of the Territory. Centry shall use Commercially Reasonable Efforts to notify CPF at least [***] ([***]) [***] prior to any restriction of scope of any of the Licensed Patents. 11.7. If Centry elects not to prosecute and/or maintain any part of the Licensed Patents in any Target Patent Country, Centry shall notify CPF in writing at least [***] ([***]) [***] prior to the expiration of any applicable time bars. During the aforementioned [***] ([***]) [***] notice period, Centry shall continue to prosecute and maintain the Licensed Patents in question. On the expiry of such notice period: (a) the licence granted pursuant to Clause 5.1 shall terminate in respect of the Licensed Patents identified in such notice; (b) Centry shall, at CPF’s request, promptly transfer to CPF any and all documents and information in Centry’s control relating to such Licensed Patents; and (c) CPF shall be free to prosecute or abandon such Licensed Patents at its sole discretion and to grant rights thereunder to any person without further reference to Centry. 11.8. Each Party will promptly notify the other Parties in writing as soon as it becomes aware of any infringement or suspected infringement by a Third Party of any of the Licensed Patents or any unauthorised use of the Licensed Know How or the Licensed Materials.
Appears in 3 contracts
Sources: Licence Agreement (Nuvectis Pharma, Inc.), Licence Agreement (Nuvectis Pharma, Inc.), Licence Agreement (Nuvectis Pharma, Inc.)
Intellectual Property Management. 11.1. All Patent Costs incurred after the Effective Date shall be met solely by Centry.
11.2. The ownership of the Licensed Intellectual Property shall5.3.1 Upon Monopar exercising its Monopar Validive Option, at all times, remain vested solely in CRT, ICR and/or CPF as applicable.
11.3. Subject to Clauses 11.4, 11.5, 11.6 and 11.7 Centry Monopar shall be responsible for filing, prosecutingfor, and maintaining shall bear or pay all costs and expenses related to, the Licensed Patents in CRTProsecution and maintenance, ICR or CPF’s sole name and will use its Commercially Reasonable Efforts to maximise the duration and scope of the Licensed Patents in and Patents claiming any Arising Intellectual Property, and the Target Patent Countriesregistration, renewal and maintenance of the Licensed Trademarks, until the termination of this agreement. The Parties shall hold all information they know or acquire under this Section 5.3.1 that is related to all such Patents as confidential, subject to the provisions of this Agreement.
11.4. Notwithstanding anything to the contrary in this Agreement, until Centry has satisfied the Financing Commitment CPF shall have the final decision making authority relating to the filing strategy for the Licensed Patents, as further set out in Clause 4.4.
11.5. Centry shall discuss the filing strategy for the Licensed Patents with CPF and shall take into consideration all comments received from CPF in respect of such strategy. If Centry elects not to file a Patent application, in any Target Patent Country, Centry shall promptly notify CPF of such decision and CPF shall have the right (but not the obligation) to file such an application and may transfer this right to CRT in its sole discretion. If CPF elects to exercise such right by notice in writing to Centry, CPF shall thereafter be solely responsible for the expense of filing, prosecuting and maintaining the corresponding Patent, which shall be excluded from the definition of Licensed Patents and the license granted under Clause 5.
11.6. Centry 5.3.2 Monopar shall keep CPF Onxeo reasonably informed in writing as to the prosecution Prosecution, registration and/or maintenance status of the Licensed Patents and Licensed Trademarks, and shall at Onxeo's request promptly provide CPF Onxeo with a copy of all submissions made to or responses received from the relevant Patent patent and trademark offices and all correspondence to and responses received from the relevant Patent agent patent and trademark agents in relation to the Licensed Patents and Licensed Trademarks in each applicable country of the Territory. Centry .
5.3.3 If Monopar elects not to file an application or otherwise not prosecute, register and/or maintain a Licensed Patent or Licensed Trademark in any country of the Territory, Monopar shall notify Onxeo in writing promptly of its decision and shall use Commercially Reasonable Efforts its reasonable efforts to notify CPF provide Onxeo with at least [***] ([***]) [***] prior to any restriction of scope of any of the Licensed Patents.
11.7. If Centry elects not to prosecute and/or maintain any part of the Licensed Patents in any Target Patent Country, Centry shall notify CPF in writing at least [***] ([***]) [***] notice prior to the expiration of any applicable time bars. During the aforementioned [***] ([***]) [***] notice period, Centry Monopar shall continue to prosecute retain the responsibility for the Prosecution, registration and maintain maintenance of the relevant Licensed Patents in questionPatent or Licensed Trademark. On the expiry of such notice period:
(a) the licence license granted pursuant to Clause 5.1 Section 3.1.1 shall terminate in respect of that country and that relevant Licensed Product for any relevant Licensed Patent or Licensed Trademark which is the Licensed Patents identified in subject of such a notice;
(b) Centry Monopar shall, at CPF’s Onxeo's request, promptly transfer to CPF Onxeo (or any person nominated by Onxeo) any and all documents and information in Centry’s Monopar's control relating to such relevant Licensed PatentsPatent or Licensed Trademark; and
(c) CPF Onxeo shall be free to prosecute Prosecute, register or abandon such relevant Licensed Patents Patent or Licensed Trademark at its sole discretion and to grant rights thereunder to any person Person without further reference to CentryMonopar, and Onxeo shall thereafter be responsible for the expense of filing, prosecuting, registering and maintaining the relevant Patents and Trademarks. [***] = Confidential Information has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been approved with respect to the omitted information, pursuant to an Order dated January 8, 2018.
11.8. Each Party will promptly notify the other Parties in writing as soon as it becomes aware of any infringement or suspected infringement by a Third Party of any of the Licensed Patents or any unauthorised use of the Licensed Know How or the Licensed Materials.
Appears in 2 contracts
Sources: Option and License Agreement (Monopar Therapeutics), Option and License Agreement (Monopar Therapeutics)
Intellectual Property Management. 11.1. 7.1 All Patent Costs incurred after the Effective Date shall be met solely by Centrythe Licencee.
11.2. 7.2 The ownership of the Licensed Intellectual Property shall, Licenced Patents shall (as between the Parties) at all times, times remain vested solely in CRT, ICR and/or CPF as applicable.
11.3. 7.3 Subject to Clauses 11.47.4, 11.57.5 and 7.6, 11.6 and 11.7 Centry the Licencee shall be responsible for filing, prosecuting, and maintaining the Licensed Patents Licenced Patents’ IP Strategy in CRT, ICR or CPF’s sole name and will use its Commercially Reasonable Efforts to maximise with the aim of maximising the duration and scope of the Licensed Patents in the Target Patent Countriesthereof.
11.4. Notwithstanding anything to the contrary in this Agreement, until Centry has satisfied the Financing Commitment CPF shall have the final decision making authority relating to the filing strategy for the Licensed Patents, as further set out in Clause 4.4.
11.5. Centry 7.4 The Licencee shall discuss the filing strategy for the Licensed Patents Licenced Patents’ and Arising Patents’ IP Strategy with CPF CRT and shall take into consideration all comments received from CPF CRT in a timely manner in respect of such strategy. If Centry elects not to file a Patent application, in any Target Patent Country, Centry shall promptly notify CPF of such decision and CPF shall have the right (but not the obligation) to file such an application and may transfer this right to CRT in its sole discretion. If CPF elects to exercise such right by notice in writing to Centry, CPF shall thereafter be solely responsible for the expense of filing, prosecuting and maintaining the corresponding Patent, which shall be excluded from the definition of Licensed Patents and the license granted under Clause 5thereof.
11.6. Centry 7.5 The Licencee shall keep CPF CRT reasonably informed in writing as to the prosecution and/or maintenance status of the Licensed Patents Licenced Patents’ IP Strategy and shall promptly provide CPF CRT with a copy of all submissions made to or responses received from the relevant Patent patent offices and all correspondence to and responses received from the relevant Patent patent agent in relation to the Licensed Licenced Patents in each applicable country of the Territory. Centry The Licencee shall use Commercially Reasonable Efforts to notify CPF CRT at least [***] three ([***]3) [***] months prior to any restriction of scope of any of the Licensed Licenced Patents.
11.7. 7.6 If Centry the Licencee elects not to prosecute and/or maintain any part of the Licensed Patents in any Target Patent CountryLicenced Patents, Centry the Licencee shall notify CPF CRT in writing at least [***] three ([***]3) [***] months prior to the expiration of any applicable time bars. During the aforementioned [***] three ([***]3) [***] months’ notice period, Centry the Licencee shall continue to prosecute and maintain retain the Licensed responsibility for the Licenced Patents’ IP Strategy in respect of the Licenced Patents identified in questionsuch notice. On the expiry of such notice period:
(a) 7.6.1 the licence granted pursuant to Clause 5.1 2.1 shall terminate in respect of the Licensed Licenced Patents identified in such notice;; and
(b) Centry 7.6.2 the Licencee shall, at CPFCRT’s request, promptly transfer to CPF CRT (or any person nominated by CRT) any and all documents and information in Centrythe Licencee’s control relating to such Licensed Licenced Patents; and
(c) CPF 7.6.3 CRT shall be free to prosecute or abandon have the responsibility for the Licenced Patents’ IP Strategy in respect of the Licenced Patents identified in such Licensed Patents notice, at its sole discretion and shall be free to grant rights thereunder to any person without further reference to Centrythe Licencee.
11.8. 7.7 The Licencee will notify CRT in writing promptly that any claim is made or threatened against the Licencee, a Sub-Licencee or an Affiliate of either of them by any person that the exercise by the Licencee, a Sub-Licencee or an Affiliate of either of them, of the rights granted pursuant to this Agreement infringe any patent or other rights of any Third Party.
7.8 In the event of the circumstances described in Clause 7.7 arising, the Licencee shall use Commercially Reasonable Efforts to terminate such infringement or otherwise to remedy the position and shall report to CRT on the steps taken.
7.9 Each Party will promptly notify the other Parties Party in writing as soon as it becomes aware of any infringement or suspected infringement by a Third Party of any of the Licensed Licenced Patents or any unauthorised use of the Licensed Licenced Know How or the Licensed Licenced Materials.
7.10 Provided the Licencee has a licence under this Agreement in relation to the relevant Licenced Patent and country (and where local law permits), within such country the Licencee may:
7.10.1 at its own cost and subject to Clause 7.11, bring proceedings in its own name or, if required by law, jointly with CRT, for infringement of the Licenced Patents in the Field; and
7.10.2 in any such proceedings settle any claim for infringement of the Licenced Patents in the Field, provided it obtains the prior written consent of CRT (which shall not be unreasonably withheld or delayed). Any damages, profits, and awards of whatever nature recovered by the Licencee for such infringement shall be treated as Net Sales subject to a deduction for the Licencee’s reasonable external legal expenses insofar as these are not recovered from a third party. In any such proceedings, CRT shall, at the Licencee’s cost, promptly provide the Licencee with all documents and assistance as the Licencee may reasonably require. The Licencee shall promptly provide CRT with notice of such proceedings and keep CRT regularly informed of progress and promptly provide CRT with such information as CRT may require including copies of all documents filed at court in the proceedings. If CRT is joined to proceedings pursuant to Clause 7.10.1 or otherwise, the Licencee shall indemnify and hold harmless CRT, the Charity any university or academic research institute from which Licenced Intellectual Property arises and their respective officers, directors, employees and agents and the inventors named in any Licenced Patents (the “CRT Indemnities”) from and against any and all claims, demands, losses, causes of action, damages and expenses (including without limitation, legal fees) arising from or in connection with such proceedings.
7.11 Prior to commencing any proceedings pursuant to Clause 7.10, the Licencee shall (or shall procure that its Sub-Licencee shall) enter into a separate agreement with CRT pursuant to which the Licencee (or the Sub-Licencee if applicable) shall indemnify the CRT Indemnitees in respect of any and all potential Third Party claims, demands, losses, damages, costs and expenses (including, without limitation, legal fees) which might arise directly or indirectly as a consequence of such proceedings being concluded successfully or unsuccessfully (including without limitation any anti-trust proceedings commenced by a Third Party (for example, alleging that the price of any Licenced Product has been kept artificially high through the maintenance of Patent Rights which are invalid and/or unenforceable for any reason)).
7.12 If the Licencee does not exercise its right to bring proceedings pursuant to Clause 7.10 within sixty (60) days of the written notification pursuant to Clause 7.9 or such longer period as may be agreed by the Parties then CRT shall be entitled, but not obliged to bring such proceedings at its own cost. If necessary, (including to recover damages), the Licencee shall join in such proceedings. Any monies recovered in such proceedings shall first be used to reimburse the Parties for any costs incurred and the remainder shall be allocated [***]. In any such proceedings the Licencee shall promptly provide CRT with all documents and assistance as CRT may reasonably require and CRT shall promptly provide the Licencee with notice of such proceedings.
7.13 The Parties shall, at the request of either of them and at the expense of the requesting Party but for no further consideration, enter into such confirmatory patent licences relating to the Licenced Patents, substantially in the form set out in Schedule 4, as may be necessary or desirable in accordance with the relevant law and practice in each country in the Territory for registration at the relevant patent offices so that this Agreement need not be registered or recorded unless the Parties are required to do so by law. If there are any inconsistencies between the terms of any such confirmatory patent licence and the provisions of this Agreement, this Agreement shall prevail.
7.14 With respect to each Licenced Product, the Licencee shall, to the extent consistent with Commercially Reasonable Efforts, at the time of receipt of the relevant Regulatory Approval, or such other time as appropriate, apply for a Supplementary Protection Certificate, patent term extension and/or any other exclusivity in respect of such Licenced Product. At the Licencee’s reasonable request and sole cost, CRT will provide reasonable assistance to the Licencee in connection with any such applications.
Appears in 2 contracts
Sources: Licensing Agreement (SPK Acquisition Corp.), Licensing Agreement (SPK Acquisition Corp.)
Intellectual Property Management. 11.1. 8.1 All Patent Costs incurred after the Effective Date shall be met solely by CentryProNAi.
11.2. 8.2 The ownership of the Licensed Intellectual Property shall, shall at all times, times remain vested solely in CRT, ICR and/or . CPF represents and warrants to ProNAi that as applicableof the Effective Date it does not own or controls any Patent (other than the Licensed Patents) which cover equivalent subject matter (concerning CHK1) to the Licensed Patents.
11.3. 8.3 Subject to Clauses 11.48.4, 11.58.5 and 8.6, 11.6 and 11.7 Centry ProNAi shall be responsible for have the right to control the filing, prosecuting, prosecuting and maintaining the Licensed Patents in CRT, ICR or CPF’s sole name and will use its Commercially Reasonable Efforts to maximise the duration and scope of the Licensed Patents thereof in the Target Patent Countries.
11.4. Notwithstanding anything to the contrary 8.4 ProNAi shall keep CPF reasonably informed in this Agreement, until Centry has satisfied the Financing Commitment CPF shall have the final decision making authority relating to advance of the filing and prosecution strategy for the Licensed Patents, as further set out in Clause 4.4.
11.5. Centry shall discuss the filing strategy for the Licensed Patents with CPF and shall take into consideration all comments received from CPF in respect of such strategythereof. If Centry ProNAi elects not to file a Patent application, in any Target Patent Country, Centry Country ProNAi shall promptly notify CPF of such decision and CPF shall have the right (but not the obligation) to file such an application and may transfer this right to CRT in its sole discretionapplication. If CPF elects to exercise such right by notice in writing to CentryProNAi, CPF shall thereafter be solely responsible for the expense of filing, prosecuting and maintaining the corresponding Patent, which shall be excluded from the definition of Licensed Patents and the license licence granted under Clause 53.1.
11.6. Centry 8.5 ProNAi shall keep CPF reasonably informed in writing as to the prosecution and/or maintenance status of the Licensed Patents and shall promptly provide CPF with a copy of all material submissions made to or material responses received from the relevant Patent offices and all correspondence to and responses received from the relevant Patent agent in relation to the Licensed Patents in each applicable country of the Territory. Centry ProNAi shall use Commercially Reasonable Efforts to notify CPF at least [***] three ([***]3) [***] months prior to any restriction of scope of any of the Licensed Patents.
11.7. 8.6 If Centry ProNAi elects not to prosecute and/or maintain any part of the Licensed Patents in any Target Patent Country, Centry ProNAi shall notify CPF in writing and shall use Commercially Reasonable Efforts to ensure that such notice is given at least [***] ([***]) [***] prior to the expiration of any applicable time bars. During the aforementioned [***] ([***]) [***] notice period, Centry ProNAi shall continue to prosecute and maintain the Licensed Patents in question. On the expiry of such notice period:
(a) 8.6.1 the licence granted pursuant to Clause 5.1 3.1 shall terminate in respect of the Licensed Patents identified in such notice;; and
(b) Centry 8.6.2 ProNAi shall, at CPF’s request, promptly transfer to CPF any and all documents and information in CentryProNAi’s control relating to such Licensed Patents; and
(c) 8.6.3 CPF shall be free have the right, but not the obligation, to prosecute (or abandon abandon) such Licensed Patents at its sole discretion and to grant rights thereunder to any person without further reference to CentryProNAi.
11.8. 8.7 Each Party will promptly notify the other Parties in writing as soon as it becomes aware of any infringement or suspected infringement by a Third Party of any of the Licensed Patents or any unauthorised use of the Licensed Know How or the Licensed MaterialsMaterials in the Field (an “Infringement Action”).
8.8 Provided ProNAi has a licence under this Agreement in relation to the relevant Licensed Patent and country (and where local law permits), within such country ProNAi may at its sole discretion:
8.8.1 at its own cost and subject to Clause 8.9, bring proceedings in its own name (or authorize a Sub-Licensee to bring proceedings in its own name) or, if required by law (including as required for standing), jointly with CPF (and CRT and/or ICR, if required for standing), for any Infringement Action; and
8.8.2 in any such proceedings settle any Infringement Action, provided it obtains the prior written consent of CPF, where any such settlement would result in a restriction to the scope of such Licensed Patent.
(a) Any damages, profits, and awards of whatever nature recovered by ProNAi or any Sub-Licensee for any Infringement Action shall be treated as Net Sales subject to a deduction for external legal expenses of ProNAi and such Sub-Licensee insofar as these are not recovered from a Third Party, provided always, where damages are also awarded to CPF to the extent that this would otherwise result in a double receipt by CPF of royalties ProNAi shall be entitled to deduct any such duplicated payment from any royalties payable to CPF. In any such proceedings, CPF shall, at ProNAi’s cost, promptly provide ProNAi with all documents and assistance as ProNAi may reasonably require. ProNAi shall promptly provide CPF with notice of such proceedings and keep CPF regularly informed of progress and promptly provide CPF with such information as CPF may require including copies of all documents filed at court in the proceedings. If CPF (or CRT and/or ICR) is joined to proceedings pursuant to this Clause or otherwise, ProNAi shall indemnify and hold harmless the CPF Indemnified Parties and the inventors named in any Licensed Patents (the “CPF Indemnitees”) from and against any and all claims, demands, losses, causes of action, damages and expenses (including without limitation, legal fees) arising from or in connection with such proceedings.
(b) If ProNAi does not exercise its right to bring proceedings pursuant to Clause 8.8 within [*] of written request to bring proceedings from CPF, then CPF shall be entitled, but not obliged to bring such proceedings at its own cost. If necessary, including to recover damages, subject to ProNAi’s consent (such consent not to be unreasonably withheld or delayed it being agreed that the lack of indemnity protection for ProNAi would be reasonable grounds to refuse consent) CPF may require ProNAi to join in such proceedings. ProNAi shall have the right to join in any such proceedings commenced by CPF, subject to [*]. Any damages, profits, and awards of whatever nature recovered as a result of such a joint proceeding shall be [*] after deduction for external legal expenses of both Parties.
(c) In any proceedings in clauses (a) or (b), the Parties not bringing the proceedings (“Inactive Parties”) shall promptly provide the Party bringing proceedings (“Active Party”) with all documents and assistance as the Active Party may reasonably require and the Active Party shall promptly provide the Inactive Parties with notice of such proceedings.
8.10 The Parties shall, at the request of any of them and at the expense of the requesting Party but for no further consideration, enter into such confirmatory Patent licences relating to the Licensed Patents, substantially in the form set out in Schedule 10, as may be necessary or desirable in accordance with the relevant law and practice in each country in the Territory for Registration at the relevant Patent offices so that this Agreement need not be registered or recorded unless the Parties are required to do so by law. If there are any inconsistencies between the terms of any such confirmatory Patent licence and the provisions of this Agreement, this Agreement shall prevail.
8.11 With respect to each Licensed Product, ProNAi shall, at the time of receipt of the relevant Regulatory Approval, or such other time as appropriate, apply for a Supplementary Protection Certificate, Patent term extension and/or any other exclusivity in respect of such Licensed Product. Without limiting the foregoing, the selection of any patent to be subject to any patent term extension for any Licensed Product shall be made by ProNAi in its sole discretion. At ProNAi’s reasonable request and sole cost, CPF will provide reasonable assistance to ProNAi in connection with any such applications.
Appears in 1 contract
Intellectual Property Management. 11.1. All Patent Costs incurred after the Effective Date shall be met solely by Centry.
11.2. The ownership of the Licensed Intellectual Property shall5.3.1 Upon Monopar exercising its Monopar Validive Option, at all times, remain vested solely in CRT, ICR and/or CPF as applicable.
11.3. Subject to Clauses 11.4, 11.5, 11.6 and 11.7 Centry Monopar shall be responsible for filing, prosecutingfor, and maintaining shall bear or pay all costs and expenses related to, the Licensed Patents in CRTProsecution and maintenance, ICR or CPF’s sole name and will use its Commercially Reasonable Efforts to maximise the duration and scope of the Licensed Patents in and Patents claiming any Arising Intellectual Property, and the Target Patent Countriesregistration, renewal and maintenance of the Licensed Trademarks, until the termination of this agreement. The Parties shall hold all information they know or acquire under this Section 5.3.1 that is related to all such Patents as confidential, subject to the provisions of this Agreement.
11.4. Notwithstanding anything to the contrary in this Agreement, until Centry has satisfied the Financing Commitment CPF shall have the final decision making authority relating to the filing strategy for the Licensed Patents, as further set out in Clause 4.4.
11.5. Centry shall discuss the filing strategy for the Licensed Patents with CPF and shall take into consideration all comments received from CPF in respect of such strategy. If Centry elects not to file a Patent application, in any Target Patent Country, Centry shall promptly notify CPF of such decision and CPF shall have the right (but not the obligation) to file such an application and may transfer this right to CRT in its sole discretion. If CPF elects to exercise such right by notice in writing to Centry, CPF shall thereafter be solely responsible for the expense of filing, prosecuting and maintaining the corresponding Patent, which shall be excluded from the definition of Licensed Patents and the license granted under Clause 5.
11.6. Centry 5.3.2 Monopar shall keep CPF Onxeo reasonably informed in writing as to the prosecution Prosecution, registration and/or maintenance status of the Licensed Patents and Licensed Trademarks, and shall at Onxeo's request promptly provide CPF Onxeo with a copy of all submissions made to or responses received from the relevant Patent patent and trademark offices and all correspondence to and responses received from the relevant Patent agent patent and trademark agents in relation to the Licensed Patents and Licensed Trademarks in each applicable country of the Territory. Centry .
5.3.3 If Monopar elects not to file an application or otherwise not prosecute, register and/or maintain a Licensed Patent or Licensed Trademark in any country of the Territory, Monopar shall notify Onxeo in writing promptly of its decision and shall use Commercially Reasonable Efforts its reasonable efforts to notify CPF provide Onxeo with at least [***] ([***]) [***] prior to any restriction of scope of any of the Licensed Patents.
11.7. If Centry elects not to prosecute and/or maintain any part of the Licensed Patents in any Target Patent Country, Centry shall notify CPF in writing at least [***] ([***]) [***] notice prior to the expiration of any applicable time bars. During the aforementioned [***] ([***]) [***] notice period, Centry Monopar shall continue to prosecute retain the responsibility for the Prosecution, registration and maintain maintenance of the relevant Licensed Patents in questionPatent or Licensed Trademark. On the expiry of such notice period:
(a) the licence license granted pursuant to Clause 5.1 Section 3.1.1 shall terminate in respect of that country and that relevant Licensed Product for any relevant Licensed Patent or Licensed Trademark which is the Licensed Patents identified in subject of such a notice;
(b) Centry Monopar shall, at CPF’s Onxeo's request, promptly transfer to CPF Onxeo (or any person nominated by Onxeo) any and all documents and information in Centry’s Monopar's control relating to such relevant Licensed PatentsPatent or Licensed Trademark; and
(c) CPF Onxeo shall be free to prosecute Prosecute, register or abandon such relevant Licensed Patents Patent or Licensed Trademark at its sole discretion and to grant rights thereunder to any person Person without further reference to CentryMonopar, and Onxeo shall thereafter be responsible for the expense of filing, prosecuting, registering and maintaining the relevant Patents and Trademarks. [***] = Confidential Information has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted information.
11.8. Each Party will promptly notify the other Parties in writing as soon as it becomes aware of any infringement or suspected infringement by a Third Party of any of the Licensed Patents or any unauthorised use of the Licensed Know How or the Licensed Materials.
Appears in 1 contract
Intellectual Property Management. 11.1. 8.1 All Patent Costs incurred after the Effective Date shall be met solely by CentryProNAi.
11.2. 8.2 The ownership of the Licensed Intellectual Property shall, shall at all times, times remain vested solely in CRT, ICR and/or . CPF represents and warrants to ProNAi that as applicableof the Effective Date it does not own or controls any Patent (other than the Licensed Patents) which cover equivalent subject matter (concerning CHK1) to the Licensed Patents.
11.3. 8.3 Subject to Clauses 11.48.4, 11.58.5 and 8.6, 11.6 and 11.7 Centry ProNAi shall be responsible for have the right to control the filing, prosecuting, prosecuting and maintaining the Licensed Patents in CRT, ICR or CPF’s sole name and will use its Commercially Reasonable Efforts to maximise the duration and scope of the Licensed Patents thereof in the Target Patent Countries.. *Confidential Treatment Requested. EXECUTION VERSION CONFIDENTIAL
11.4. Notwithstanding anything to the contrary 8.4 ProNAi shall keep CPF reasonably informed in this Agreement, until Centry has satisfied the Financing Commitment CPF shall have the final decision making authority relating to advance of the filing and prosecution strategy for the Licensed Patents, as further set out in Clause 4.4.
11.5. Centry shall discuss the filing strategy for the Licensed Patents with CPF and shall take into consideration all comments received from CPF in respect of such strategythereof. If Centry ProNAi elects not to file a Patent application, in any Target Patent Country, Centry Country ProNAi shall promptly notify CPF of such decision and CPF shall have the right (but not the obligation) to file such an application and may transfer this right to CRT in its sole discretionapplication. If CPF elects to exercise such right by notice in writing to CentryProNAi, CPF shall thereafter be solely responsible for the expense of filing, prosecuting and maintaining the corresponding Patent, which shall be excluded from the definition of Licensed Patents and the license licence granted under Clause 53.1.
11.6. Centry 8.5 ProNAi shall keep CPF reasonably informed in writing as to the prosecution and/or maintenance status of the Licensed Patents and shall promptly provide CPF with a copy of all material submissions made to or material responses received from the relevant Patent offices and all correspondence to and responses received from the relevant Patent agent in relation to the Licensed Patents in each applicable country of the Territory. Centry ProNAi shall use Commercially Reasonable Efforts to notify CPF at least [***] three ([***]3) [***] months prior to any restriction of scope of any of the Licensed Patents.
11.7. 8.6 If Centry ProNAi elects not to prosecute and/or maintain any part of the Licensed Patents in any Target Patent Country, Centry ProNAi shall notify CPF in writing and shall use Commercially Reasonable Efforts to ensure that such notice is given at least [***] ([***]) [***] prior to the expiration of any applicable time bars. During the aforementioned [***] ([***]) [***] notice period, Centry ProNAi shall continue to prosecute and maintain the Licensed Patents in question. On the expiry of such notice period:
(a) 8.6.1 the licence granted pursuant to Clause 5.1 3.1 shall terminate in respect of the Licensed Patents identified in such notice;; and
(b) Centry 8.6.2 ProNAi shall, at CPF’s request, promptly transfer to CPF any and all documents and information in CentryProNAi’s control relating to such Licensed Patents; and
(c) 8.6.3 CPF shall be free have the right, but not the obligation, to prosecute (or abandon abandon) such Licensed Patents at its sole discretion and to grant rights thereunder to any person without further reference to Centry.ProNAi. *Confidential Treatment Requested. EXECUTION VERSION CONFIDENTIAL
11.8. 8.7 Each Party will promptly notify the other Parties in writing as soon as it becomes aware of any infringement or suspected infringement by a Third Party of any of the Licensed Patents or any unauthorised use of the Licensed Know How or the Licensed MaterialsMaterials in the Field (an “Infringement Action”).
8.8 Provided ProNAi has a licence under this Agreement in relation to the relevant Licensed Patent and country (and where local law permits), within such country ProNAi may at its sole discretion:
8.8.1 at its own cost and subject to Clause 8.9, bring proceedings in its own name (or authorize a Sub-Licensee to bring proceedings in its own name) or, if required by law (including as required for standing), jointly with CPF (and CRT and/or ICR, if required for standing), for any Infringement Action; and
8.8.2 in any such proceedings settle any Infringement Action, provided it obtains the prior written consent of CPF, where any such settlement would result in a restriction to the scope of such Licensed Patent.
(a) Any damages, profits, and awards of whatever nature recovered by ProNAi or any Sub-Licensee for any Infringement Action shall be treated as Net Sales subject to a deduction for external legal expenses of ProNAi and such Sub-Licensee insofar as these are not recovered from a Third Party, provided always, where damages are also awarded to CPF to the extent that this would otherwise result in a double receipt by CPF of royalties ProNAi shall be entitled to deduct any such duplicated payment from any royalties payable to CPF. In any such proceedings, CPF shall, at ProNAi’s cost, promptly provide ProNAi with all documents and assistance as ProNAi may reasonably require. ProNAi shall promptly provide CPF with notice of such proceedings and keep CPF regularly informed of progress and promptly provide CPF with such information as CPF may require including copies of all documents filed at court in the proceedings. If CPF (or CRT and/or ICR) is joined to proceedings pursuant to this Clause or otherwise, ProNAi shall indemnify and hold harmless the CPF Indemnified Parties and the inventors named in any Licensed Patents (the “CPF Indemnitees”) from and against any and all claims, demands, losses, causes of action, damages and expenses (including without limitation, legal fees) arising from or in connection with such proceedings. EXECUTION VERSION CONFIDENTIAL
(b) If ProNAi does not exercise its right to bring proceedings pursuant to Clause 8.8 within [*] of written request to bring proceedings from CPF, then CPF shall be entitled, but not obliged to bring such proceedings at its own cost. If necessary, including to recover damages, subject to ProNAi’s consent (such consent not to be unreasonably withheld or delayed it being agreed that the lack of indemnity protection for ProNAi would be reasonable grounds to refuse consent) CPF may require ProNAi to join in such proceedings. ProNAi shall have the right to join in any such proceedings commenced by CPF, subject to [*]. Any damages, profits, and awards of whatever nature recovered as a result of such a joint proceeding shall be [*] after deduction for external legal expenses of both Parties.
(c) In any proceedings in clauses (a) or (b), the Parties not bringing the proceedings (“Inactive Parties”) shall promptly provide the Party bringing proceedings (“Active Party”) with all documents and assistance as the Active Party may reasonably require and the Active Party shall promptly provide the Inactive Parties with notice of such proceedings.
8.10 The Parties shall, at the request of any of them and at the expense of the requesting Party but for no further consideration, enter into such confirmatory Patent licences relating to the Licensed Patents, substantially in the form set out in Schedule 10, as may be necessary or desirable in accordance with the relevant law and practice in each country in the Territory for Registration at the relevant Patent offices so that this Agreement need not be registered or recorded unless the Parties are required to do so by law. If there are any inconsistencies between the terms of any such confirmatory Patent licence and the provisions of this Agreement, this Agreement shall prevail.
8.11 With respect to each Licensed Product, ProNAi shall, at the time of receipt of the relevant Regulatory Approval, or such other time as appropriate, apply for a Supplementary Protection Certificate, Patent term extension and/or any other exclusivity in respect of such Licensed Product. Without limiting the foregoing, the selection of any patent to be subject to any patent term extension for any Licensed Product shall be made by ProNAi in its sole discretion. At ProNAi’s reasonable request and sole cost, CPF will provide reasonable assistance to ProNAi in connection with any such applications. *Confidential Treatment Requested. EXECUTION VERSION CONFIDENTIAL
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Sources: Licence Agreement