Licensed Patents. Licensor shall have the first right (but not the obligation) to enforce the Licensed IP in the Field (each, a “Competing Field Infringement”), and to defend against any declaratory judgment or post-grant action (or other challenge) with respect thereto, at its own expense and shall notify Licensee of such enforcement actions. If Licensor fails to bring or defend any such action against a Competing Field Infringement within: (i) […***…] ([…***…]) days following the notice of alleged Competing Field Infringement provided pursuant to the above; or (ii) […***…] ([…***…]) days before the time limit, if any, set forth in Applicable Laws for the filing of such actions, whichever is earlier, Licensee shall have the right to assume control of, or to bring and control, any such action at its own expense and by counsel of its own choice, and Licensor shall have the right, at its own expense, to be represented in any such action by counsel of its own choice (at Licensor’s expense) and Licensor hereby agrees to join any such action brought or controlled by Licensee (at Licensee’s expense) and waives any right to refuse to join such action. In no event shall either Party settle any such action, or make any admissions or assert any position in such action, in a manner that would (i) materially adversely affect the rights or interests of the other Party under this Agreement, (ii) admit any liability or wrongdoing on behalf of the other Party, (iii) impose any new obligations on the other Party, (iv) disclaim, limit the scope of, admit the invalidity or unenforceability of, or grant a license, covenant not to sue or similar immunity under, any Intellectual Property controlled or licensed by the other Party, or (v) limit the rights of the other Party under this Agreement, in each case ((i) through (iv)), without the prior written consent of such other Party.
Appears in 1 contract
Sources: Exclusive License Agreement (Seelos Therapeutics, Inc.)
Licensed Patents. Licensor shall have the first right (but not the obligationa) to enforce the Licensed IP in the Field (each, a “Competing Field Infringement”), and to defend against any declaratory judgment or post-grant action (or other challenge) with respect theretoVivelix will be responsible, at its own expense cost and shall notify Licensee of such enforcement actions. If Licensor fails to bring or defend any such action
against a Competing Field Infringement within: (i) […***…] ([…***…]) days following the notice of alleged Competing Field Infringement provided pursuant to the above; or (ii) […***…] ([…***…]) days before the time limitexpense, if any, set forth in Applicable Laws for the filing preparation, filing, prosecution (including any interferences, reissue proceedings, cancellations, oppositions, inter partes review, post grant review, patent term extension applications, reexaminations, and other similar proceedings) and maintenance of such actions, whichever is earlier, Licensee those Licensed Patents on Section (a) of Exhibit D and any Patent Rights that claim priority to any of the patents and patent applications described in Section (a) of Exhibit D. Idera shall have the right execute and deliver to assume control ofVivelix, or to bring and controlVivelix’s designee, any documents reasonably requested by Vivelix to authorize Vivelix to perform such action at its own expense and by counsel of its own choice, and Licensor shall have the rightactivities.
(b) Idera will be responsible, at its own cost and expense, to be represented in for the preparation, filing, prosecution (including any such action by counsel of its own choice (at Licensor’s expenseinterferences, reissue proceedings, cancellations, oppositions and reexaminations) and Licensor hereby agrees maintenance of Licensed Patents other than those subject to join any such action brought Section 6.3.1(a).
(c) The Party having responsibility under Section 6.3.1(a), 6.3.1(b) or controlled by Licensee 6.3.1
(at Licensee’s expensed) shall be referred to as the “Filing Party,” and waives any right to refuse to join such action. In no event shall either Party settle any such action, or make any admissions or assert any position in such action, in a manner that would (i) materially adversely affect the rights or interests of the other Party under this Agreementshall be referred to as the “Non-Filing Party.” The Filing Party will reasonably consult with the Non-Filing Party, (ii) admit and will consider in good faith any liability or wrongdoing on behalf comments of the other PartyNon-Filing Party with respect to the preparation, (iiifiling, prosecution and maintenance of the Licensed Patents for which the Filing Party exercises its responsibility under Section 6.3.1(a), 6.3.1(b) impose or 6.3.1(d), as applicable. The Filing Party will provide to the Non-Filing Party copies of any new obligations on papers relating to the other Partyfiling, (iv) disclaimprosecution or maintenance of the Licensed Patents promptly upon their being filed or received, limit the scope of, admit the invalidity or unenforceability of, or grant a license, covenant not and will provide drafts of documents to sue or similar immunity under, any Intellectual Property controlled or licensed by the other Party, or (v) limit the rights be filed sufficiently in advance of their filing dates so as to provide the other Party under this Agreementwith sufficient time to review and comment thereon prior to filing. In the case of Vivelix as the Filing Party, Vivelix shall not knowingly take any action during prosecution and maintenance of the Licensed Patents subject to Section 6.3.1(a) or 6.3.1(d) that would result in each case ((i) through (iv))any reduction in the scope of one or more independent claims of such Licensed Patents, without the prior written consent of Idera, which consent will not be unreasonably withheld, delayed or conditioned. In the case of Idera as the Filing Party, Idera will not knowingly take any action during prosecution and maintenance of the Licensed Patents subject to Section 6.3.1(b) that would result in any reduction in the scope of one or more independent claims of such other PartyLicensed Patents, without the prior written consent of Vivelix, which consent will not be unreasonably withheld, delayed or conditioned.
Appears in 1 contract
Licensed Patents. Licensor (i) Spruce shall have the first right (right, but not the obligation) , to bring an appropriate suit or other action against any Person engaged in the Infringement of any Licensed Patent in the Spruce Territory, at Spruce’s cost and expense. If Spruce elects to commence a suit or other action to enforce the applicable Licensed IP Patent against such Infringement in the Field (eachSpruce Territory, a “Competing Field Infringement”), and to defend against any declaratory judgment or post-grant action (or other challenge) with respect thereto, at its own expense and shall notify Licensee of such enforcement actions. If Licensor fails to bring or defend any such action
against a Competing Field Infringement within: (i) […***…] ([…***…]) days following the notice of alleged Competing Field Infringement provided pursuant to the above; or (ii) […***…] ([…***…]) days before the time limit, if any, set forth in Applicable Laws for the filing of such actions, whichever is earlier, Licensee then HBM Alpha shall have the right to assume control of, or to bring and control, any join such enforcement action at its own cost and expense and by counsel upon written notice to Spruce. If Spruce notifies HBM Alpha in writing that it does not intend to commence a suit or other action to enforce the applicable Licensed Patent against such Infringement or to take other action to secure the abatement of its own choicesuch Infringement, and Licensor or fails to take any such action after a period of [***] following either Party’s receipt of the notice of Infringement pursuant to Section 9.4.1 (or, if shorter, at least [***] prior to the deadline for initiating such action), then, HBM Alpha shall have the right, at its own expensebut not the obligation, to be represented in any commence such action by counsel of its own choice (at Licensor’s expense) and Licensor hereby agrees to join any such action brought a suit or controlled by Licensee (at Licensee’s expense) and waives any right to refuse to join take such action, at HBM Alpha’s cost and expense. In no event such case, Spruce shall either take appropriate actions in order to enable HBM Alpha to commence a suit or take the actions set forth in the preceding sentence. [***]. HBM Alpha shall have the sole right, but not the obligation, to bring an appropriate suit or other action against any Person engaged in (A) the Infringement of any Licensed Patent in the HBM Alpha Territory and (B) the infringement (other than an Infringement) of any Licensed Patent, at HBM Alpha’s cost and expense.
(ii) Neither Party shall settle any such action, suit or make action under Section 9.4.2(a)(i) in any admissions or assert any position in such action, in a manner that would (i) materially adversely affect the rights or interests of the other Party under this Agreement, (ii) admit any liability or wrongdoing on behalf of the other Party, (iii) impose any new obligations on the other Party, (iv) disclaim, limit the scope of, admit admitting the invalidity or unenforceability of, or grant a licenseotherwise negatively impact the Licensed Patents or that would limit or that would limit or restrict the ability of HBM Alpha or Spruce to sell the Licensed Products in the HBM Alpha Territory or Spruce Territory, covenant not to sue or similar immunity under, any Intellectual Property controlled or licensed by the other Party, or (v) limit the rights of the other Party under this Agreement, in each case ((i) through (iv))respectively, without the prior written consent of such the other Party.
Appears in 1 contract
Sources: Collaboration and License Agreement (Spruce Biosciences, Inc.)
Licensed Patents. (i) The Parties shall give notice to each other of any (a) infringement of Licensed Patents by a Third Party (including any certification regarding the Licensed Patents pursuant to 21 U.S.C. §§355(b)(2)(A)(iv) or (j)(2)(A)(vii)(IV), or its successor provisions or any similar provisions in a country in the Territory other than the United States), or (b) assertion by a Third Party that any Licensed Patent is invalid or unenforceable. Subject to Sections 3.2.1(ii) and 3.2.1(iii), Licensee and Licensor shall thereafter consult and reasonably cooperate to determine a course of action, including the commencement of legal action by either or both Licensee and Licensor to terminate any infringement of Licensed Patents or defend the claim of invalidity or unenforceability.
(ii) Licensor (or its designee), upon notice to Licensee, shall [* * *] initiate and prosecute such legal action [* * *]. Licensee shall reasonably cooperate with Licensor in connection therewith, including joining the action to the extent necessary.
(iii) If the infringement by a Third Party is in the Field, then Licensor shall inform Licensee if [* * *] Licensee shall thereafter have the first right (but not the obligation) to enforce the Licensed IP in the Field (each, a “Competing Field Infringement”), to either initiate and prosecute such action against the Third Party or to defend against any control the defense of such declaratory judgment or post-grant action (or other challenge) with respect thereto, at its own expense and shall notify in the name of Licensee of such enforcement actions. If Licensor fails to bring or defend any such action
against a Competing Field Infringement within: (i) […***…] ([…***…]) days following the notice of alleged Competing Field Infringement provided pursuant to the above; or (ii) […***…] ([…***…]) days before the time limitand, if anynecessary, set forth Licensor, in Applicable Laws for each case, as reasonably agreed to by the filing of such actions, whichever is earlier, Licensee Parties; [* * *]. Each Party shall have the right to assume control of, or to bring and control, any such action at its own expense and by counsel of its own choice, and Licensor shall have the right, at its own expense, to be represented in any such action by counsel of its own choice and at its own expense. [* * *]=[CONFIDENTIAL PORTION HAS BEEN OMITTED BECAUSE IT (at Licensor’s expenseI) IS NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED.]
(iv) For any action to terminate any infringement of Licensed Patents in the Field, in the event that a Party is unable to initiate or prosecute such action solely in its own name, the other Party will join such action voluntarily and Licensor hereby agrees will execute and cause its Affiliates to join execute all documents necessary for the Party to initiate litigation to prosecute and maintain such action under this Section 3.2.1. In connection with any such action brought or controlled by potential action, Licensee (at Licensee’s expense) and waives Licensor will reasonably cooperate and will provide each other with any right to refuse to join such actionrelevant information that either may reasonably request. In no event Each Party shall either Party settle keep the other informed of developments in any such action, action or make any admissions or assert any position in such action, in a manner that would (i) materially adversely affect the rights or interests of the other Party under this Agreement, (ii) admit any liability or wrongdoing on behalf of the other Party, (iii) impose any new obligations on the other Party, (iv) disclaim, limit the scope of, admit the invalidity or unenforceability of, or grant a license, covenant not to sue or similar immunity under, any Intellectual Property controlled or licensed by the other Party, or proceeding.
(v) limit the rights Any recovery obtained by either or both Licensee and Licensor in connection with or as a result of the other Party under any action contemplated by this AgreementSection 3.2.1, whether by settlement or otherwise, shall be shared in each case ((i) through (iv)), without the prior written consent of such other Partyorder as follows:
i. [* * *];
ii. [* * *]; and
iii. [* * *].
Appears in 1 contract
Sources: Specified Technology License Agreement (Organon & Co.)
Licensed Patents. Licensor shall have the first right (but not the obligation) to enforce the Licensed IP in the Field (each, a “Competing Field Infringement”), and to defend against any declaratory judgment or post-grant action (or other challenge) with respect thereto, at its own expense and shall notify Licensee of such enforcement actions. If Licensor fails to bring or defend any such action
against a Competing Field Infringement within: (i) […***…] The Parties shall give notice to each other of any ([…***…]a) days following infringement of Licensed Patents by a Third Party in the notice of alleged Competing Expanded Field Infringement provided (including any certification regarding the Licensed Patents pursuant to 21 U.S.C. §§355(b)(2)(A)(iv) or (j)(2)(A)(vii)(IV), or its successor provisions or any similar provisions in a country in the above; Territory other than the United States), or (b) assertion by a Third Party that any Licensed Patent is invalid or unenforceable. Subject to Sections 4.2.1(ii) and 4.2.1(iii), Licensee and Licensor shall thereafter consult and reasonably cooperate to determine a course of action, including the commencement of legal action by either or both Licensee and Licensor to terminate any infringement of Licensed Patents or defend the claim of invalidity or unenforceability.
(ii) Licensor (or its designee), upon notice to Licensee, shall […* * *] initiate and prosecute such legal [* * *]. Licensee shall reasonably cooperate with Licensor in connection therewith, including joining the action to the extent necessary.
(iii) Licensor shall inform Licensee if [* * *…] ]; and Licensee shall thereafter have the right in the Expanded Field to either ([…***…]c) days before initiate and prosecute such action against the time limitThird Party if the infringement by the Third Party is in the Expanded Field or (d) control the defense of such declaratory judgment action in the name of Licensee and, if anynecessary, set forth Licensor, in Applicable Laws for each case, as reasonably agreed to by the filing of such actions, whichever is earlier, Licensee Parties; [* * *]. Each Party shall have the right to assume control of, or to bring and control, any such action at its own expense and by counsel of its own choice, and Licensor shall have the right, at its own expense, to be represented in any such action by counsel of its own choice and at its own expense.
(at Licensor’s expenseiv) For any action to terminate any infringement of Licensed Patents in the Expanded Field, in the event that a Party is unable to initiate or prosecute such action solely in its own name, the other Party will join such action voluntarily and Licensor hereby agrees will execute and cause its Affiliates to join execute all documents necessary for the Party to initiate litigation to prosecute and maintain such action [* * *]=[CONFIDENTIAL PORTION HAS BEEN OMITTED BECAUSE IT (I) IS NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED.] under this Section 4.2.1. In connection with any such action brought or controlled by potential action, Licensee (at Licensee’s expense) and waives Licensor will reasonably cooperate and will provide each other with any right to refuse to join such actionrelevant information that either may reasonably request. In no event Each Party shall either Party settle keep the other informed of developments in any such action, action or make any admissions or assert any position in such action, in a manner that would (i) materially adversely affect the rights or interests of the other Party under this Agreement, (ii) admit any liability or wrongdoing on behalf of the other Party, (iii) impose any new obligations on the other Party, (iv) disclaim, limit the scope of, admit the invalidity or unenforceability of, or grant a license, covenant not to sue or similar immunity under, any Intellectual Property controlled or licensed by the other Party, or proceeding.
(v) limit the rights Any recovery obtained by either or both Licensee and Licensor in connection with or as a result of the other Party under any action contemplated by this AgreementSection 4.2.1, whether by settlement or otherwise, shall be shared in each case ((i) through (iv)), without the prior written consent of such other Party.order as follows: [* * *]
Appears in 1 contract
Licensed Patents. Licensor LICENSEE shall have the first right (right, but not the obligation) , to enforce initiate an appropriate suit anywhere in the world against any Third Party who at any time is suspected of infringing all or any portion of the Licensed IP in Patents or using without proper authorization all or any portion of the Licensed Know-How (each an “Infringement”) within the Field (each, a “Competing Field Infringement”)and within the Territory, and to defend against shall control any declaratory judgment or post-grant such action (or other challenge) with respect thereto, at its own expense and for which it exercises such right. LICENSEE shall notify Licensee LICENSOR in writing of such enforcement actionsits initiation of an Infringement action. If Licensor fails to bring or defend any such action
against a Competing Field Infringement within: (i) […***…] ([…***…]) days following the notice of alleged Competing Field Infringement provided pursuant to the above; or (ii) […***…] ([…***…]) days before the time limit, if any, set forth in Applicable Laws for the filing of such actions, whichever is earlier, Licensee LICENSOR shall have the right to assume control of, or to bring and control, any participate in such action at its own expense and to be represented in such action by counsel of its own choice, at LICENSOR’s expense. If LICENSEE fails to institute and Licensor prosecute an action or proceeding to ▇▇▇▇▇ the Infringement within a period of [**] days after receiving written notice or otherwise having Knowledge of the Infringement, then LICENSOR shall have the right, at its own expensebut not the obligation, to bring and prosecute any such action; provided, however, that in such event the LICENSOR shall have the right to participate in such action and to be represented in any such action by counsel of its own choice (at Licensor’s expense) and Licensor hereby choice. If necessary, in any action brought pursuant to this Section 5.3, the Party not controlling such action agrees to join be joined as a party plaintiff and to give reasonable assistance and any such action brought or controlled by Licensee (at Licensee’s expense) needed authority to control, file and waives any right to refuse to join prosecute such action. In no event Neither Party may enter into any settlement under this Section 5.3(a) that affects adversely the other Party’s rights or interests without such other Party’s written consent, which consent shall either not be unreasonably withheld. If the Parties obtain any damages, license fees, royalties or other compensation (including any amount received in settlement of such litigation) from a Third Party settle any in connection with a suit relating to the Infringement, such action, or make any admissions or assert any position in such action, in a manner that would amounts shall be allocated as follows:
(i) materially adversely affect the rights or interests first, in all cases, to reimburse each Party for all reasonable expenses of the suit, including reasonable attorneys’ fees and disbursements, court costs and other Party under this Agreement, litigation expenses;
(ii) admit second, to LICENSEE for any liability or wrongdoing amounts recovered for lost sales of Licensed Product as if it were Net Sales of LICENSEE, with LICENSOR receiving a royalty on behalf such remaining amount pursuant to the terms of Section 3.3 (after adding such amount to aggregate Net Sales for purposes of determining the other Partyapplicable royalty rate), and the balance being retained by LICENSEE; and
(iii) impose any new obligations on the other Party, (iv) disclaim, limit the scope of, admit the invalidity or unenforceability of, or grant a license, covenant not to sue or similar immunity underthird, any Intellectual Property controlled amounts remaining shall be allocated as follows: (A) if LICENSOR is the Party bringing such suit or licensed by the other Party, proceeding or (v) limit the rights of the other Party under this Agreement, in each case ((i) through (iv)), without the prior written consent of taking such other legal action, [**] percent ([**]%) to LICENSOR, and [**] percent ([**]%) to LICENSEE; (B) if LICENSEE is the Party bringing such suit or proceeding or taking such other legal action, [**] percent ([**]%) to LICENSEE, and [**] percent ([**]%) to LICENSOR, and (C) if the suit is brought jointly, [**] percent ([**]%) to each Party.
Appears in 1 contract
Licensed Patents. Licensor (i) Subject to this Section 9.4(b), Neos shall have the first right (right, as between NeuRx and Neos, but not the obligation) , to enforce the Licensed IP in the Field (eachbring an appropriate suit or take other action against any person or entity engaged in, or to defend against, a “Competing Field Infringement”), and to defend against Product Infringement of any declaratory judgment Licensed Patents or post-grant action (or other challenge) with respect theretoany Joint Patents, at its own expense and shall notify Licensee by counsel of its own choice. NeuRx may, at its own expense, be represented in any such enforcement actionsaction by counsel of its own choice. If Licensor fails Neos decides not to enforce the Licensed Patents or Joint Patents against such Product Infringement or does not bring such legal action or defend any otherwise take commercially reasonable action to ▇▇▇▇▇ such action
against a Competing Field Product Infringement withinbefore the earlier of: (iA) […***…] one hundred eighty ([…***…]180) days following the notice of alleged Competing Field Infringement provided pursuant to the above; infringement or declaratory judgment or (iiB) […***…] ten ([…***…]10) days Business Days before the time limit, if any, set forth in under Applicable Laws Law for the filing of such actions, whichever is earliercomes first, Licensee NeuRx shall have the right to assume control ofright, or but not the obligation, to bring and control, control any such action at its own expense and by counsel of its own choice, and Licensor shall have the rightNeos may, at its own expense, to be represented in any such action by counsel of its own choice (at Licensor’s expense) and Licensor hereby agrees to join any such action brought or controlled by Licensee (at Licensee’s expense) and waives any right to refuse to join such action. In no event shall either Party settle any such action, or make any admissions or assert any position in such action, in a manner that would (i) materially adversely affect the rights or interests of the other Party under this Agreement, choice.
(ii) admit any liability or wrongdoing on behalf Except as otherwise agreed by the Parties as part of the other Party, (iii) impose any new obligations on the other Party, (iv) disclaim, limit the scope of, admit the invalidity or unenforceability of, or grant a license, covenant not to sue or similar immunity undercost-sharing arrangement, any Intellectual Property controlled recovery or licensed damages realized as a result of such action or proceeding with respect to Licensed Patents or Joint Patents shall be used first to reimburse the Parties’ documented out-of-pocket legal expenses relating to the action or proceeding, and any remaining recovery relating to Licensed Products (including lost sales or lost profits with respect to Licensed Products) shall be retained by the other PartyParty that brought and controlled such action or proceeding, and in the case that Neos brought and controlled such action or (v) limit proceeding, such remaining recovery shall be deemed to be Net Sales subject to royalty payments to NeuRx in accordance with the rights royalty provisions of the other Party under this Agreement, in each case ((i) through (iv)), without the prior written consent of such other PartySection 8.3.
Appears in 1 contract
Sources: Exclusive License Agreement (Neos Therapeutics, Inc.)