Common use of Patent Litigation Clause in Contracts

Patent Litigation. 12.1 In the event of the institution of any suit by a Third Party against HMR, Matrix and/or its Sublicensee for patent infringement involving the manufacture, use, sale, distribution or marketing of Compound or Product anywhere in the Territory, the party sued shall promptly notify the other party in writing. Matrix shall have the right but not the obligation to defend such suit at its own expense. HMR and Matrix shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party. 12.2 In the event that HMR or Matrix becomes aware of actual or threatened infringement of a Patent related to Compound or Product, anywhere in the Territory, or any alleged patent invalidity or non-infringement of patent or patents pursuant to a paragraph IV patent certification by a party filing an Abbreviated New Drug Application ("ANDA"), that party shall promptly notify the other party in writing, but in any event no later than ten (10) business days after receipt of notice of such action. HMR shall have the first right but not the obligation to bring, at its own expense, an infringement action or file any other appropriate action or claim directly, related to infringement of a Patent owned in whole or in part by HMR, wherein such infringement relates to Compound or Product, against any Third Party and to use Matrix's name in connection therewith. If HMR does not commence a particular infringement action within ninety (90) days after it received such written notice, Matrix, after notifying HMR in writing, shall be entitled to bring such infringement action or any other appropriate action or claim at its own expense. The party conducting such action shall have full control over its conduct, including settlement thereof. In any event, HMR and Matrix shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party. 12.3 HMR and Matrix shall recover their respective actual out-of-pocket expenses, or equitable proportions thereof, associated with any litigation or settlement thereof from any recovery made by any party. Any excess amount shall be shared between Matrix and HMR, with each party receiving an amount proportional to the amount spent by such party on such litigation or settlement thereof relative to the total amount spent by both Parties on such litigation or settlement thereof. 12.4 The Parties shall keep one another informed of the status of and of their respective activities regarding any litigation or settlement thereof concerning Compound or Product. 12.5 HMR shall authorize Matrix to act as HMR's agent for the purpose of making any application for any extensions of the term of Patents or application for Supplementary Protection Certificate or any other application for equivalent right of which HMR is entitled to act as such an agent in any country of the Territory in which such extensions are or become available, and shall provide reasonable assistance therefor to Matrix, at HMR's expense. 12.6 Each party shall provide prompt notice to the other of any inquiries as to any Patent which have claims to manufacturing processes, which inquiries are provided pursuant to 35 USC ss. 271(g), and shall cooperate with respect to responses thereto. 12.7 Each party shall provide (i) notice of patents relevant to a US NDA, prior to the time the NDA is filed, and (ii) immediate notice of the issuance of any other patents relevant to a US NDA and the parties shall jointly decide within thirty (30) days of the patent issue date, if the patent is to be listed pursuant to any Drug Approval Application (particularly in Canada) and any pending or approved Health Registration or NDA in the United States for Product.

Patent Litigation. 12.1 5.1.1. In the event of the institution of any suit by a Third Party third party against HMR, Matrix and/or its Sublicensee for patent infringement involving SBio or Perk▇▇-▇▇▇▇▇ ▇▇▇eging that the manufacture, use, sale, distribution or marketing of Compound or Product anywhere in the TerritoryLicensed Product(s) infringes a third party patent, the party Party sued shall will promptly notify the other party Party in writing. Matrix shall The other Party will have the right but not the obligation to defend or participate in the defense of such suit at its own expense. HMR SBio and Matrix shall Perk▇▇-▇▇▇▇▇ ▇▇▇l assist one another and cooperate in any such litigation at the other's reasonable request without expense to the requesting partyParty. The Party conducting such action will have full control over its conduct, including settlement thereof provided such settlement will not be made without the prior written consent of the other Party if it would adversely affect the rights of the other Party, such consent not to be unreasonably withheld or delayed. 12.2 5.5.2. In the event that HMR SBio or Matrix becomes Perk▇▇-▇▇▇▇▇ ▇▇▇omes aware of actual or threatened infringement of a Patent related to Compound or Productpatent resulting from Collaboration SBio Intellectual Property, anywhere in the TerritoryCollaboration Perk▇▇-▇▇▇▇▇ ▇▇▇ellectual Property, or any alleged patent invalidity or non-infringement of patent or patents pursuant to a paragraph IV patent certification by a party filing an Abbreviated New Drug Application ("ANDA")Collaboration Joint Intellectual Property, that party shall Party will promptly notify the other party Party in writing, but in any event no later than ten (10) business days after receipt . Either owner of notice of a patent resulting from such action. HMR shall intellectual property will have the first right but not the obligation to bring, at its own expense, an infringement action or file any other appropriate action or claim directly, related to infringement of a Patent owned in whole or in part by HMR, wherein such infringement relates to Compound or Product, against any Third Party third party and to use Matrixthe other Party's name in connection therewith. If HMR an owner of the patent does not commence a particular infringement action within ninety (90) days after it received such written noticedays, Matrixthe other Party, after notifying HMR the owner in writing, shall will be entitled to bring such infringement action or any other appropriate action or claim at its own expense. The party Party conducting such action shall will have full control over its conduct, including settlement thereofthereof provided such settlement will not be made without the prior written consent of the other Party if it would adversely affect the rights of the other Party, such consent not to be unreasonably withheld or delayed. In any event, HMR SBio and Matrix shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party[*] 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. 12.3 HMR and Matrix shall recover their respective actual out-of-pocket expenses, or equitable proportions thereof, associated with any litigation or settlement thereof from any recovery made by any party. Any excess amount shall be shared between Matrix and HMR, with each party receiving an amount proportional to the amount spent by such party on such litigation or settlement thereof relative to the total amount spent by both Parties on such litigation or settlement thereof. 12.4 The Parties shall keep one another informed of the status of and of their respective activities regarding any litigation or settlement thereof concerning Compound or Product. 12.5 HMR shall authorize Matrix to act as HMR's agent for the purpose of making any application for any extensions of the term of Patents or application for Supplementary Protection Certificate or any other application for equivalent right of which HMR is entitled to act as such an agent in any country of the Territory in which such extensions are or become available, and shall provide reasonable assistance therefor to Matrix, at HMR's expense. 12.6 Each party shall provide prompt notice to the other of any inquiries as to any Patent which have claims to manufacturing processes, which inquiries are provided pursuant to 35 USC ss. 271(g), and shall cooperate with respect to responses thereto. 12.7 Each party shall provide (i) notice of patents relevant to a US NDA, prior to the time the NDA is filed, and (ii) immediate notice of the issuance of any other patents relevant to a US NDA and the parties shall jointly decide within thirty (30) days of the patent issue date, if the patent is to be listed pursuant to any Drug Approval Application (particularly in Canada) and any pending or approved Health Registration or NDA in the United States for Product.