Patent Matters. (a) RTI shall be responsible for payment of maintenance fees for US Patent [*] that become due after the Effective Date. (b) If either party learns of any actual or threatened infringement or misappropriation or any attack on the validity or enforceability by a third party with respect to Licensor Patent Rights and the Licensor Intellectual Property in the Field, such party shall promptly notify the other party and shall provide such other party with available evidence of such events. (c) RTI shall have the first option to pursue any enforcement or defense of Licensor Patent Rights and the Licensor Intellectual Property against infringement or misappropriation, including defense against a declaratory judgment action alleging invalidity or non-infringement of any of the Licensor Patent Rights and the Licensor Intellectual Property in the Field; provided, that RTI pays all costs and expenses related to the same, keeps Licensor reasonably informed of its progress and provides Licensor with copies of any substantive documents related to such proceedings and reasonable notice of all such proceedings. RTI shall notify Licensor of its decision to exercise its right to enforce or defend Licensor Patent Rights or Licensor Intellectual Property not later than [*] following its discovery or receipt of notice of the alleged infringement or misappropriation. (d) If (i) RTI notifies Licensor that it will not enforce Licensor Patent Rights and the Licensor Intellectual Property in accordance with Section 1.2(c); (ii) RTI has exhausted all legal appeals with respect to causing the alleged infringement or misappropriation to cease or causing the person alleging the infringement or misappropriation to forebear, (iii) RTI fails to bring an infringement or misappropriation action within [*] following its discovery or receipt of notice of the alleged infringement or misappropriation or (iv) RTI is not diligently pursuing an infringement or misappropriation action or diligently defending the validity or enforceability of Licensor Patent Rights and the Licensor Intellectual Property at issue, then Licensor shall have the right to pursue the alleged infringer or party responsible for the alleged misappropriation or take control of any action initiated by, or being defended by, RTI at Licensor’s own expense. Notwithstanding the foregoing, if RTI has not initiated an infringement or misappropriation action as described under (iii) above, or ceased to pursue such action, on the advice of outside patent counsel, then Licensor agrees not to initiate such an action without RTI’s prior consent not to be unreasonably withheld or delayed (with the determination of reasonableness taking into account the costs of such litigation, its likelihood for success, the potential damages or settlement recovery, and the potential for exposure to counterclaims and defenses against RTI with respect to any RTI Patent Rights with respect to the applicable Licensed Product). In any such case, RTI will, wherever possible under applicable law, substitute Licensor as party plaintiff for purposes of pursuing any alleged infringer or party responsible for the alleged misappropriation, or as defendant for defending any Licensor Patent Rights or Licensor Intellectual Property. (e) Any recovery of damages or other sums recovered in a proceeding or action with regard to Licensor Patent Rights and the Licensor Intellectual Property Rights handled by a party pursuant to Section 1.2(c) or
Appears in 2 contracts
Sources: Technology Transfer Agreement (Realm Therapeutics PLC), Technology Transfer Agreement (Realm Therapeutics PLC)
Patent Matters. (a) RTI Sellers shall be responsible for payment of maintenance fees for US use their reasonable efforts to satisfy the Patent [*] Condition prior to Closing, including but not limited to providing Buyer with instruments and documents that become due will allow Sellers (or Buyer, as its successor in interest) to successfully withstand the Reexamination. From and after the Effective Datedate hereof until the Closing, Sellers shall use their reasonable efforts to take all actions and to do all things necessary, proper, or advisable in order to defend all lawsuits or other legal, regulatory or other proceedings to which either Seller is a party challenging or affecting the validity or enforceability of Sellers’ Registered Intellectual Property Rights and shall cooperate with Buyer following the Closing in Buyer’s efforts in doing the same.
(b) If For the purposes of this Agreement, the “Patent Condition” shall be deemed to have been satisfied by Sellers if, prior to the Closing, Sellers have provided Buyers with (1) a letter from the PTO informing Sellers that it has elected to not pursue further the Reexamination regarding the Invention Patent or (2) appropriate affidavits sworn by either party learns of any actual or threatened infringement or misappropriation or any attack on the validity or enforceability by a third party with respect to Licensor Patent Rights and the Licensor Intellectual Property Inventors identified in the FieldInvention Patent or, such party shall promptly notify to the extent allowed by the PTO, by Sellers, in either case supported by documentary or other party and shall provide such other party evidence that Buyer has determined in its sole but reasonable discretion is sufficient to demonstrate with available evidence of such events.
(c) RTI shall have reasonable certainty that the first option Invention was conceived by the inventors set forth in the Invention Patent prior to pursue any enforcement or defense of Licensor Patent Rights and the Licensor Intellectual Property against infringement or misappropriation, including defense against a declaratory judgment action alleging invalidity or non-infringement of any effective date of the Licensor Patent Rights and the Licensor Intellectual Property reference cited in the Field; providedOther Claim. To be useful in satisfying the Patent Condition, that RTI pays all costs the technical disclosure contained in any such evidence must make the showing of facts, in character and expenses related weight, to establish reduction to practice of the Invention as claimed in the Invention Patent prior to the same, keeps Licensor reasonably informed of its progress and provides Licensor with copies of any substantive documents related to such proceedings and reasonable notice of all such proceedings. RTI shall notify Licensor of its decision to exercise its right to enforce or defend Licensor Patent Rights or Licensor Intellectual Property not later than [*] following its discovery or receipt of notice effective date of the alleged infringement reference cited in the Other Claim, or misappropriation.
(d) If (i) RTI notifies Licensor that it will not enforce Licensor Patent Rights and the Licensor Intellectual Property in accordance with Section 1.2(c); (ii) RTI has exhausted all legal appeals with respect to causing the alleged infringement or misappropriation to cease or causing the person alleging the infringement or misappropriation to forebear, (iii) RTI fails to bring an infringement or misappropriation action within [*] following its discovery or receipt of notice conception of the alleged infringement Invention as claimed in the Invention Patent prior to the effective date of the reference cited in the Other Claim coupled with due diligence from prior to said date to a subsequent reduction to practice or misappropriation or (iv) RTI is not diligently pursuing an infringement or misappropriation action or diligently defending to the validity or enforceability filing of Licensor Patent Rights and the Licensor Intellectual Property at issue, then Licensor shall have the right to pursue the alleged infringer or party responsible application for the alleged misappropriation Invention Patent. The documentary or take control of any action initiated byother evidence provided by the Sellers may include, or being defended bywithout limitation: (a) inventor notebooks, RTI at Licensor’s own expense. Notwithstanding the foregoing, if RTI has not initiated an infringement or misappropriation action as described under (iii) above, or ceased to pursue such action, on the advice of outside patent counsel, then Licensor agrees not to initiate such an action without RTI’s prior consent not to be unreasonably withheld or delayed (with the determination of reasonableness taking into account the costs of such litigation, its likelihood for success, the potential damages or settlement recoverynotes, and other electronic records maintained by the potential for exposure to counterclaims and defenses against RTI with respect to any RTI Patent Rights inventors with respect to the applicable Licensed Product). In any such caseInvention (b) internal discussions (e-mails, RTI willmemos, wherever possible under applicable lawetc.) regarding the Invention, substitute Licensor as party plaintiff for purposes (c) drafts of pursuing any alleged infringer patent applications with respect to the Invention or party responsible for the alleged misappropriationInvention Patent, (d) interview of a patent attorney (or as defendant for defending any Licensor Patent Rights a colleague or Licensor Intellectual Property.
team member) regarding the Invention, (e) Any recovery any contemporaneous disclosures to a patent attorney or company’s legal department, (f) any drafts of damages presentations or articles for conferences, lectures, trade-shows or other sums recovered internal peer-review, (g) any disclosure materials given to investors, third-party collaborators, partners, manufacturers regarding the Invention, (h) any ▇▇▇▇-of-materials for prototype, manufacture, design of the Invention, (i) any internal funding or project proposals with respect to the Invention, (j) any milestones or project-progress reports with respect to the Invention and (k) minutes from team meetings (during relevant time period) discussing the Invention; provided, however, that the provision of any document or any other evidence shall not be deemed to have satisfied the Patent Condition unless and until Buyer has determined in a proceeding or action with regard to Licensor its sole but reasonable discretion that the Patent Rights and the Licensor Intellectual Property Rights handled by a party pursuant to Section 1.2(c) orCondition has been satisfied.
Appears in 2 contracts
Sources: Asset Purchase Agreement (Clarient, Inc), Asset Purchase Agreement (Trestle Holdings Inc)
Patent Matters. (a) RTI shall be responsible for payment of maintenance fees for US Patent [*] that become due after the Effective Date.
(b) If either party learns of any actual or threatened infringement or misappropriation or any attack on the validity or enforceability by a third party with respect to Licensor Patent Rights and the Licensor Intellectual Property in the Field, such party shall promptly notify the other party and shall provide such other party with available evidence of such events.
(c) RTI shall have the first option to pursue any enforcement or defense of Licensor Patent Rights and the Licensor Intellectual Property against infringement or misappropriation, including defense against a declaratory judgment action alleging invalidity or non-infringement of any of the Licensor Patent Rights and the Licensor Intellectual Property in the Field; provided, that RTI pays all costs and expenses related to the same, keeps Licensor reasonably informed of its progress and provides Licensor with copies of any substantive documents related to such proceedings and reasonable notice of all such proceedings. RTI shall notify Licensor of its decision to exercise its right to enforce or defend Licensor Patent Rights or Licensor Intellectual Property not later than [*] following its discovery or receipt of notice of the alleged infringement or misappropriation.
(d) If (i) RTI notifies Licensor that it will not enforce Licensor Patent Rights and the Licensor Intellectual Property in accordance with Section 1.2(c); (ii) RTI has exhausted all legal appeals with respect to causing the alleged infringement or misappropriation to cease or causing the person alleging the infringement or misappropriation to forebear, (iii) RTI fails to bring an infringement or misappropriation action within [*] following its discovery or receipt of notice of the alleged infringement or misappropriation or (iv) RTI is not diligently pursuing an infringement or misappropriation action or diligently defending the validity or enforceability of Licensor Patent Rights and the Licensor Intellectual Property at issue, then Licensor shall have the right to pursue the alleged infringer or party responsible for the alleged misappropriation or take control of any action initiated by, or being defended by, RTI at Licensor’s own expense. Notwithstanding the foregoing, if RTI has not initiated an infringement or misappropriation action as described under (iii) above, or ceased to pursue such action, on the advice of outside patent counsel, then Licensor agrees not to initiate such an action without RTI’s prior consent not to be unreasonably withheld or delayed (with the determination of reasonableness taking into account the costs of such litigation, its likelihood for success, the potential damages or settlement recovery, and the potential for exposure to counterclaims and defenses against RTI with respect to any RTI Patent Rights with respect to the applicable Licensed Product). In any such case, RTI will, wherever possible under applicable law, substitute Licensor as party plaintiff for purposes of pursuing any alleged infringer or party responsible for the alleged misappropriation, or as defendant for defending any Licensor Patent Rights or Licensor Intellectual Property.
(e) Any recovery of damages or other sums recovered in a proceeding or action with regard to Licensor Patent Rights and the Licensor Intellectual Property Rights handled by a party pursuant to Section 1.2(c) oror Section 1.2(d) shall be applied first in satisfaction of any unreimbursed expenses and legal fees of the party bringing or defending the proceeding or action (the “Acting Party”) and next, if applicable, in satisfaction of the costs and expenses incurred by the other party in connection therewith, including reasonable attorneys’ fees involved in the prosecution and/or defense of any proceeding or action and, if after such reimbursement any funds shall remain from such damages or other sums recovered, the remaining recovery shall be retained one hundred percent (100%) by the Acting Party. No settlement, consent judgment or other voluntary final disposition of any suit regarding Licensor Patent Rights and the Licensor Intellectual Property may be entered into without the consent of the other party, which consent shall not be unreasonably withheld.
(f) In any infringement or misappropriation suit that either party may institute to enforce Licensor Patent Rights and the Licensor Intellectual Property, or in any declaratory judgment action alleging invalidity, non‑infringement or non-misappropriation of any Licensor Patent Rights and the Licensor Intellectual Property brought against Licensor or RTI, the other party shall, at the request and expense of the party initiating or defending the suit or action, cooperate and assist in all reasonable respects, having its employees testify when requested and making available relevant records, papers, information, specimens and the like. In addition, upon the reasonable request of the party instituting an action under this Section 1.2, or if required by applicable law, the other party shall join such action and shall be represented using counsel of its own choice, at the requesting party’s expense; provided, that if RTI does not initiate an action hereunder on the advice of outside patent counsel, then Licensor may not require RTI to join such action but Licensor may have RTI join such action as an involuntary party, but RTI shall not be required to participate in such action.
Appears in 1 contract
Sources: Technology Transfer Agreement (Realm Therapeutics PLC)
Patent Matters. 10.1 Licensor retains the sole right and discretion, but not obligation, to file and prosecute patent applications and maintain patents in the Territory relating to the Technology or any improvements made by Licensor. At Licensee’s request while Licensee remains an exclusive licensee hereunder, Licensor will discuss its decisions on these matters with Licensee, but Licensee will not attempt to file or prosecute any such patent applications or maintain any such patent (ai) RTI except as Licensor may, at its sole discretion, approve in writing and (ii) except that Licensee may continue maintenance of licensed patents issued in the Territory if Licensor elects not to do so. Any improvements to Technology (whether or not patentable or copyrightable) that either party develops shall be responsible for payment of maintenance fees for US Patent [*] that become due after owned solely by such party. Such party shall have the Effective Dateright, at its own expense and solely in its own name, to apply for, prosecute and defend its Proprietary Rights with respect thereto. Licensor’s existing relevant patents and patent applications in the Territory are listed on Exhibit C. Licensee agrees to place on all Products in a proper manner all reasonable patent and patent application markings requested by Licensor.
(b) 10.2 If either party learns Licensee becomes aware of any actual product or threatened activity of any third party that involves infringement or misappropriation violation of any Licensor patent or any attack on the validity or enforceability by a third party with respect to Licensor Patent Rights and the Licensor Intellectual Property other Proprietary Right in the FieldTerritory, such party then Licensee shall promptly notify the other party and shall provide such other party with available evidence Licensor in writing of such eventsinfringement or violation. Licensor may in its discretion take or not take whatever action it believes is appropriate; if Licensor elects to take action, Licensee will fully cooperate therewith at Licensor’s expense, including joining as a party, if necessary. If Licensor does not, within 90 days after receipt of such a notice of a patent infringement within the scope of the then remaining exclusivity of Licensee’s license hereunder, commence action directed toward restraining or enjoining such patent infringement, Licensee, so long as such exclusivity remains in effect, may take such legally permissible action as it deems necessary or appropriate to enforce Licensor’s patent rights and restrain such infringement. Licensor agrees to cooperate reasonably in any such action Licensee initiates or wishes to initiate, including, without limitation, supplying essential documentary evidence and making essential witnesses then in Licensor’s employment available. As part of such cooperation, Licensee may join or include Licensor as a party, if the need arises, although such joinder or inclusion shall be entirely at Licensee’s expense. Licensee will indemnify Licensor for any third-party damages, as well as Licensor’s expenses, costs and attorneys’ fees, in connection with Licensee’s actions under this Section 10.2. Nothing in this Section 10.2 allows Licensee or requires Licensor to disclose Proprietary Information of Licensor. If Licensor initiates and prosecutes any such an action under this Section 10.2, all legal expense (including court costs and attorneys’ fees) shall be borne by Licensor and Licensor shall be entitled to all amounts awarded by way of judgment, settlement or compromise. Similarly, if Licensee initiates and prosecutes such an action, all legal expenses (including court costs and attorneys’ fees) shall be borne by Licensee and Licensee shall be entitled to all amounts awarded by way of judgment, settlement, or compromise.
(c) RTI shall have 10.3 Licensee understands that Licensor has not conducted comprehensive patent searches in all of the first option countries in the Territory. Licensor and Licensee agree to pursue any enforcement or defense of Licensor Patent work cooperatively regarding issues concerning patents and Proprietary Rights and similar matters and to exercise reasonable business judgment in carrying out the Licensor Intellectual Property against infringement objects of this Agreement to avoid exposing either party to liability under patent or misappropriation, including defense against a declaratory judgment action alleging invalidity or non-infringement of similar laws in any of the Licensor Patent Rights and the Licensor Intellectual Property countries in the Field; provided, Territory. Each party represents and warrants that RTI pays all costs and expenses related it is not aware of infringement or potential infringement issues that have not been communicated to the same, keeps Licensor reasonably informed other in writing before execution of its progress and provides Licensor with copies of any substantive documents related to such proceedings and reasonable notice of all such proceedings. RTI shall notify Licensor of its decision to exercise its right to enforce or defend Licensor Patent Rights or Licensor Intellectual Property not later than [*] following its discovery or receipt of notice of the alleged infringement or misappropriationthis Agreement.
(d) If (i) RTI notifies Licensor that it will not enforce Licensor Patent Rights and the Licensor Intellectual Property in accordance with Section 1.2(c); (ii) RTI has exhausted all legal appeals with respect to causing the alleged infringement or misappropriation to cease or causing the person alleging the infringement or misappropriation to forebear, (iii) RTI fails to bring an infringement or misappropriation action within [*] following its discovery or receipt of notice of the alleged infringement or misappropriation or (iv) RTI is not diligently pursuing an infringement or misappropriation action or diligently defending the validity or enforceability of Licensor Patent Rights and the Licensor Intellectual Property at issue, then Licensor shall have the right to pursue the alleged infringer or party responsible for the alleged misappropriation or take control of any action initiated by, or being defended by, RTI at Licensor’s own expense. Notwithstanding the foregoing, if RTI has not initiated an infringement or misappropriation action as described under (iii) above, or ceased to pursue such action, on the advice of outside patent counsel, then Licensor agrees not to initiate such an action without RTI’s prior consent not to be unreasonably withheld or delayed (with the determination of reasonableness taking into account the costs of such litigation, its likelihood for success, the potential damages or settlement recovery, and the potential for exposure to counterclaims and defenses against RTI with respect to any RTI Patent Rights with respect to the applicable Licensed Product). In any such case, RTI will, wherever possible under applicable law, substitute Licensor as party plaintiff for purposes of pursuing any alleged infringer or party responsible for the alleged misappropriation, or as defendant for defending any Licensor Patent Rights or Licensor Intellectual Property.
(e) Any recovery of damages or other sums recovered in a proceeding or action with regard to Licensor Patent Rights and the Licensor Intellectual Property Rights handled by a party pursuant to Section 1.2(c) or
Appears in 1 contract
Patent Matters. Licensor retains the sole right and discretion to file and prosecute any foreign or US patent applications and maintain patents relating to the Licensed Patents or any improvements made by Licensor. Licensor will provide any status reports or other information relating to patents or patent applications that licensee requests in writing. Unless agreed otherwise in writing, in advance, Licensee will not file, apply for or prosecute any foreign patents corresponding to the Licensed Patents. Any improvements to any technology expressly claimed by the Licensed Patents (awhether or not patentable or copyrightable) RTI shall will be responsible for payment of maintenance fees for US Patent [*] that become due after the Effective Date.
(b) owned solely by Licensor. If either party learns becomes aware of any actual product or threatened activity of any third party that involves infringement or misappropriation violation of any Licensed Patents or any attack on the validity or enforceability by a third party with respect to Licensor Patent Rights and the Licensor Intellectual Property in the Fieldother proprietary right of Licensor, then such party shall will promptly notify the other party and shall provide such other party with available evidence in writing of such events.
(c) RTI shall have the first option to pursue any enforcement or defense of Licensor Patent Rights and the Licensor Intellectual Property against infringement or misappropriationviolation. Licensor may in its discretion take or not take whatever action it believes is appropriate. If Licensor elects to take action, Licensee will fully cooperate therewith at Licensee's expense. If Licensor initiates and prosecutes any such action under this Section 5, all amounts received will first be used to reimburse Licensor's legal expense (including defense against a declaratory judgment action alleging invalidity court costs and attorney's fees) and Licensor will be entitled to (a) 50% of all amounts awarded by way of judgment, settlement or non-infringement compromise if the amounts received are in compensation for lost reasonable royalties or (b) 10% of any amounts received that are compensation for Licensee's lost profits on sales of products or technology and in either such case the remainder will be paid to Licensee. If Licensor Patent Rights elects not to take any action in connection with such infringement or violation, Licensee may, on Licensor's behalf and the Licensor Intellectual Property in the Field; providedas exclusive licensee, that RTI pays all costs and expenses related to the same, keeps Licensor reasonably informed of its progress and provides Licensor with copies of any substantive documents related to such proceedings and reasonable notice of all such proceedings. RTI shall notify Licensor of its decision to exercise its right initiate action to enforce or defend Licensor Patent Rights or Licensor Intellectual Property not later than [*] following its discovery or receipt of notice of the alleged infringement or misappropriation.
(d) If rights granted hereunder. In such events, (i) RTI notifies Licensor that it will not enforce Licensor Patent Rights and the Licensor Intellectual Property agrees to appoint Licensee as its lawful attorney in accordance fact with Section 1.2(c); full power to prosecute such action, (ii) RTI has exhausted all legal appeals with respect to causing the alleged infringement or misappropriation to cease or causing the person alleging the infringement or misappropriation to forebear, (iii) RTI fails to bring an infringement or misappropriation action within [*] following its discovery or receipt of notice of the alleged infringement or misappropriation or (iv) RTI is not diligently pursuing an infringement or misappropriation action or diligently defending the validity or enforceability of Licensor Patent Rights and the Licensor Intellectual Property at issue, then Licensor shall have the right to pursue the alleged infringer or party responsible for the alleged misappropriation or take control of any action initiated by, or being defended by, RTI at Licensor’s own expense. Notwithstanding the foregoing, if RTI has not initiated an infringement or misappropriation action as described under (iii) above, or ceased to pursue such action, on the advice of outside patent counsel, then Licensor agrees not to initiate such an action without RTI’s prior consent not to be unreasonably withheld or delayed (with the determination of reasonableness taking into account Licensee will bear the costs of such litigation, its likelihood for success, the potential damages or settlement recovery, action and (iii) any amounts received will first be used to reimburse Licensee's legal expenses and the remaining portion will be allocated 90% to Licensee and 10% to Licensor. Licensee understands that Licensor has not conducted comprehensive patent searches in all countries. Licensor and Licensee will work cooperatively regarding issues concerning patents and proprietary rights and similar matters and to exercise reasonable business judgment in carrying out the objects of this Agreement to avoid exposing either party to liability under patent or similar laws in any country. Licensee represents and warrants that it is not aware of infringement or potential for exposure to counterclaims and defenses against RTI with respect to infringement by any RTI Patent Rights with respect to the applicable Licensed Product). In any such case, RTI will, wherever possible under applicable law, substitute Licensor as party plaintiff for purposes of pursuing any alleged infringer or party responsible for the alleged misappropriation, or as defendant for defending any Licensor Patent Rights or Licensor Intellectual Property.
(e) Any recovery of damages or other sums recovered in a proceeding or action with regard third parties that have not been communicated to Licensor Patent Rights and the Licensor Intellectual Property Rights handled by a party pursuant to Section 1.2(c) orin writing before execution of this Agreement.
Appears in 1 contract
Sources: Exclusive Patent License Agreement (Avanir Pharmaceuticals)
Patent Matters. 5.1 LICENSOR hereby covenants to BARD that, during the term of this Agreement, LICENSOR, at its expense: (ai) RTI shall be responsible maintain all issued Letters Patent listed on SCHEDULE E, SCHEDULE F, and SCHEDULE G, which are attached hereto and incorporated herein, and (ii) shall diligently prosecute all applications for payment of maintenance fees Letters Patent listed on SCHEDULE E, SCHEDULE F and SCHEDULE G and shall maintain all Letters patent issuing thereon, and (iii) shall prepare such other applications for US Letters Patent [*] that become due after directed toward SUPERSLIP COATING, BIOSTATIC COATING, STAY WET COATING and each NET COATING which LICENSOR deems advisable, shall file such applications in such countries as LICENSOR deems advisable, shall diligently prosecute the Effective Datesame and shall maintain all Letters Patent issuing thereon.
(b) If 5.2 In the event any party hereto knows or has reason to believe that any issued patent included in the PROPRIETARY RIGHTS is being infringed, either party learns of directly or indirectly by any actual or threatened infringement or misappropriation or any attack on the validity or enforceability by a third party which is not an AFFILIATE, with respect to Licensor Patent Rights and the Licensor Intellectual Property in LICENSED APPLICATION, the Field, party possessing such party knowledge or belief shall promptly notify the other party other. In said event, BARD, at its sole cost and shall provide such other party with available evidence of such events.
(c) RTI expense, shall have the first option right, but not the obligation, to pursue attempt to stop any enforcement or defense of Licensor Patent Rights and the Licensor Intellectual Property against such infringement or misappropriationby taking such action as BARD, in its sole judgment, deems appropriate, including defense prosecution of a lawsuit. In the event BARD institutes a lawsuit against any such infringer, LICENSOR hereby agrees to be named as a declaratory judgment action alleging invalidity or non-infringement of any of nominal party herein, if required by applicable law. In the Licensor Patent Rights and the Licensor Intellectual Property in the Field; providedlast mentioned event, that RTI pays all costs and expenses related to the same, keeps Licensor reasonably informed of its progress and provides Licensor with copies of any substantive documents related to such proceedings and reasonable notice of all such proceedings. RTI shall notify Licensor of its decision to exercise its right to enforce or defend Licensor Patent Rights or Licensor Intellectual Property not later than [*] following its discovery or receipt of notice of the alleged infringement or misappropriation.
(d) If (i) RTI notifies Licensor that it will not enforce Licensor Patent Rights and the Licensor Intellectual Property in accordance with Section 1.2(c); (ii) RTI has exhausted LICENSOR is named as a nominal party, BARD hereby agrees to reimburse LICENSOR for reasonable attorneys' fees incurred by LICENSOR incident to its being named a nominal party within thirty (30) days of BARD's receipt of documentation supporting such fees. The parties hereby agree that all legal appeals recoveries and awards that may be obtained as a result of any action taken by BARD with respect to causing any such infringement, including any settlement thereof, shall be the sole and exclusive property of BARD. In the event BARD fails to take any action against the alleged infringement or misappropriation infringer within sixty (60) business days of issuance of any notice referred in the first sentence of this Section 5.2, LICENSOR, thereafter, shall have the right, but not the obligation, at its sole cost and expense, to cease or causing the person alleging the infringement or misappropriation attempt to forebear, (iii) RTI fails to bring an infringement or misappropriation action within [*] following its discovery or receipt of notice of the stop such alleged infringement or misappropriation or (iv) RTI is not diligently pursuing an infringement or misappropriation by taking such action or diligently defending as LICENSOR, in its sole judgment, deems appropriate, including prosecution of a lawsuit. The parties hereby agree that all recoveries and awards that may be obtained as a result of any action taken by LICENSOR with respect to such alleged infringement, including any settlement thereof, shall be the validity or enforceability sole and exclusive property of Licensor Patent Rights and the Licensor Intellectual Property at issueLICENSOR, then Licensor it being expressly agreed that LICENSOR shall have the right to pursue the alleged infringer or party responsible for the alleged misappropriation or take control of settle any such action initiated byon such terms as it deems appropriate, or being defended by, RTI at Licensor’s own expense. Notwithstanding the foregoing, if RTI has provided such settlement is not initiated an infringement or misappropriation action as described under (iii) above, or ceased to pursue such action, on the advice of outside patent counsel, then Licensor agrees not to initiate such an action without RTI’s prior consent not to be unreasonably withheld or delayed (inconsistent with the determination of reasonableness taking into account the costs of such litigation, its likelihood for success, the potential damages or settlement recovery, and the potential for exposure rights herein granted to counterclaims and defenses against RTI with respect to any RTI Patent Rights with respect to the applicable Licensed Product). In any such case, RTI will, wherever possible under applicable law, substitute Licensor as party plaintiff for purposes of pursuing any alleged infringer or party responsible for the alleged misappropriation, or as defendant for defending any Licensor Patent Rights or Licensor Intellectual PropertyBARD.
(e) Any recovery of damages or other sums recovered in a proceeding or action with regard to Licensor Patent Rights and the Licensor Intellectual Property Rights handled by a party pursuant to Section 1.2(c) or
Appears in 1 contract
Sources: License Agreement (Hydromer Inc)
Patent Matters. 10.1 Licensor retains the sole right and discretion, but not obligation, to file and prosecute patent applications and maintain patents in the Territory relating to the Technology or any improvements made by Licensor. At Licensee’s request while Licensee remains an exclusive licensee hereunder, Licensor will discuss its decisions on these matters with Licensee, but Licensee will not attempt to file or prosecute any such patent applications or maintain any such patent (ai) RTI except as Licensor may, at its sole discretion, approve in writing and (ii) except that Licensee may continue maintenance of licensed patents issued in the Territory if Licensor elects not to do so. Any improvements to Technology (whether or not patentable or copyrightable) that either party develops shall be responsible for payment of maintenance fees for US Patent [*] that become due after owned solely by such party. Such party shall have the Effective Dateright, at its own expense and solely in its own name, to apply for, prosecute and defend its Proprietary Rights with respect thereto. Licensor’s existing relevant patents and patent applications in the Territory are listed on Exhibit C. Licensee agrees to place on all Products in a proper manner all reasonable patent and patent application markings requested by Licensor.
(b) 10.2 If either party learns Licensee becomes aware of any actual product or threatened activity of any third party that involves infringement or misappropriation violation of any Licensor patent or any attack on the validity or enforceability by a third party with respect to Licensor Patent Rights and the Licensor Intellectual Property other Proprietary Right in the FieldTerritory, such party then Licensee shall promptly notify the other party and shall provide such other party with available evidence Licensor in writing of such eventsinfringement or violation. Licensor may in its discretion take or not take whatever action it believes is appropriate; if Licensor elects to take action, Licensee will fully cooperate therewith at Licensor’s expense, including joining as a party, if necessary. If Licensor does not, within 90 days after receipt of such a notice of a patent infringement within the scope of the then remaining exclusivity of Licensee’s license hereunder, commence action directed toward restraining or enjoining such patent infringement, Licensee, so long as such exclusivity remains in effect, may take such legally permissible action as it deems necessary or appropriate to enforce Licensor’s patent rights and restrain such infringement. Licensor agrees to cooperate reasonably in any such action Licensee initiates or wishes to initiate, including, without limitation, supplying essential documentary evidence and making essential witnesses then in Licensor’s employment available. As part of such cooperation, Licensee may join or include Licensor as a party, if the need arises, although such joinder or inclusion shall be entirely at Licensee’s expense. Licensee will indemnify Licensor for any third- party damages, as well as Licensor’s expenses, costs and attorneys’ fees, in connection with Licensee’s actions under this Section 10.2. Nothing in this Section 10.2 allows Licensee or requires Licensor to disclose Proprietary Information of Licensor. If Licensor initiates and prosecutes any such an action under this Section 10.2, all legal expense (including court costs and attorneys’ fees) shall be borne by Licensor and Licensor shall be entitled to all amounts awarded by way of judgment, settlement or compromise. Similarly, if Licensee initiates and prosecutes such an action, all legal expenses (including court costs and attorneys’ fees) shall be borne by Licensee and Licensee shall be entitled to all amounts awarded by way of judgment, settlement, or compromise.
(c) RTI shall have 10.3 Licensee understands that Licensor has not conducted comprehensive patent searches in all of the first option countries in the Territory. Licensor and Licensee agree to pursue any enforcement or defense of Licensor Patent work cooperatively regarding issues concerning patents and Proprietary Rights and similar matters and to exercise reasonable business judgment in carrying out the Licensor Intellectual Property against infringement objects of this Agreement to avoid exposing either party to liability under patent or misappropriation, including defense against a declaratory judgment action alleging invalidity or non-infringement of similar laws in any of the Licensor Patent Rights and the Licensor Intellectual Property countries in the Field; provided, Territory. Each party represents and warrants that RTI pays all costs and expenses related it is not aware of infringement or potential infringement issues that have not been communicated to the same, keeps Licensor reasonably informed other in writing before execution of its progress and provides Licensor with copies of any substantive documents related to such proceedings and reasonable notice of all such proceedings. RTI shall notify Licensor of its decision to exercise its right to enforce or defend Licensor Patent Rights or Licensor Intellectual Property not later than [*] following its discovery or receipt of notice of the alleged infringement or misappropriationthis Agreement.
(d) If (i) RTI notifies Licensor that it will not enforce Licensor Patent Rights and the Licensor Intellectual Property in accordance with Section 1.2(c); (ii) RTI has exhausted all legal appeals with respect to causing the alleged infringement or misappropriation to cease or causing the person alleging the infringement or misappropriation to forebear, (iii) RTI fails to bring an infringement or misappropriation action within [*] following its discovery or receipt of notice of the alleged infringement or misappropriation or (iv) RTI is not diligently pursuing an infringement or misappropriation action or diligently defending the validity or enforceability of Licensor Patent Rights and the Licensor Intellectual Property at issue, then Licensor shall have the right to pursue the alleged infringer or party responsible for the alleged misappropriation or take control of any action initiated by, or being defended by, RTI at Licensor’s own expense. Notwithstanding the foregoing, if RTI has not initiated an infringement or misappropriation action as described under (iii) above, or ceased to pursue such action, on the advice of outside patent counsel, then Licensor agrees not to initiate such an action without RTI’s prior consent not to be unreasonably withheld or delayed (with the determination of reasonableness taking into account the costs of such litigation, its likelihood for success, the potential damages or settlement recovery, and the potential for exposure to counterclaims and defenses against RTI with respect to any RTI Patent Rights with respect to the applicable Licensed Product). In any such case, RTI will, wherever possible under applicable law, substitute Licensor as party plaintiff for purposes of pursuing any alleged infringer or party responsible for the alleged misappropriation, or as defendant for defending any Licensor Patent Rights or Licensor Intellectual Property.
(e) Any recovery of damages or other sums recovered in a proceeding or action with regard to Licensor Patent Rights and the Licensor Intellectual Property Rights handled by a party pursuant to Section 1.2(c) or
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