Common use of Patent Prosecution and Infringement Clause in Contracts

Patent Prosecution and Infringement. 6.1 DFCI shall apply for, seek prompt issuance of, and maintain during the term of this Agreement any Patent Rights in the United States and in foreign countries. The prosecution, filing and maintenance of all patents shall be the primary responsibility of DFCI, provided, however, that Corixa shall have reasonable opportunity to advise DFCI on such matters, such opportunity toinclude the right to review all documents intended for submission in the examination of any application within the Patent Rights, including patent prosecution in foreign countries. If DFCI is unable or unwilling to do so, DFCI shall provide appropriate notice to Corixa, following which Corixa may file or prosecute any such patent applications or continue maintenance of the patents licensed hereunder. 6.2 Payment of all fees and costs relating to the filing, prosecution and maintenance of all patents shall be the responsibility of Corixa, whether such fees and costs were incurred before, as provided for in Section 4.1, or after the date of this Agreement. As of the Effective Date, the total expenses incurred by DFCI were [***], as delineated in Section 4.1. (a) If at any time during the term of this Agreement, Corixa furnishes to DFCI reasonably convincing written evidence of an infringement of a patent included in the Patent Rights covering the Invention which materially adversely affects the commercial operations of Corixa under the license granted hereunder, and DFCI shall within three (3) months after receipt of such evidence fail to cause such infringement to terminate or to bring a suit or action to compel termination, then in each country in which an infringement is occurring, payment of royalties and minimum amounts which are earned under Article IV hereof shall be waived as long as such infringement continues; provided, however, that such royalties and minimum amounts shall not be so waived as long as at least one suit or action is being prosecuted by DFCI for infringement of a patent covering the Invention and Corixa is not enjoined from commercial sales of (b) If after said three (3) months, DFCI fails to cause such infringement to terminate or to bring a suit or action to compel termination, Corixa shall have the right, but not the obligation, to bring such suit or action to compel termination and shall have the right for such purpose to join DFCI as a party plaintiff at Corixa's expense. DFCI independently shall have the right to join any such suit or action brought by Corixa and, in such event, shall pay one-half of the cost of such suit or action from the date of joining. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of DFCI, which consent shall not unreasonably be withheld. (c) Any damages recovered by such suit or action shall be first used to reimburse each party hereto for the cost of such suit or action (including attorney's fees) actually paid by each party hereto as the case may be, then to reimburse DFCI for any royalties and minimum royalties deferred under this Section 6.3 and of the residue, if any, [***] shall go to DFCI and [***] shall go to Corixa. 6.4 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought by a third party, DFCI, at its sole option, shall have the right, within thirty (30) days after commencement of such action, to takeover the entire defense of the action, provided Corixa is allowed to consult during such actions. 6.5 In any infringement suit as either party may institute to enforce the Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples and the like.