Common use of Patents and Intellectual Property Clause in Contracts

Patents and Intellectual Property. 5.1 Licensee shall not, and shall ensure that none of its Affiliates, Sublicensees, contractors, or other agents does not, take any action or make any statement that, directly or indirectly, adversely affects, or would reasonably be expected to adversely affect, any of the Licensed Patent Rights. Licensed Trademark(s) or Licensed Know-How, or Licensor’s or any Licensor Affiliate’s or Licensor’s sublicensees’ rights or ability to make, use, sell, offer for sale, or import Licensed Product or any other products. 5.2 Licensor shall own all right, title and interest in and to any Improvements made by or on behalf of either Party (or any Affiliate or Sublicensee thereof), solely or jointly with the other Party, any Sublicensee or any other Third Parties, and all intellectual property rights related thereto, and Licensee hereby assigns to Licensor all right, title, and interest to any Improvements generated by or on behalf of Licensee, any Sublicensee or its or their Affiliates, solely or jointly with any other Party, and all intellectual property rights related thereto. Licensee shall take all actions and execute all documents necessary to effect the purposes of the foregoing, as requested by Licensor, and cause its Affiliates, Sublicensees, employees, contractors, and other representatives to do the same. Licensee shall promptly notify Licensor in writing of Improvements made, solely or jointly with other persons, by Licensee or any Affiliate thereof. Licensee shall ensure that any contracts it may execute with any Sublicensee, Affiliate or other Third Party concerning Licensed Products shall be consistent with, and enable Licensee to comply with, this Section 5.2. 5.3 Licensee shall, at Licensor’s expense, take all such steps as Licensor may reasonably require to assist Licensor in maintaining the validity and enforceability of the Licensed Trademarks during the Term. Licensee shall not make an application to or actually register any unregistered Licensed Trademarks in the Territory without Licensor’s prior written consent. 5.4 Except as otherwise expressly provided herein, Licensor shall have the sole right and obligation to prosecute and maintain the Licensed Patent Rights in the Territory. Licensee shall reasonably cooperate in connection with the prosecution of the Licensed Patent Rights. Should Licensor decide that it is no longer interested in maintaining or prosecuting a particular Licensed Patent Rights in the Territory in respect of which it has the rights to so maintain and prosecute, Licensee may assume such prosecution and maintenance in the Territory at its sole expense. 5.5 Each of Licensee and Licensor shall promptly notify the other Party in writing of any alleged or threatened infringement of any Licensed Patent Rights or Licensed Trademarks by a Third Party, of which the Party becomes aware. Licensor shall have the first right to bring and control any action or proceeding with respect to any alleged or threatened infringement of Licensed Patent Rights or Licensed Trademark(s) in the Territory. If Licensor does not bring and continue pursuing an action or proceeding against, or otherwise take appropriate steps to cause the cessation of such an infringement of any Licensed Patent Rights or Licensed Trademark by or after the earlier of (i) one hundred and eighty (180) days following the notice of alleged infringement then Licensee shall have the right to bring and control an infringement action under the applicable Licensed Patent Rights with respect to such infringement at its own expense and by counsel of its own choice provided that Licensee may not settle an action or proceeding brought under this Section 5.5 in a manner that, or knowingly take any other action in the course thereof that, adversely affects the value, scope or validity of the Licensed Patent Rights or Licensed Trademarks without the written consent of the Licensor, which consent shall not be unreasonably withheld. For any action or proceeding brought by a Party under this Section 5.5 each Party shall reasonably cooperate with the other Party. Any recovery realized as a result of any litigation under this Section 5.5 (including, for greater certainty, the proceeds of any settlement relating to such litigation), after reimbursement of any litigation expenses of Licensee and Licensor, as applicable, shall be retained by the Party that brought and controlled such litigation for purposes of this Agreement, except that the other Party shall be entitled to receive twenty-five percent (25%) of any recovery realized by the Party that brought and controlled such litigation under this Section 5.5, after reimbursement of each of the Parties’ related litigation expenses.

Patents and Intellectual Property. 5.1 Licensee shall notSupplier represents and warrants that the Goods sold hereunder, and shall ensure that none the use of its Affiliates, Sublicensees, contractors, or other agents does not, take any action or make any statement that, directly or indirectly, adversely affects, or would reasonably be expected to adversely affect, any such Goods where a representation of the Licensed Patent Rights. Licensed Trademark(s) or Licensed Know-How, or Licensor’s or any Licensor Affiliate’s or Licensor’s sublicensees’ rights or ability to make, suitability for such use, sellexpress or implied, offer for salehas been made, do not and will not infringe any United States or import Licensed Product foreign patents, trademarks, trade dress, copyrights, trade secrets or any other products. 5.2 Licensor shall own all rightform of intellectual property. Supplier acknowledges that any patents, title and interest in and to any Improvements made by or on behalf of either Party (or any Affiliate or Sublicensee thereof)trademarks, solely or jointly with the other Partytrade dress, any Sublicensee copyrights, trade secrets or any other Third Partiesform of intellectual property (collectively, “Intellectual Property”) that Purchaser provides to Supplier are Purchaser's exclusive property and Supplier disclaims all rights in same. All drawings, art work, special products, materials, information or data furnished by Purchaser and all Intellectual Property resulting from the Purchase Order (as referenced in the foregoing sentences) are Purchaser's exclusive property, shall be used by Supplier only for Purchaser's work, shall be kept confidential by Supplier and shall be returned to Purchaser at Purchaser's request. Purchaser may market, distribute and/or sell the Goods under its own trademark and trade name. Purchaser has the right to use any of Supplier's marks, names, other trade identities, copyrighted works or other intellectual property, to the extent that Supplier has incorporated such property in or used such property in the manufacture of the Goods that are supplied by Supplier to Purchaser. Where the Goods and Services include experimental, developmental, or research work to be performed in accordance with special requirements of Purchaser, any such work will be considered "work for hire" and Supplier agrees to disclose and on request to assign to Purchaser each invention, copyright, confidential process or know-­‐how, and trade secret or other form of Intellectual Property resulting therefrom and Supplier shall disclaim all intellectual property rights related thereto, in same. Supplier agrees to execute any and Licensee hereby assigns to Licensor all right, title, and interest to any Improvements generated by or on behalf of Licensee, any Sublicensee or its or their Affiliates, solely or jointly with any other Party, and all intellectual property rights related thereto. Licensee shall take all actions and execute all documents necessary to effect transfer ownership of Intellectual Property to Purchaser or to evidence ownership in Purchaser. Supplier also agrees to cooperate with Purchaser in the purposes filing of the foregoing, any patent applications and to execute all documents as requested by Licensor▇▇▇▇▇▇▇▇▇ regarding any such patent application at Purchaser’s expense. Supplier, without charge to Purchaser, other than reasonable payment for time involved, but at Purchaser’s expense shall duly execute, acknowledge, and cause deliver to Purchaser all such further papers, including assignments and applications for copyright registration or renewal, as may be necessary to enable Purchaser to publish or protect said works by patent, copyright or otherwise in any and all countries and to vest title to said works in Purchaser or its Affiliatesnominees, Sublicensees, employees, contractorstheir successors or assigns, and other representatives to do the same. Licensee shall promptly notify Licensor in writing of Improvements made, solely or jointly with other persons, by Licensee or any Affiliate thereof. Licensee shall ensure that any contracts it may execute with any Sublicensee, Affiliate or other Third Party concerning Licensed Products shall be consistent with, and enable Licensee to comply with, this Section 5.2. 5.3 Licensee shall, at Licensor’s expense, take render all such steps assistance as Licensor Purchaser may reasonably require to assist Licensor in maintaining the validity and enforceability of the Licensed Trademarks during the Term. Licensee shall not make an application to any proceeding or actually register any unregistered Licensed Trademarks in the Territory without Licensor’s prior written consent. 5.4 Except as otherwise expressly provided herein, Licensor shall have the sole right and obligation to prosecute and maintain the Licensed Patent Rights in the Territory. Licensee shall reasonably cooperate in connection with the prosecution of the Licensed Patent Rights. Should Licensor decide that it is no longer interested in maintaining or prosecuting a particular Licensed Patent Rights in the Territory in respect of which it has litigation involving the rights to so maintain and prosecute, Licensee may assume such prosecution and maintenance in the Territory at its sole expensesaid works. 5.5 Each of Licensee and Licensor shall promptly notify the other Party in writing of any alleged or threatened infringement of any Licensed Patent Rights or Licensed Trademarks by a Third Party, of which the Party becomes aware. Licensor shall have the first right to bring and control any action or proceeding with respect to any alleged or threatened infringement of Licensed Patent Rights or Licensed Trademark(s) in the Territory. If Licensor does not bring and continue pursuing an action or proceeding against, or otherwise take appropriate steps to cause the cessation of such an infringement of any Licensed Patent Rights or Licensed Trademark by or after the earlier of (i) one hundred and eighty (180) days following the notice of alleged infringement then Licensee shall have the right to bring and control an infringement action under the applicable Licensed Patent Rights with respect to such infringement at its own expense and by counsel of its own choice provided that Licensee may not settle an action or proceeding brought under this Section 5.5 in a manner that, or knowingly take any other action in the course thereof that, adversely affects the value, scope or validity of the Licensed Patent Rights or Licensed Trademarks without the written consent of the Licensor, which consent shall not be unreasonably withheld. For any action or proceeding brought by a Party under this Section 5.5 each Party shall reasonably cooperate with the other Party. Any recovery realized as a result of any litigation under this Section 5.5 (including, for greater certainty, the proceeds of any settlement relating to such litigation), after reimbursement of any litigation expenses of Licensee and Licensor, as applicable, shall be retained by the Party that brought and controlled such litigation for purposes of this Agreement, except that the other Party shall be entitled to receive twenty-five percent (25%) of any recovery realized by the Party that brought and controlled such litigation under this Section 5.5, after reimbursement of each of the Parties’ related litigation expenses.