Common use of Sole Collaboration IP Clause in Contracts

Sole Collaboration IP. (i) With respect to any actual or suspected infringement or misappropriation of the Owning Party’s Sole Collaboration IP, the Owning Party shall have the initial right, but not the obligation, to initiate an appropriate suit against any Third Party who at any time is, or is suspected of, infringing the Owning Party’s Patent Rights within its Sole Collaboration IP anywhere in the world and the Owning Party shall have the sole right, but not the obligation, to initiate an appropriate suit against any Third Party who at any time is, or is suspected of, misappropriating the Owning Party’s Know-How within the Sole Collaboration IP anywhere in the world. (ii) Subject to any contractual obligations to, or restrictions imposed by, Amunix on Biogen Idec under an Amunix Agreement, if any, in the event that the Owning Party does not, within six (6) months of written notice from the Non-Owning Party of a suspected infringement of the Owning Party’s Sole Collaboration Patent Rights in the Non-Owning Party’s Territory, commence and vigorously and continuously pursue thereafter an action to enjoin such infringement, the Non-Owning Party shall be entitled to commence the action in its name or otherwise take appropriate steps in its Territory to halt such alleged infringement after giving the Owning Party advance notice of its intent to file any such suit and the reasons therefor; provided, however, that the Non-Owning Party shall not take (nor permit any of its licensees or sublicensees to take) any action involving the enforcement of any of the Owning Party’s Patent Rights in any way that would be reasonably likely to directly and adversely affect their scope, validity or enforceability without the prior written consent of the Owning Party, which consent shall not be unreasonably withheld. For clarity, the mere fact that an enforcement action could lead to a counterattack on scope, validity or enforceability by the alleged infringer shall not be grounds for withholding such consent, unless the Owning Party has reasonable grounds for determining that there is a reasonable likelihood of an adverse outcome and communicates the basis for such determination to the Non-Owning Party. (iii) If a Party initiates suit pursuant to paragraphs (i) or (ii) above: (A) the enforcing Party shall provide the non-enforcing Party with an opportunity to make suggestions and comments regarding such suit, and shall consider in good faith the suggestions and comments of the non-enforcing Party; and (B) the enforcing Party shall keep the non-enforcing Party promptly informed and shall from time to time discuss with the non-enforcing Party the status of any such suit, and shall provide the non-enforcing Party with copies of all material documents filed in, and all material written communications relating to, such suit. (iv) The Parties shall share equally all out-of-pocket expenses of any suit brought by either Party pursuant to this Section 7.4(d), including attorneys’ fees and court costs, with respect to such infringement; provided, however, that the non-enforcing Party may reduce, or decline to pay, its share of such expenses by providing written notice to the other Party. Any recovery, lump-sum settlement, royalty payment or other consideration received by the Parties as a result of such litigation or settlement of any such infringement shall be disbursed as follows: (A) first, each Party shall be reimbursed pro rata for the out-of-pocket expenses of the suit actually paid by it in connection with the alleged infringement, including attorneys’ fees and court costs; and (B) second, the Parties shall share any remaining amount in direct proportion to the share of expenses of such litigation paid by each. (v) If necessary in order to commence or maintain or to obtain a more effective remedy in any suit referred to in this Section 7.4(d), the other Party shall, at its expense, join as a party to such suit, but shall be under no obligation to participate except to the extent that such participation is required as the result of being a named party to such suit. Further, such other Party shall, at its expense, offer reasonable assistance to the suing Party in connection therewith. (vi) The Non-Owning Party shall not settle any suit involving the Owning Party’s Sole Collaboration IP which the Non-Owning Party is permitted to bring under this Section 7.4(d) without obtaining the prior written consent of the Owning Party, which consent shall not be unreasonably withheld. The Owning Party shall not settle such claims (including any suit or other proceeding) against such Third Party, including the grant of any rights in respect of the Owning Party’s Sole Collaboration IP, without the other Party’s written consent if such settlement may adversely affect such other Party’s rights hereunder. (vii) In the event that any counterclaims are brought against a Party in any suit commenced by such Party pursuant to this Section 7.4(d), such Party shall have the sole right to defend such counterclaims. Notwithstanding anything to the contrary herein, in the event of an Invalidity Claim, the Non-Owning Party shall have no right to settle such action or other claims by admitting the invalidity or unenforceability of the Owning Party’s Sole Collaboration IP, without the prior written consent of the Owning Party in its discretion.