Common use of Blocking Patents Clause in Contracts

Blocking Patents. (a) In the event a Party becomes aware of a Blocking Patent, such Party shall [***] notify the other Party giving such [***] details as such Party may be aware, and ***Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. the Parties shall discuss the situation in [***] and agree on a plan to address the situation, with the mutual objective of removing the risk posed by such Blocking Patent so that the Parties may continue performance under this Agreement, including if appropriate and agreed by the Parties, by licensing and/or challenging such Blocking Patent. In the event the Parties agree on a plan to address such Blocking Patent, the Parties shall designate a lead Party to use Reasonable Commercial Efforts to perform such plan. It is understood that the costs of any license obtained with respect to a Blocking Patent (to the extent allocable to the manufacture, use or sale of Patches hereunder) will be shared by the Parties in proportion to their indemnification obligations for IP Claims under Section 9.2. It is understood and agreed that notices, communications and discussions under this Section 7.6 shall not be construed as [***] by either Party. In addition, all notices, communications and discussions under this Section 7.6 shall be deemed protected by the [***]. (b) After discussing the matter in [***] as described in Section 7.6(a) above, LTS and NeurogesX shall each have the right to [***] under this Agreement with respect to the affected country upon written notice (“Notice of Suspension”), until the risk of infringing such Blocking Patent has been removed, including if a Party or a Sublicensee has obtained a license with respect to the Blocking Patent for such country, or otherwise if in the [***] opinion of the Suspending Party’s counsel, such risk is removed. In the event LTS elects to provide a Notice of Suspension, then such notice shall be deemed a “Failure Event” under Section 6.4(a) above, effective upon receipt of the Notice of Suspension, provided however that the Parties shall discuss resuming their obligations as foreseen in case of termination under Section 11.3. (c) Notwithstanding the foregoing, in the event that upon receiving a Notice of Suspension, a Party disputes in good faith such notice, then the Party providing the Notice of Suspension may [***] its performance as set forth in this Section 7.6 if it can show by an opinion of an independent counsel, approved by the other Party (whose approval shall not be unreasonably withheld), that the determination of its counsel that a third party’s intellectual property right would be infringed is [***]. Such opinion shall also summarize the underlying facts. The Parties shall cooperate to ensure that all attorney-client privilege and work product privilege shall be protected with respect to the opinion. If the Party providing the Notice of Suspension does not propose an independent counsel, which is [***] to the other Party, then an independent counsel shall be appointed by the ICC International Centre for Expertise in accordance with the rules for Expertise of the International Chamber of Commerce. Such independent counsel shall be a [***].

Blocking Patents. If [*] cannot Manufacture or Commercialize an FDC Product in the Field in the Territory without infringing Patent Rights other than Patent Rights Controlled by Forest or its Affiliate (aincluding those [*]) In the event and not licensed to Forest hereunder, which Patent Rights Covers such FDC Product, unless it obtains a license to such patent from a Third Party becomes aware (other than [*]) (a “Forest Blocking Patent”) and pays a royalty under such license (including in connection with settlement of a patent infringement claim in accordance with Section 7.7), or (B) becomes subject to a final court or other binding order or ruling requiring the payment of a royalty to a Third Party with respect to a Forest Blocking PatentPatent in order to Manufacture or Commercialize an FDC Product in the Field in the Territory (collectively, such “Forest Third Party shall Patent Licenses”), [**] of any royalties paid under Forest Third [*] notify the other Party giving such [***] details as such Party may be aware= Certain confidential information contained in this document, and ***Certain information on this page marked by brackets, has been omitted and filed separately with the CommissionSecurities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. Confidential treatment has been requested Party Patent Licenses by Forest, its Affiliates or Sublicensees on Net Sales of such FDC Products after the applicable Royalty Commencement Date shall be fully creditable against royalties payable to Adamas hereunder with respect to such FDC Product; provided, however, that in no event shall such credit, together with any offset under Section 6.4(c)(vi), cause the omitted portions. the Parties shall discuss the situation in [***] and agree on a plan royalties paid to address the situation, with the mutual objective of removing the risk posed by such Blocking Patent so that the Parties may continue performance under this Agreement, including if appropriate and agreed by the Parties, by licensing and/or challenging such Blocking Patent. In the event the Parties agree on a plan to address such Blocking Patent, the Parties shall designate a lead Party to use Reasonable Commercial Efforts to perform such plan. It is understood that the costs of any license obtained Adamas with respect to a Blocking Patent (such FDC Product for any particular Calendar Quarter to the extent allocable be reduced to the manufacture, use or sale of Patches hereunder) will be shared by the Parties in proportion to their indemnification obligations for IP Claims under Section 9.2. It is understood and agreed that notices, communications and discussions under this Section 7.6 shall not be construed as less than [***] by either Party. In addition, all notices, communications and discussions under this Section 7.6 shall of the amount that would otherwise be deemed protected by the [***]. (b) After discussing the matter in [***] as described in Section 7.6(a) above, LTS and NeurogesX shall each have the right payable to [***] under this Agreement with respect to the affected country upon written notice (“Notice of Suspension”), until the risk of infringing such Blocking Patent has been removed, including if a Party or a Sublicensee has obtained a license with respect to the Blocking Patent Adamas for such country, or otherwise if in the [***] opinion of the Suspending Party’s counsel, such risk is removed. In the event LTS elects Calendar Quarter pursuant to provide a Notice of Suspension, then such notice shall be deemed a “Failure Event” under Section 6.4(a) above, effective upon receipt of the Notice of Suspension, provided however that the Parties shall discuss resuming their obligations as foreseen in case of termination under or Section 11.3. (c) Notwithstanding the foregoing, in the event that upon receiving a Notice of Suspension, a Party disputes in good faith such notice, then the Party providing the Notice of Suspension may [***] its performance as set forth in this Section 7.6 if it can show by an opinion of an independent counsel, approved by the other Party (whose approval shall not be unreasonably withheld6.4(c)(ii), as applicable, provided, further, that any such royalty paid on sales of such FDC Product after the determination Royalty Commencement Date under Forest Third Party Patent Licenses by Forest that is not used by Forest in a particular Calendar Quarter to reduce royalties on sales of its counsel that a third party’s intellectual property right would such FDC Product paid to Adamas in such Calendar Quarter may be infringed is [***]. Such opinion shall also summarize the underlying facts. The Parties shall cooperate carried over to ensure that all attorney-client privilege and work product privilege shall be protected with respect to the opinion. If the Party providing the Notice of Suspension does not propose an independent counsel, which is [***] to the other Party, then an independent counsel shall be appointed by the ICC International Centre for Expertise subsequent Calendar Quarters until fully used in accordance with the rules for Expertise of the International Chamber of Commerce. Such independent counsel shall be a [***]this Section 6.4(c)(vii).

Blocking Patents. If during the term of the Research Program: (a) In the event a Third Party becomes aware of is granted a Blocking Patent, such Party shall [***] notify the other Party giving such [***] details as such Party may be aware, and ***Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect patent relating to the omitted portions. the Parties shall discuss the situation in [***] and agree on a plan to address the situation, with the mutual objective of removing the risk posed by such Blocking Patent so that the Parties may continue performance under this Agreement, including if appropriate and agreed by the Parties, by licensing and/or challenging such Blocking Patent. In the event the Parties agree on a plan to address such Blocking Patent, the Parties shall designate a lead Party to use Reasonable Commercial Efforts to perform such plan. It is understood that the costs of any license obtained with respect to a Blocking Patent (to the extent allocable to the manufacture, use or sale of Patches hereunder) will be shared by the Parties in proportion to their indemnification obligations for IP Claims under Section 9.2. It is understood and agreed that notices, communications and discussions under this Section 7.6 shall not be construed as [***] by either Party. In addition, all notices, communications and discussions under this Section 7.6 shall be deemed protected by the [***].Curis Technology; (b) After discussing the matter in [***] as described in Section 7.6(a) above, LTS and NeurogesX shall each have the right to [***] under this Agreement with respect subject to the affected country upon written notice provisions set forth below in this Section 10.4, either Party determines, after good faith discussions with the other Party and based on the advice of patent counsel, that such patent (a “Notice Blocking Patent”) may be infringed by the activities of Suspension”)either Party under the Research Program and, until if asserted by such Third Party, would have a reasonable probability of preventing the risk use of infringing such Blocking Patent has been removed, including if a Party or a Sublicensee has obtained a license with respect to the Blocking Patent Curis Technology necessary for such country, or otherwise if use in the [***] opinion of the Suspending Party’s counsel, such risk is removed. In the event LTS elects to provide a Notice of Suspension, then such notice shall be deemed a “Failure Event” under Section 6.4(a) above, effective upon receipt of the Notice of Suspension, provided however that the Parties shall discuss resuming their obligations Research Program as foreseen in case of termination under Section 11.3contemplated herein; and add language re: mutual agreement or mini-arbitration if disagreement. (c) Notwithstanding the foregoingParties, within ninety (90) days of making the determination in Section 10.4(b) above, shall use their reasonable efforts to attempt to modify the event Research Program or otherwise avoid such infringement and if they mutually determine that upon receiving a Notice of Suspension, a Party disputes no modifications to the Research Program can be made that avoid such infringement or that no license is available on commercially reasonable terms after having attempted in good faith to make such noticemodifications or obtain such a license from such Third Party, then or otherwise fail to agree on or implement plan to avoid such infringement, each Party shall have the Party providing the Notice of Suspension may [***] its performance as set forth in this Section 7.6 if it can show by an opinion of an independent counselright, approved by the other Party upon thirty (whose approval shall not be unreasonably withheld), that the determination of its counsel that a third party’s intellectual property right would be infringed is [***]. Such opinion shall also summarize the underlying facts. The Parties shall cooperate to ensure that all attorney-client privilege and work product privilege shall be protected with respect to the opinion. If the Party providing the Notice of Suspension does not propose an independent counsel, which is [***] 30) days prior written notice to the other Party, then to terminate the Research Program in its entirety or that portion of the Research Program which may be infringing such Third Party patent. Upon any such termination of the Research Program in its entirety, the Parties shall have the rights set forth in Section 10.9.3. Notwithstanding the foregoing, if the non-terminating Party, based on the advice of its patent counsel, continues to believe that the Blocking Patent would not be infringed by the activities of either Party under the Research Program, such non-terminating Party may, within ten (10) business days of its receipt of notice of termination under this Section 10.4, elect, by written notice to the terminating Party, to have the matter referred to an independent counsel shall be appointed patent attorney mutually agreed upon by the ICC International Centre Parties for Expertise in accordance with the rules for Expertise of the International Chamber of Commerceresolution. Such independent counsel patent attorney shall determine whether or not the activities of either Party under the Research Program would likely be found to infringe such Blocking Patent within thirty (30) days after the matter is so referred. Such decision shall be binding upon the Parties for purposes of this Section 10.4. Each Party shall provide (in a [***]timely manner so as to allow a decision to be made within the time frame identified above) to such independent patent attorney all documentation and other information in its possession which may be relevant for such independent patent attorney to evaluate the matter. The expenses of such independent patent attorney shall be borne by the non-terminating Party if it is determined by the independent patent attorney that the activities of either Party under the Research Program would be likely to infringe such Blocking Patent. Otherwise the expenses of such independent patent attorney shall be shared equally by the Parties.