Challenges. Licensee will provide written notice to Licensor at least 90 days before Licensee, its Affiliate or Sublicensee initiates or participates directly or indirectly in a Patent Challenge. Licensee, its Affiliate or such Sublicensee will identify all prior art and other evidence material to the Patent Challenge in such written notice. If Licensee, its Affiliate or a Sublicensee participates directly or indirectly in a Patent Challenge, the following applies: (a) [Licensor has the right to terminate this Agreement at any time (including after the termination of such Patent Challenge) upon written notice delivered to Licensee, and this Agreement’s cure provisions for non-monetary breach will not apply; provided that if a Patent Challenge is initiated by a Sublicensee, Licensor will only be permitted to terminate this Agreement if, within 30 days following receipt of notice that Sublicensee has initiated a Patent Challenge, Licensee has failed to terminate the Sublicense or Sublicensee has not vacated the Patent Challenge.]55 OR (a) [Licensor will meet with Licensee and any designee of Licensee within three months after such notice from Licensee and at least semi-annually at the request of Licensee, in a good faith effort to resolve any Patent Challenge; (b) during the pendency of such action or proceeding (including any appeals), the applicable royalty rate(s) will increase to double the applicable royalty rate(s); (c) should the outcome of such action or proceeding determine that any such claim challenged by Licensee or a Sublicensee is valid, enforceable, and/or infringed by a Licensed Product, the royalty rate(s) will increase to triple the applicable royalty rate(s); (d) Licensee and any Sublicensee(s) will have no right to recoup any royalties paid before such action or proceeding or during the period in which such action or proceeding is pending (including on appeal), no matter the outcome of such action or proceeding; and (e) Licensee shall pay all reasonable costs and expenses incurred by Licensor (including, but not limited to, Licensor’s actual attorneys’ fees) in connection with such action or proceeding. Licensor may bill Licensee as frequently as monthly concerning such costs and expenses, and Licensee shall make payment no later than 30 days after receiving an invoice from Licensor. Notwithstanding any other provision of the Agreement, with respect to any such Patent Challenge, Licensor will have full control and authority to defend the Patent Rights in the action or proceeding and will not be required to share any work product concerning such action or proceeding with Licensee or the Sublicensee(s).
Appears in 3 contracts
Samples: License Agreement, License Agreement, License Agreement
Challenges. Licensee will provide written notice to Licensor at least 90 days before LicenseeIf any Licensed Entity brings an action or proceeding, its Affiliate or Sublicensee initiates assists any third party in bringing an action or participates directly proceeding, seeking a declaration or indirectly ruling that any claim in a Patent Challenge. Licenseeany of the Licensed Patents is invalid or unenforceable, its Affiliate or such Sublicensee will identify all prior art and other evidence material asserts that any product or process does not infringe the Licensed Patents, then to the Patent Challenge extent not prohibited by applicable law and in such written notice. If Licenseeaddition to, its Affiliate or a Sublicensee participates directly or indirectly not in a Patent Challengelieu of, the following appliesother rights and remedies of University:
(a) [Licensor has the right to terminate this Agreement at any time (including after the termination of such Patent Challenge) upon written notice delivered to Licensee, and this Agreement’s cure provisions for non-monetary breach will not apply; provided that if a Patent Challenge is initiated by a Sublicensee, Licensor will only be permitted to terminate this Agreement if, within 30 days following receipt of notice that Sublicensee has initiated a Patent Challenge, Licensee has failed to terminate the Sublicense or Sublicensee has not vacated the Patent Challenge.]55 OR
(a) [Licensor will meet with Licensee and any designee of Licensee within three months after such notice from Licensee and at least semi-annually at the request of Licensee, in a good faith effort to resolve any Patent Challenge;
(b) i. during the pendency of such action or proceeding (including any appeals)proceeding, the Royalty rate applicable royalty rate(s) to payments made pursuant to Section 3.B.i with regard to Licensed Products covered by the Licensed Patent in suit will automatically increase to double [***] the applicable royalty rate(s)rate currently set forth in Section 3.B.i;
(c) ii. should the outcome of such action or proceeding determine that any such claim of a Licensed Patent challenged by Licensee or a Sublicensee is valid, valid and enforceable, and/or infringed and the applicable Licensed Product is covered by a the applicable Licensed ProductPatent, then the Royalty rate applicable to payments made pursuant to Section 3.B.i with regard to Licensed Products covered by the Licensed Patent in suit will automatically increase to [***] the royalty rate(s) rate currently set forth in Section 3.B.i. and Company will increase to triple the applicable royalty rate(s)pay, if it had not already, University’s attorneys’ fees, expert witness fees, court costs, third party costs, and other litigation expenses incurred in connection with such action or proceeding;
(d) Licensee and any Sublicensee(s) iii. For clarity, Company will have no right to recoup any royalties Royalties or other amounts paid before such action or proceeding or during the period in which such action or proceeding is pending (including on appeal); Confidential Portions of this Exhibit marked as [***] have been omitted pursuant to a request for confidential treatment and have been filed separately with the Securities and Exchange Commission.
iv. Company will continue to make all payments directly to University and will not, no matter the outcome of such action or proceeding; and
(e) Licensee shall pay all reasonable costs and expenses incurred by Licensor (including, but will not limited seek to, Licensor’s actual attorneys’ fees) in connection with such action pay into any escrow or proceeding. Licensor may bill Licensee as frequently as monthly concerning such costs and expensesother similar account;
v. For clarity, and Licensee shall make payment no later than 30 days after receiving an invoice from Licensor. Notwithstanding any other provision of the Agreement, with respect to any such Patent Challenge, Licensor University will have full control and authority to defend the Patent Rights Licensed Patents in the such an action or proceeding; and
vi. Company will provide written notice to University at least [***] before any Licensed Entity initiates any action or proceeding and seeking a declaration or ruling that any claim of any Licensed Patent is invalid or unenforceable or of its intention to assert that any product or process does not infringe any claim in the Licensed Patent. Company will not be required to share any work product concerning include with such action or proceeding with Licensee or the Sublicensee(s)written notice an identification of all prior art it believes is material.
Appears in 2 contracts
Samples: Exclusive License Agreement (Evelo Biosciences, Inc.), Exclusive License Agreement (Evelo Biosciences, Inc.)
Challenges. Licensee will provide written notice to Licensor at least 90 days before Licensee(i) If LICENSEE or any of LICENSEE’s AFFILIATES, its Affiliate subsidiaries, joint venturers, or Sublicensee other similarly situated persons, entities, or organizations initiates an action or participates directly proceeding or indirectly assists any third party initiating an action or proceeding against BATTELLE seeking a declaration or ruling that any claim of the PATENTS is invalid or unenforceable:
1. during the pendency of any such action or proceeding, the royalty rates and annual minimum royalty due under this Agreement shall double;
2. if the outcome of such action or proceeding results in a Patent Challenge. Licenseedetermination that any issued claim of the PATENTS is found to be valid and infringed by LICENSED PRODUCTS, its Affiliate or such Sublicensee will identify all prior art then the royalty rates and annual minimum royalty due under this Agreement shall triple and LICENSEE shall pay BATTELLE’s costs incurred for defending the validity of the PATENTS, including but not limited to attorneys fees, expert witness fees, court costs, and other evidence material costs incidental to the Patent Challenge in such written noticedefense;
3. If Licensee, its Affiliate or a Sublicensee participates directly or indirectly in a Patent Challenge, the following applies:
(a) [Licensor has the LICENSEE shall have no right to terminate recoup, claim, or otherwise recover any royalties, fees, or other forms of consideration paid to BATTELLE as required in this Agreement at any time (including after the termination of before such Patent Challenge) upon written notice delivered to Licensee, and this Agreement’s cure provisions for non-monetary breach will not apply; provided that if a Patent Challenge action or proceeding is initiated by a Sublicenseeor during the period in which the action or proceeding is pending or under appeal; and
4. LICENSEE shall pay royalties, Licensor will only be permitted to terminate fees, or any forms of consideration required under this Agreement if, within 30 days following receipt of notice that Sublicensee has initiated a Patent Challenge, Licensee has failed directly to terminate the Sublicense or Sublicensee has not vacated the Patent Challenge.]55 OR
(a) [Licensor will meet with Licensee and any designee of Licensee within three months after such notice from Licensee and at least semi-annually at the request of Licensee, in a good faith effort to resolve any Patent Challenge;
(b) BATTELLE during the pendency of such action or proceeding (including and shall not pay any appeals)deposits or payments of royalties, the applicable royalty rate(s) will increase to double the applicable royalty rate(s);fees, or any forms of consideration required under this Agreement into any escrow account.
(cii) should LICENSEE shall provide BATTELLE with at least ninety (90) days written notice to the outcome address set forth in Article 25 before LICENSEE or any of such action LICENSEE’s AFFILIATES, subsidiaries, joint venturers, or proceeding determine that other similarly situated persons, entities, or organizations initiates any such claim challenged by Licensee or a Sublicensee is valid, enforceable, and/or infringed by a Licensed Product, the royalty rate(s) will increase to triple the applicable royalty rate(s);
(d) Licensee and any Sublicensee(s) will have no right to recoup any royalties paid before such action or proceeding or during the period in which such assists any third party initiating an action or proceeding against BATTELLE seeking a declaration or ruling that any claim of the PATENTS is pending (including on appeal)invalid or unenforceable or that but for this Agreement, no matter LICENSED PRODUCTS will not infringe any claim of the outcome PATENTS. LICENSEE shall include with its written notice to BATTELLE a copy of such action or proceeding; and
(e) Licensee shall pay all reasonable costs relevant prior art which will form the basis for arguments and expenses incurred by Licensor (including, but not limited to, Licensor’s actual attorneys’ fees) causes advanced in connection with such action or proceeding. Licensor may bill Licensee as frequently as monthly concerning such costs License Agreement No. 525855 – Amended and expensesRestated (Amendment 1) Advanced Medical Isotope Corporation March 14, and Licensee shall make payment no later than 30 days after receiving an invoice from Licensor. Notwithstanding any other provision of the Agreement, with respect to any such Patent Challenge, Licensor will have full control and authority to defend the Patent Rights in the 2017 Version 1
(iii) Any action or proceeding and filed by LICENSEE or any of LICENSEE’s AFFILIATES, subsidiaries, joint venturers, or other similarly situated persons, entities, or organizations or any third party assisted thereby seeking a declaration or ruling that any claim of the PATENTS is invalid or unenforceable or that but for this Agreement LICENSED PRODUCTS will not infringe any claim of the PATENTS shall be required litigated exclusively in the U.S. District Court for the Eastern District of Washington situated in Richland, Washington, and the parties hereby agree to share submit to the exclusive jurisdiction of such court and waive any work product concerning objection to venue for such action or proceeding with Licensee or the Sublicensee(s)purposes.
Appears in 1 contract
Samples: License Agreement (Vivos Inc)
Challenges. Licensee will provide written notice to Licensor at least 90 days before Licensee(i) If LICENSEE or any of LICENSEE’s AFFILIATES, its Affiliate subsidiaries, joint ventures, or Sublicensee other similarly situated persons, entities, or organizations initiates an action or participates directly proceeding or indirectly assists any third party initiating an action or proceeding against BATTELLE seeking a declaration or ruling that any claim of the PATENTS is invalid or unenforceable:
1. during the pendency of any such action or proceeding, the royalty rates and annual minimum royalty due under this Agreement shall double;
2. if the outcome of such action or proceeding results in a Patent Challenge. Licenseedetermination that any issued claim of the PATENTS is found to be valid and infringed by LICENSED PRODUCTS, its Affiliate or such Sublicensee will identify all prior art LICENSED PROCESS then the royalty rates and annual minimum royalty due under this Agreement shall triple and LICENSEE shall pay BATTELLE’s costs incurred for defending the validity of the PATENTS, including but not limited to attorney’s fees, expert witness fees, court costs, and other evidence material costs incidental to the Patent Challenge in such written noticedefense;
3. If Licensee, its Affiliate or a Sublicensee participates directly or indirectly in a Patent Challenge, the following applies:
(a) [Licensor has the LICENSEE shall have no right to terminate recoup, claim, or otherwise recover any royalties, fees, or other forms of consideration paid to BATTELLE as required in this Agreement at any time (including after the termination of before such Patent Challenge) upon written notice delivered to Licensee, and this Agreement’s cure provisions for non-monetary breach will not apply; provided that if a Patent Challenge action or proceeding is initiated by a Sublicenseeor during the period in which the action or proceeding is pending or under appeal; and
4. LICENSEE shall pay royalties, Licensor will only be permitted to terminate fees, or any forms of consideration required under this Agreement if, within 30 days following receipt of notice that Sublicensee has initiated a Patent Challenge, Licensee has failed directly to terminate the Sublicense or Sublicensee has not vacated the Patent Challenge.]55 OR
(a) [Licensor will meet with Licensee and any designee of Licensee within three months after such notice from Licensee and at least semi-annually at the request of Licensee, in a good faith effort to resolve any Patent Challenge;
(b) BATTELLE during the pendency of such action or proceeding (including and shall not pay any appeals)deposits or payments of royalties, the applicable royalty rate(s) will increase to double the applicable royalty rate(s);fees, or any forms of consideration required under this Agreement into any escrow account.
(ci) should LICENSEE shall provide BATTELLE with at least ninety (90) days written notice to the outcome address set forth in Article 26 before LICENSEE or any of such action LICENSEE’s AFFILIATES, subsidiaries, joint ventures, or proceeding determine that other similarly situated persons, entities, or organizations initiates any such claim challenged by Licensee or a Sublicensee is valid, enforceable, and/or infringed by a Licensed Product, the royalty rate(s) will increase to triple the applicable royalty rate(s);
(d) Licensee and any Sublicensee(s) will have no right to recoup any royalties paid before such action or proceeding or during the period in which such assists any third party initiating an action or proceeding against BATTELLE seeking a declaration or ruling that any claim of the PATENTS is pending (including on appeal), no matter invalid or unenforceable or that LICENSED PRODUCTS or LICENSED PROCESSES do not infringe any claim of the outcome PATENTS. LICENSEE shall include with its written notice to BATTELLE a copy of all relevant prior art which will form the basis for arguments and causes advanced in such action or proceeding; and, together with an explanation of the grounds for these arguments or causes. Failure to provide such notice shall be considered a breach of the agreement and provide grounds for automatic termination of the license.
(eii) Licensee shall pay all reasonable costs and expenses incurred by Licensor (including, but not limited to, Licensor’s actual attorneys’ fees) in connection with such action or proceeding. Licensor may bill Licensee as frequently as monthly concerning such costs and expenses, and Licensee shall make payment no later than 30 days after receiving an invoice from Licensor. Notwithstanding any other provision of the Agreement, with respect to any such Patent Challenge, Licensor will have full control and authority to defend the Patent Rights in the Any action or proceeding filed by LICENSEE or any of LICENSEE’s AFFILIATES, subsidiaries, joint ventures, or other similarly situated persons, entities, or organizations or any third party assisted thereby seeking a declaration or ruling that any claim of the PATENTS is invalid or unenforceable or that LICENSED PRODUCTS or LICENSED PROCESSES do not infringe any claim of the PATENTS shall be litigated exclusively in the U.S. District Court for the Eastern District of Washington situated in Richland, Washington, and will not the Parties hereby agree to submit to the exclusive jurisdiction of such court and waive any objection to venue for such purposes.
(iii) This Paragraph 11C, “Challenges,” shall be required to share included in any work product concerning such action or proceeding with Licensee or sublicenses at any level provided under the Sublicensee(s).authority of this Agreement
Appears in 1 contract
Samples: Exclusive Patent License Agreement