Enforcement of Patent Rights. If either Party becomes aware of a suspected infringement of any Exelixis Patents, Joint Invention Patents or Sole Invention Patents through the development, manufacture or sale of a Product by a Third Party, such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. [ * ] shall have the first right, but shall not be obligated, to bring an infringement action against such Third Party at its own expense and by counsel of its own choice, and [ * ] shall have the right to participate in such action, at its own expense and by counsel of its own choice. If [ * ] fails to bring such an action or proceeding prior to the earlier of: (a) [ * ] following [ * ] receipt of notice of alleged infringement; or (b) [ * ] before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, [ * ] shall have the right to bring and control any such action, at its own expense and by counsel of its own choice, and [ * ] shall have the right to be represented in any such action, at its own expense and by counsel of its own choice. If a Party brings an infringement action pursuant to this Section 9.4, the other Party will reasonably assist the enforcing Party (at the enforcing Party’s expense) in such actions or proceedings if so requested, and will lend its name to such actions or proceedings if required by law in order for [ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. the enforcing Party to bring such action. Neither Party shall have the right to settle any patent infringement litigation under this Section 9.4 in a manner that diminishes the rights or interests of the other Party without the prior written consent of such other Party, such consent not to be unreasonably withheld or delayed. Except as otherwise agreed to by the Parties as part of a cost sharing arrangement, any recovery realized as a result of such litigation, after reimbursement of any litigation expenses of Sanofi-Aventis and Exelixis, shall be [ * ], except that [ * ].
Appears in 1 contract
Samples: License Agreement (Exelixis Inc)
Enforcement of Patent Rights. If either Party becomes aware 13.5.1 LIGAND and SB each shall use good faith efforts to enforce their own PATENT RIGHTS against infringers, and to consult with the other party both prior to and during said enforcement. Upon learning of a suspected significant and continuing infringement of any Exelixis Patents, Joint Invention Patents or Sole Invention Patents through the development, manufacture or sale of a Product such PATENT RIGHTS by a Third PartyTHIRD PARTY in the FIELD, such Party LIGAND or SB, as the case may be, shall notify promptly provide notice to the other Party promptlyparty in writing of the fact and shall supply the other party with all evidence possessed by the notifying party pertaining to and establishing said infringement(s).
13.5.2 LIGAND may elect to initiate legal action with respect to LIGAND SOLE PATENT RIGHTS against such THIRD PARTY in its sole discretion, and following SB shall cooperate fully with LIGAND in any such notificationaction at its own out-of-pocket expense, the Parties shall confer. [ * ] further provided that SB shall have the first right, but shall not be obligatedthe obligation, to bring an infringement action against such Third Party at its own expense and by counsel of its own choice, and [ join as a party provided it funds up to *** ] shall have the right to participate in such action, at its own expense and by counsel of its own choice. If [ * ] fails to bring such an action or proceeding prior to the earlier of: (a) [ * ] following [ * ] receipt of notice of alleged infringement; or (b) [ * ] before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, [ * ] shall have the right to bring and control any such action, at its own expense and by counsel of its own choice, and [ * ] SB shall have the right to be represented in any such action, at its own expense and by legal counsel of its own choicechoosing at its sole expense. If LIGAND, within *** of receipt of such notice or such lesser period of time if a Party brings further delay would result in material harm, or the loss of a material right, has not commenced legal action against an infringement infringer whose infringing product competes with a PRODUCT and is embraced by a valid claim of said LIGAND SOLE PATENT RIGHTS in that country, which LIGAND SOLE PATENT RIGHTS are licensed to SB hereunder, upon written notice from SB, LIGAND shall promptly either: (i) initiate such action; or (ii) authorize SB to commence such action.
13.5.3 SB may elect to initiate legal action pursuant with respect to this Section 9.4, the other Party will reasonably assist the enforcing Party (at the enforcing Party’s expense) PATENT RIGHTS owned jointly or solely by SB against such THIRD PARTY in such actions or proceedings if so requestedits sole discretion, and will lend LIGAND shall cooperate fully with SB in any such action at its name own out-of-pocket expense, further provided that LIGAND shall have the right, but not the obligation, to such actions or proceedings if required by law in order for [ join as a party provided it funds up to *** ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. the enforcing Party to bring such action. Neither Party LIGAND shall have the right to settle be represented by legal counsel of its own choosing at its sole expense. If SB, within *** of receipt of such notice or such lesser period of time if a further delay would result in material harm, or the loss of a material right, has not commenced legal action against an infringer whose infringing product is embraced by a valid claim of said SB PATENT RIGHTS in that country, upon written notice from LIGAND, SB shall promptly either: (i) initiate such action; or (ii) authorize LIGAND to commence such action.
13.5.4 Notwithstanding anything to the contrary, any patent infringement litigation settlement of such legal action under Section 13.5 by the initiating party shall not require the consent of the non-initiating party unless such settlement would require the other party to be subject to an injunction or to make a monetary payment or would otherwise adversely affect the other party's rights under this Section 9.4 in a manner that diminishes the rights or interests of the other Party without the prior written consent of such other PartyAgreement, and such consent will not to be unreasonably withheld withheld. The party whose PATENT RIGHTS allegedly are being infringed shall not be obligated to bring or delayedmaintain more than one such suit at any time with respect to claims directed to any one method of manufacture or composition of matter. Except as otherwise agreed to by All monies recovered upon the Parties as part final judgment or settlement of a cost sharing arrangement, any recovery realized as a result of such litigationsuit shall be shared, after reimbursement of expenses, by LIGAND and SB pro rata according to the respective percentages of costs borne by each party in such suit pursuant to this Section 13.5.
13.5.5 Notwithstanding the foregoing, LIGAND and SB shall fully cooperate with each other in the planning and execution of any litigation expenses of Sanofi-Aventis action to enforce such PATENT RIGHTS, and Exelixis, shall be [ * ], except that [ * ]join suit if required by law to do so in order to bring such action.
Appears in 1 contract
Samples: Leptin Research, Development and License Agreement (Ligand Pharmaceuticals Inc)
Enforcement of Patent Rights. If either Party becomes aware of a suspected infringement of any Exelixis Patents, Sanofi-Aventis Patents, or Joint Invention Patents or Sole Invention Patents through the development, manufacture or sale of a Product by a Third Party, such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. [ * ] shall have the first right, but shall not be obligated, to bring an infringement action against such Third Party at its own expense and by counsel of its own choice, and [ * ] shall have the right to participate in such action, at its own expense and by counsel of its own choice. If [ * ] fails to bring such an action or proceeding prior to the earlier of: (a) [ * ] following [ * ] receipt of notice of alleged infringement; or (b) [ * ] before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, [ * ] shall have the right to bring and control any such action, at its own expense and by counsel of its own choice, and [ * ] shall have the right to be represented in any such action, at its own expense and by counsel of its own choice. If a Party brings an infringement action pursuant to this Section 9.410.4, the other Party will reasonably assist the enforcing Party (at the enforcing Party’s expense) in such actions or proceedings if so requested, and will lend its name to such actions or proceedings if required by law in order for [ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. expense) in such actions or proceedings if so requested, and will lend its name to such actions or proceedings if required by law in order for the enforcing Party to bring such action. Neither Party, and no Third Party having a license under any Exelixis Patent or Joint Invention Patent shall have the right to settle any patent infringement litigation under this Section 9.4 10.4 in a manner that diminishes the rights or interests of the other Party without the prior written consent of such other Party, such consent not to be unreasonably withheld or delayed. Except as otherwise agreed to by the Parties as part of a cost sharing arrangement, any recovery realized as a result of such litigation, after reimbursement of any litigation expenses of Sanofi-Aventis and Exelixis, shall be [ * ], except that [ * ].
Appears in 1 contract
Enforcement of Patent Rights. 5.5.1 If either Party becomes aware of a suspected infringement of any Exelixis Patent Right within the Joint Patents, Joint Invention Patents or Sole Invention Patents through the developmentany Patent Right within either Party's solely owned Patent Rights claiming, manufacture covering or sale of directed to a Development Candidate or New Product that is subject to Section 5.3, is [***] infringed by a Third PartyParty through the manufacture, use, sale, offer for sale or importation of any product (an "INFRINGEMENT"), the Party first having knowledge of such Party infringement shall promptly notify the other Party promptly, and following such notification, in writing. Such notice shall set forth the Parties shall confer. [ * ] facts of the Infringement in reasonable detail.
5.5.2 Hyseq shall have the first right, but shall not be obligatedan obligation, to bring an infringement action against such Third Party at its own expense institute, prosecute and by control, using counsel of its own Hyseq's choice, any action or proceeding with respect to an Infringement of a patent within the Joint Patents, or its solely owned Patent Rights claiming, covering or directed to a Development Candidate or New Product, in the Hyseq Territory and [ * ] shall have such Other Territory as directed by the right to participate in such action, at its own expense and by counsel of its own choiceJRDC. If [ * ] Hyseq initiates any such action or proceeding, Kirin agrees [***]. In the event that Hyseq fails to bring such institute an action or proceeding prior with respect to the earlier of: (a) [ * such Infringement within a period of [***] following [ * ] receipt of after notice of alleged infringement; such Infringement, and fails thereafter to prosecute such action or (b) [ * ] before the time limitproceeding, if any, set forth in the appropriate laws and regulations for the filing of such actions, [ * ] Kirin shall have the right right, but not the obligation, to bring institute and/or prosecute and control any an action or proceeding in its name with respect to such action, at its own expense and an Infringement by counsel of its own Kirin's choice. In the event that Kirin institutes any such action or proceeding, and [ * ] Hyseq agrees [***].
5.5.3 Kirin shall have the right first right, but not an obligation, to be represented institute, prosecute and control, using counsel of Kirin's choice, any action or proceeding with respect to an Infringement, of a patent within the Joint Patents, or its solely owned Patent Rights claiming, covering or directed to a Development Candidate or New Product, in the Kirin Territory and such Other Territory as directed by the JRDC. If Kirin initiates any such actionaction or proceeding, at Hyseq agrees [***]. In the event that Kirin fails to institute and an action or proceeding with respect to such Infringement within a period of [***] after notice of such Infringement, and fails thereafter to prosecute such action or proceeding, Hyseq shall have the right, but not the obligation, to institute and/or prosecute and control an action or proceeding in its own expense and name with respect to such an Infringement by counsel of its own Hyseq's choice. If In the event that Hyseq institutes any such action or proceeding, Kirin agrees [***].
5.5.4 Any recovery obtained by a Party brings an infringement action pursuant to enforcing one or more patents, in accordance with this Section 9.45.5 (the "ENFORCING PARTY"), the other Party will reasonably assist the enforcing Party (at the enforcing Party’s expense) in such actions whether by judgment, award, decree or proceedings if so requested, and will lend its name to such actions or proceedings if required by law in order for [ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. the enforcing Party to bring such action. Neither Party shall have the right to settle any patent infringement litigation under this Section 9.4 in a manner that diminishes the rights or interests of the other Party without the prior written consent of such other Party, such consent not to be unreasonably withheld or delayed. Except as otherwise agreed to by the Parties as part of a cost sharing arrangement, any recovery realized as a result of such litigation, after reimbursement of any litigation expenses of Sanofi-Aventis and Exelixissettlement, shall be [ * [***], except that [ * . Any remainder of the recovery shall be [***].
Appears in 1 contract
Samples: Collaboration Agreement (Hyseq Inc)
Enforcement of Patent Rights. If either Party becomes aware LIGAND and TAP each shall use good faith efforts to enforce their respective Patents Rights licensed hereunder, including their sole Inventions or Joint Inventions made under the Research Program, against infringers, and to consult with the other party both prior to and during said enforcement. Upon learning of infringement of such Patent Rights by a third party, LIGAND or TAP, as the case may be, promptly shall provide notice to the other party in writing of the fact and shall supply the other party with all evidence possessed by the notifying party pertaining to and establishing said infringement(s). The party whose Patent Rights allegedly are being infringed shall have *** from the date of receipt of notice under this Section 13.5, or such lesser period of time if a *** period would result in material harm to, or the loss of a suspected infringement material right of, the other party (e.g., in the case of the filing of a paragraph 4 ANDA certification pursuant to 21 CFR 314.95 by one or more third parties), to file suit against at least one of the infringers, at its sole expense, following consultation with the other party. The party whose Patent Rights allegedly are being infringed shall not be obligated to bring or maintain more than one such suit at any time, unless the failure to bring more than one suit would result in material harm to, or the loss of a material right of the other party (e.g., in the case of the filing of a paragraph 4 ANDA certification pursuant to 21 CFR 314.95 by one or more third parties). *** If the party whose Patent Rights allegedly are being infringed does not, within *** of receipt of such notice or such lesser period of time if a *** period would result in material harm to, or the loss of a material right of, the other party (e.g., in the case of the filing of a paragraph 4 ANDA certification pursuant to 21 CFR 314.95 by one or more third parties), file suit to enforce its Patent Rights against at least one infringing party in a country of the Territory, the other party shall have the right to take whatever action it deems appropriate in its own name or, if required by law, in the name of the party whose Patent Rights allegedly are being infringed, to enforce such Patent Rights. LIGAND and TAP shall fully cooperate with each other in the planning and *** Portions of this page have been omitted pursuant to a request for Confidential Treatment and filed separately with the Commission. execution of any Exelixis Patentsaction to enforce Patent Rights. The other party shall be fully consulted during any enforcement action, Joint Invention Patents including any settlement negotiations, and shall, to the extent legally permissible under the law, be entitled to join such action at its own expense. In addition, the other party shall be required to join such enforcement action at the enforcing party's expense if (i) this is requested by the enforcing party and (ii) is required to maintain any such enforcement action. All monies recovered upon the final judgment or Sole Invention Patents through settlement of any suit under this Section 13.5 shall, after reimbursement of expenses, (a) to the developmentextent such infringement occurred prior to First Commercial Sale, manufacture or be shared by LIGAND and TAP in a ratio equal to *** percent (***%) for the party who pursued such action to *** percent ( *** %) for the other party and (b) to the extent such infringement occurred after First Commercial Sale, be treated as *** with respect to the division between the parties. The parties shall confer and agree upon strategies for enforcement of jointly owned Patent Rights. In the absence of any other agreement as to the enforcement of jointly owned Patent Rights, during the Research Program Term, TAP shall have the right to enforce jointly owned Patent Rights arising from sale of a Licensed Product by a Third Party, such Party shall notify within the other Party promptly, TAP Field and following such notification, the Parties shall confer. [ * ] LIGAND shall have the first rightright to enforce jointly owned Patent Rights arising from sale of a product within the LIGAND Field. After expiration or termination of the Research Program Term, but in the absence of any agreement between the parties, each party shall not be obligated, have the right to bring an infringement action against such Third Party enforce the jointly owned Patent Rights at its own expense and by counsel retain any award of its own choice, damages and [ * ] shall have the right to participate in such action, at its own expense and by counsel of its own choice. If [ * ] fails to bring such an action or proceeding prior to the earlier of: (a) [ * ] following [ * ] receipt of notice of alleged infringement; or (b) [ * ] before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, [ * ] shall have the right to bring and control any such action, at its own expense and by counsel of its own choice, and [ * ] shall have the right to be represented in any such action, at its own expense and by counsel of its own choice. If a Party brings an infringement action pursuant to this Section 9.4, the other Party will reasonably assist the enforcing Party (at the enforcing Party’s expense) in such actions or proceedings if so requested, and will lend its name to such actions or proceedings if required by law in order for [ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. the enforcing Party to bring such action. Neither Party shall have the right to settle any patent infringement litigation under this Section 9.4 in a manner that diminishes the rights or interests of the other Party without the prior written consent of such other Party, such consent not to be unreasonably withheld or delayed. Except as otherwise agreed to by the Parties as part of a cost sharing arrangement, any recovery realized as a result of such litigation, after reimbursement of any litigation expenses of Sanofi-Aventis and Exelixis, shall be [ * ], except that [ * ]expenses.
Appears in 1 contract
Samples: Research and Development (Ligand Pharmaceuticals Inc)
Enforcement of Patent Rights. (a) If either Party becomes aware of a suspected infringement of any Exelixis Patents, Joint Invention Patents Dendreon Patent or Sole Invention Patents through Kirin Patent in the development, manufacture or sale of a Product Field is infringed by a Third Party, the Party to this Agreement first having knowledge of such Party infringement shall promptly notify the other Party promptly, and following in writing. The notice shall set forth the facts of such notification, the Parties shall confer. [ * ] infringement in reasonable detail.
(b) Dendreon shall have the first right, but not the obligation to institute, prosecute and control any action or proceeding with respect to infringement of Dendreon Patents in the Dendreon Territory, Kirin Patents in North America and patents abandoned by Kirin pursuant to Section 8.3.
(c) Kirin shall have the right, but not be obligatedthe obligation, to institute, prosecute and control any action or proceeding with respect to infringement of Dendreon Patents in the Kirin Territory, Kirin Patents in the Kirin Territory and the rest of the world except North America and the Joint Territory, and patents abandoned by Dendreon pursuant to Section 8.2.
(d) If a Party given the right to enforce a Kirin Patent or Dendreon Patent pursuant to Section 8.6(b) or Section 8.6(c) fails to bring an action or proceeding against a suspected infringer within a period of ninety (90) days after having knowledge of such infringement in the Field, the other Party shall have the right to bring and control an action against such Third Party at its own expense and infringer by counsel of its own choice, and [ * ] shall have the right to participate in such action, at its own expense and by counsel of its own choice. If [ * ] fails to bring such an action or proceeding prior to the earlier of: (a) [ * ] following [ * ] receipt of notice of alleged infringement; or (b) [ * ] before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, [ * ] shall have the right to bring and control any such action, at its own expense and by counsel of its own choice, and [ * ] non-enforcing Party shall have the right to be represented in any such action, at its own expense and action by counsel of its own choice. If a choice at its own expense.
(e) The Party brings controlling an action involving any infringement action pursuant to this Section 9.4, in the Field shall consider in good faith the interests of the other Party will reasonably assist the enforcing Party (at the enforcing Party’s expense) in such actions or proceedings if so requesteddoing, and will lend its name shall not settle or consent to an adverse judgment in any such actions or proceedings if required by law in order for [ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. the enforcing Party to bring such action. Neither Party shall action which would have the right to settle any patent infringement litigation under this Section 9.4 in a manner that diminishes material adverse effect on the rights or interests of the other Party without the prior express written consent of such other Party. If one Party brings any such action or proceeding, such consent not the other Party agrees to be unreasonably withheld or delayed. Except as otherwise agreed to by the Parties as part of a cost sharing arrangement, any recovery realized joined as a result Party plaintiff if necessary to prosecute the action and to give the first Party reasonable assistance and authority to file and prosecute the suit. In each case relating to infringement within the Field, each Party shall bear the costs of such litigationits enforcement of the Patent rights discussed in this section and retain for its own account any amounts received from Third Parties; provided, after reimbursement of any litigation expenses of Sanofi-Aventis and Exelixishowever, shall be [ * ], except that [ * ].any
Appears in 1 contract