Common use of Enforcement of Patents Clause in Contracts

Enforcement of Patents. Each Party shall promptly notify the other Party of any actual, threatened or alleged infringement of the Developed IP of which it becomes aware. As between the Parties, Genoptix shall have the first right, but not the obligation, to take appropriate action to obtain a discontinuance of such infringement, provided however, if Genoptix has granted to Ambit the exclusive license to the Developed IP set forth in Section 5.3(a), then Ambit shall have the first right, but not the obligation, to take appropriate action to obtain a discontinuance of the infringement in the Field. The Party with the first right to enforce the Developed IP shall have a period of one hundred eighty (180) days after its receipt or delivery of the notice of infringement to elect to so enforce the Developed IP. In the event the Party with the first right to enforce does not so elect (or otherwise obtain a discontinuance of such infringement), it shall so notify the other Party in writing and the other Party shall have the right to take appropriate action to obtain a discontinuance of the infringement. Each Party shall provide the enforcing Party reasonable assistance in such enforcement, at such enforcing Party’s request and expense, including joining such action as a party plaintiff if required by applicable Laws to pursue such action. The enforcing Party shall keep the other Party regularly informed of the status and progress of such enforcement efforts, and shall reasonably consider the other Party’s comments on any such efforts. The enforcing Party shall be solely responsible for any costs and expenses incurred by such Party in such enforcement action and shall retain all recoveries obtained as a result of such enforcement action, provided however, if the enforcing Party is Genoptix and to the extent that Genoptix has not fulfilled any obligation it may have to repay the Owed Expenses under Section 6.2, any recovery retained by Genoptix shall be treated as Net Sales of the Companion Diagnostic by Genoptix subject to the terms of Section 6.2.

Enforcement of Patents. Each Party shall promptly notify the other Party in writing of any actual, alleged or threatened or alleged infringement of the Developed IP AbbVie Patents or Receptos Patents by a Third Party in the Territory of which it such Party becomes awareaware (including alleged or threatened infringement based on the development, commercialization, or an application to market a product containing a Licensed Compound or any Licensed Product in the Territory). As between the Parties, Genoptix AbbVie shall have the first right, but not the obligation, to take appropriate action to obtain a discontinuance of prosecute any such infringement, provided however, if Genoptix has granted to Ambit the exclusive license to the Developed IP set forth in Section 5.3(a), then Ambit shall have the first right, but not the obligation, to take appropriate action to obtain a discontinuance of the infringement in the Field. The Party with Territory at its sole expense (except to the first right to enforce the Developed IP extent any such expense constitutes an Allowable Expense) and AbbVie shall have a period of one hundred eighty (180) days after its receipt or delivery retain control of the notice prosecution of infringement to elect to so enforce the Developed IPsuch claim, suit or proceeding. In the event the Party with the first right to enforce does not so elect (or otherwise obtain a discontinuance of AbbVie prosecutes any such infringement), it AbbVie shall so notify the other Party exercise Commercially Reasonable Efforts in writing this regard and the other Party Receptos shall have the right to take appropriate action to obtain a discontinuance of the infringement. Each Party shall provide the enforcing Party reasonable assistance in such enforcement, at such enforcing Party’s request and expense, including joining such action join as a party plaintiff if required by applicable Laws to pursue such action. The enforcing Party claim, suit or proceeding in the Territory and participate with its own counsel at its own expense; provided that AbbVie shall keep the other Party regularly informed retain control of the status and progress prosecution of such enforcement effortsclaim, suit or proceeding. If AbbVie does not take commercially reasonable steps to prosecute the alleged or threatened infringement in the Territory with respect to such AbbVie Patents or Receptos Patents (i) within *** days following the first notice provided above with respect to such alleged infringement, or (ii) provided such date occurs after the first such notice of infringement is provided, *** Business Days before the time limit, if any, set forth in appropriate laws and shall reasonably consider the other Party’s comments on any such efforts. The enforcing Party shall be solely responsible regulations for any costs and expenses incurred by such Party in such enforcement action and shall retain all recoveries obtained as a result filing of such enforcement actionactions, provided howeverwhichever comes first, if then Receptos may prosecute the enforcing Party is Genoptix and alleged or threatened infringement in the Territory at its own expense (except to the extent that Genoptix has not fulfilled any obligation it may have to repay the Owed Expenses under Section 6.2, any recovery retained by Genoptix shall be treated as Net Sales of the Companion Diagnostic by Genoptix subject to the terms of Section 6.2such expense constitutes an Allowable Expense).

Enforcement of Patents. Each Party 7.1 INVITROGEN shall promptly notify advise ROCHE promptly, and shall furnish documentary proof which is reasonably acceptable to ROCHE, upon its becoming aware of substantial infringement by a third party or parties of an enforceable patent right (1) within POLYMERASE PATENT RIGHTS by the other Party sale of "Significant Quantities" of unlicensed stand-alone enzymes in any actual, threatened or alleged infringement of the Developed IP of which it becomes aware. As between the Parties, Genoptix shall have the first right, but not the obligation, to take appropriate action to obtain a discontinuance of such infringement, provided however, if Genoptix has granted to Ambit the exclusive license to the Developed IP set forth in Section 5.3(a), then Ambit shall have the first right, but not the obligation, to take appropriate action to obtain a discontinuance of the infringement country in the FieldTERRITORY, or (2) within AMPLIFICATION PATENT RIGHTS by the sale of "Significant Quantities" of enzymes not within POLYMERASE PATENT RIGHTS but which enzymes are actively promoted by said third party or parties or their AFFILIATES or distributors for use in AMPLIFICATION PATENT RIGHTS in any country in Enzyme/PCR Research Products 20 v.2061097 the TERRITORY. The Party with the first right to enforce the Developed IP shall have a period Upon receipt of one hundred eighty (180) days after said written information, ROCHE agrees it shall, within its receipt or delivery of the notice of infringement to elect to so enforce the Developed IP. In the event the Party with the first right to enforce does not so elect (or otherwise obtain a discontinuance of such infringement)reasonable business judgment, it shall so notify the other Party in writing and the other Party shall have the right to take appropriate action to obtain a discontinuance of the infringement. Each Party shall provide the enforcing Party reasonable assistance in such enforcement, at such enforcing Party’s request and expense, including joining such action as is required to restrain such infringement. ROCHE shall be in full compliance with its obligations under this Section 7.1 if, within six (6) months of ROCHE having received said written information from INVITROGEN about any one infringing party in a particular country, (1) ROCHE notifies each third party plaintiff if required identified by applicable Laws to pursue such actionacceptable documentary proof of ROCHE's enforceable proprietary position in the country where infringement is occurring and receives from such third parties written assurances, which shall be executed by an officer of each said third party capable of legally binding that party, that it is not infringing ROCHE's rights, or (2) said infringement has stopped, or (3) ROCHE has entered into good faith license negotiations with such third parties, or (4) ROCHE has instituted or is prosecuting an action for patent infringement against at least one infringing third party seller which is active in said country. The enforcing Party above six-month period may be extended with the consent of INVITROGEN. It is agreed and understood that nothing in this Section 7.1 or this Agreement shall keep the other Party regularly informed of the status and progress of such enforcement efforts, and shall reasonably consider the other Party’s comments on require ROCHE to xxx more than one party at a time or to xxx in more than one country at any such efforts. The enforcing Party shall be solely responsible for any costs and expenses incurred by such Party in such enforcement action and shall retain all recoveries obtained as a result of such enforcement action, provided however, if the enforcing Party is Genoptix and to the extent that Genoptix has not fulfilled any obligation it may have to repay the Owed Expenses under Section 6.2, any recovery retained by Genoptix shall be treated as Net Sales of the Companion Diagnostic by Genoptix subject to the terms of Section 6.2one time.

Enforcement of Patents. Each In the event that TCS or Novartis become aware of any actual or threatened infringement of TCS Patents or Novartis Patents in the Field in the Territory, that Party shall promptly notify the other Party of any actual, threatened or alleged infringement of in writing and the Developed IP of which it becomes awareParties shall discuss how best to enforce the Patents. As Unless otherwise agreed to in writing between the Parties, Genoptix Novartis, in the case of the Novartis Patents and the Joint Patents, and TCS, in the case of the TCS Patents, shall have the first right to take such action, at its own expense, as it deems appropriate to xxxxx such infringement including patent litigation against such third party and to use the other Party's name in connection therewith. If Novartis, in the case of the Novartis Patents and the Joint Patents, or TCS, in the case of the TCS Patents, without good reason, does not xxxxx such infringement or commence a particular infringement action within thirty (30) days after becoming aware of the actual or threatened infringement, then, TCS, in the case of the Novartis Patents and the Joint Patents, and Novartis, subject to JHU's rights under the JHU Agreement, in the case of the TCS Patents, shall be entitled to bring such action at its own expense. If either Party, without good reason fails to take appropriate action within twenty-one (21) days after Novartis and/or TCS have received notification of patent certification as set forth in Article 13, the other Party, after notifying the Party which failed to take action in writing, shall be entitled to bring such action at its own expense. The Party bringing an action under this Section 10.4 shall have full control over the conduct of such action, including the settlement thereof, and shall keep the other informed of the status of such action. Notwithstanding the foregoing, either Party shall have the right, but not the obligation, to take appropriate appoint separate counsel to represent them, at its own expense, in any action to obtain a discontinuance of such infringement, provided however, if Genoptix has granted to Ambit the exclusive license to the Developed IP set forth in Section 5.3(a), then Ambit shall have the first right, but not the obligation, to take appropriate action to obtain a discontinuance of the infringement in the Field. The Party with the first right to enforce the Developed IP shall have a period of one hundred eighty (180) days after its receipt or delivery of the notice of infringement to elect to so enforce the Developed IP. In the event the Party with the first right to enforce does not so elect (or otherwise obtain a discontinuance of such infringement), it shall so notify brought by the other Party under this Section 10.4. In any event, TCS and Novartis shall assist one another and cooperate in writing and the other Party shall have the right to take appropriate action to obtain a discontinuance of the infringement. Each Party shall provide the enforcing Party reasonable assistance in such enforcement, at such enforcing Party’s request and expense, including joining any such action as a party plaintiff if required by applicable Laws to pursue such action. The enforcing Party shall keep the other Party regularly informed of the status and progress of such enforcement efforts, and shall reasonably consider at the other Party’s comments on 's request without expense to the requesting Party. TCS and Novartis shall recover their respective actual out-of-pocket expenses (including reasonable attorneys fees), or equitably pro rated portions thereof, associated with any such effortsaction or settlement thereof from any recovery made by any Party. The enforcing Party Any excess amounts shall be solely responsible for any costs shared between the Parties with TCS receiving an amount equal to the result obtained by multiplying the excess amount by applicable royalty rate (as specified in Article 3) and expenses incurred by such Party in such enforcement action and shall retain all recoveries obtained as a result of such enforcement action, provided howeverNovartis receiving the remainder. For example, if the enforcing Party applicable royalty rate is Genoptix and to the extent that Genoptix has not fulfilled any obligation it may have to repay the Owed Expenses under Section 6.2xxxxxxxxxxx, any recovery retained by Genoptix TCS shall be treated as Net Sales receive xxxxxxxxxxx of the Companion Diagnostic by Genoptix subject to excess amount, and Novartis shall receive xxxxxxxxxxx of the terms of Section 6.2excess amount.