Common use of Enforcement Right Clause in Contracts

Enforcement Right. (i) After Ideaya’s Option Exercise, as between the Parties, Ideaya shall have (A) the sole right, but not the obligation, to bring and control any action or proceeding with respect to infringement or challenge of any Ideaya Patent, and (B) the first right, but not the obligation, to bring and control any action or proceeding with respect to infringement or challenge of any Licensed Patent or Joint Patent in the Field in the Territory relating to a Licensed Product by a Third Party product (“Product Infringement”), in each case at its own expense and by counsel of its own choice. Biocytogen shall have the right, at its own expense, to be represented in any action under subsection (A) or (B), in each case by counsel of its own choice, and Ideaya and its counsel will reasonably cooperate with Biocytogen and its counsel in strategizing, preparing, and litigating any such action or proceeding. If Ideaya fails to bring an action or proceeding with respect to Product Infringement of any Licensed Patent or Joint Patent in the Territory within (X) [***] following the notice of alleged infringement or declaratory judgment or (Y) [***] before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, Biocytogen shall have the right, but not the obligation, to bring and control any such action at its own expense and by counsel of its own choice, and Ideaya shall have the right, at its own expense, to be represented in any such action by counsel of its own choice, and Biocytogen and its counsel will reasonably cooperate with Ideaya and its counsel in strategizing, preparing, and litigating any such action or proceeding. (ii) Except as otherwise agreed by the Parties as part of a cost-sharing arrangement, any recovery or damages realized as a result of such action or proceeding with respect to Licensed Patents or Joint Patents [***]. Ideaya shall have the sole right to retain any recovery or damages realized as a result of any action or proceeding in relation to any Ideaya Patent, and any such amounts shall not be treated as Net Sales for the purposes of this Agreement.

Enforcement Right. If Editas believes that a Third Party is infringing an Adverum Patent through the Commercialization of a product that competes directly with a Product (i) After Ideaya’s Option Exercise“Field Infringement”), as between Editas shall confer with Adverum regarding the Parties, Ideaya possible assertion of such Adverum Patent against such Third Party. [***] shall then have (A) the sole right, but not the obligation, to bring and control any action or proceeding with respect to infringement or challenge of any Ideaya Patent, and such Adverum Patent(s) (Bincluding Joint Patents) the first right, but not the obligation, to bring and control any action or proceeding with respect to infringement or challenge of any Licensed Patent or Joint Patent in the Field and in the Territory relating to a Licensed Product by a Third Party product (“Product Infringement”)Territory, in each case at its own expense and by counsel of its own choice, but which is reasonably acceptable to [***]. Biocytogen [***] shall have the right, at its their own expense, to be represented in any such action under subsection (A) or (B), in each case by counsel of its their own choice, and Ideaya [***] and its their counsel will reasonably cooperate with Biocytogen [***] and its counsel in strategizing, preparing, and litigating any such action or proceeding. If Ideaya [***] fails to bring an action or proceeding with respect to Product Infringement infringement of any Licensed Patent or Joint Adverum Patent in the Field and within the Territory within (XA) [***] days following the a notice of alleged infringement or declaratory judgment by Adverum to Editas or (YB) [***] days before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, Biocytogen and after considering, in good faith, [***] reasons for not bringing an action, [***] shall have the right, but not the obligation, to bring and control any such action at its own expense and by counsel of its own choice, and Ideaya [***] shall have the right, at its own expense, to be represented in any such action by counsel of its own choice, and Biocytogen and its counsel will reasonably cooperate with Ideaya and its counsel in strategizing, preparing, and litigating any such action or proceeding. (ii) Except as otherwise agreed by the Parties as part of a cost-sharing arrangement, any recovery or damages realized as a result of such action or proceeding with respect to Licensed Patents or Joint Patents [***]. Ideaya Adverum shall have retain the sole right right, exclusive of Editas, to retain (A) commence and control any recovery or damages realized as a result enforcement action for Adverum Patents involving Third Party infringement outside of the Field and (B) control the defense of any action Third Party challenges to the validity or proceeding in relation to any Ideaya Patent, and any such amounts shall enforceability of the Adverum Patents not be treated as Net Sales for the purposes arising from an assertion of this AgreementField Infringement.

Enforcement Right. (i) After Ideaya’s Option Exercise, as As between the Parties, Ideaya shall will have (A) the sole right, but not the obligation, to bring and control any action or proceeding with respect to infringement or challenge (and defend to the extent such defense is in connection with an enforcement action initiated by Ideaya) of any Ideaya Patent, and (B) the first right, but not the obligation, to bring and control any action or proceeding with respect to infringement or challenge (and defend to the extent such defense is in connection with an enforcement action initiated by Ideaya) of any Licensed Product Patent or Joint Patent in the Field in the Territory relating with respect to a Licensed Product by a Third Party product (“Product Infringement”), in each case at its own expense and by counsel of its own choice. Biocytogen shall Hengrui will have the right, at its own expense, to be represented in any action under subsection (AB) or (B), in each case by counsel of its own choice, and Ideaya and its counsel will reasonably cooperate with Biocytogen Hengrui and its counsel in strategizing, preparing, and litigating any such action or proceeding. If Ideaya fails to bring an action or proceeding with respect to Product Infringement of any Licensed Product Patent or Joint Patent in the Territory within (X) [***] following the notice of alleged infringement or declaratory judgment or (Y) [***] before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, Biocytogen shall Hengrui will have the right, but not the obligation, to bring and control any such action at its own expense and by counsel of its own choice, and Ideaya shall will have the right, at its own expense, to be represented in any such action by counsel of its own choice, and Biocytogen Hengrui and its counsel will reasonably cooperate with Ideaya and its counsel in strategizing, preparing, and litigating any such action or proceeding. (ii) Except as otherwise agreed by the Parties as part of a cost-sharing arrangement, any recovery or damages realized as a result of such action or proceeding with respect to Licensed Product Patents or Joint Patents [***]in the Territory will be used first to reimburse the Parties’ reasonable and documented out-of-pocket legal expenses relating to the action or proceeding, and any remaining compensatory damages relating to Licensed Products or Joint Patents (including lost sales or lost profits with respect to Licensed Products) and punitive damages will be retained by the Party that brought and controlled such action or proceeding, and in the case that Ideaya brought and controlled such action or proceeding, such remaining compensatory damages for the Territory will be deemed to be Net Sales subject to royalty payments to Hengrui in accordance with the provisions of Section 6.3. Ideaya shall will have the sole right to retain any recovery or damages realized as a result of any action or proceeding solely in relation to any Ideaya Patent, and any such amounts shall will not be treated as Net Sales for the purposes of this Agreement. (iii) For clarity, Hengrui will have the sole right to bring and control any action or proceeding with respect to infringement or challenge (and defend to the extent such defense is in connection with an enforcement action initiated by H▇▇▇▇▇▇) of (A) any Platform Patents or any other Licensed Patents (other than Product Patents) worldwide, and (B) any Licensed Patents or Joint Patents in Greater China, in each case of (A) and (B), at its own expense and by counsel of its own choice.

Enforcement Right. As between the Parties: (i) After Ideaya’s Option Exercise, as between the Parties, Ideaya G1 shall have the sole right, in its sole discretion, to bring and control any legal action to enforce (A) the sole G1 Patents (other than Product-Specific Patents) against any Infringement in the Territory and (B) the G1 Patents (including Product-Specific Patents) against any Infringement in the Field in the Territory that is not Product Infringement, in each case at its own expense as it determines appropriate, provided that G1, through the Patent Working Group, will provide Licensee with prompt notice of any such legal action, and reasonably consider Licensee’s comments with respect thereto. Licensee shall, (1) at G1’s expense, provide reasonable support for such enforcement action to G1 upon G1’s reasonable request; and (2) at Licensee’s expense, have the right, but not the obligation, to bring and control any participate in such enforcement action or proceeding with respect to infringement or challenge at its sole option using counsel of any Ideaya Patent, and its choosing. (Bii) G1 shall have the first right, but not the obligation, to bring and control any legal action or proceeding with respect to infringement or challenge of enforce Product-Specific Patents against any Licensed Patent or Joint Patent Product Infringement in the Field in the Territory relating to a Licensed Product by a Third Party product (“Product Infringement”), in each case at its own expense and by counsel of its own choice. Biocytogen as it determines appropriate; provided that G1 shall have the rightnot agree to any settlement, at its own expense, consent to judgment or other voluntary final disposition in connection with such enforcement action without Licensee’s consent (such consent not to be represented unreasonably withheld, conditioned or delayed) if such settlement, consent to judgment or other voluntary final disposition would (1) result in the admission of any action under subsection (A) liability or fault on behalf of Licensee, its Affiliates or Sublicensees or (B2) result in or impose any payment obligations on Licensee, its Affiliates or its Sublicensees (to the extent not agreed to be reimbursed or paid by G1), provided that G1 shall provide Licensee with reasonable prior written notice thereof and shall consider in each case by counsel of its own choice, good faith Licensee’s reasonable and Ideaya and its counsel will reasonably cooperate with Biocytogen and its counsel in strategizing, preparing, and litigating any timely comments regarding such action or proceedingproposed settlement. If Ideaya G1 fails to bring an such legal action or proceeding with respect otherwise take reasonable steps to remedy such Product Infringement of any Licensed Patent or Joint Patent in the Territory within (X) [***] following the notice of alleged infringement becoming aware of such Product Infringement (or declaratory judgment or (Y) [***] before of the time limitreceipt of a Notice of Paragraph IV Patent Certification as described in Section 12.3(b)), if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, Biocytogen then Licensee shall have the right, but not the obligation, [***] (or such shorter period as is necessary under Applicable Law to bring or maintain such action), at Licensee’s expense, to institute legal action against such Product Infringement in the Field in the Territory; provided that Licensee shall not agree to any settlement, consent to judgment or other voluntary final disposition in connection with such enforcement action without G1’s consent (such consent to be withheld in G1’s sole discretion) if such settlement, consent to judgment or other voluntary final disposition would (A) result in the admission of any liability or fault on behalf of G1, its Affiliates or Third Party Licensees, (B) result in or impose any payment obligations upon G1, its Affiliates or Third Party Licensees (to the extent not agreed to be reimbursed or paid by Licensee), (C) admit invalidity or unenforceability of a G1 Patent, question the validity or enforceability of any G1 Patent, or is reasonably expected to result in any challenge to the validity of any G1 Patent, or (D) subject G1, its Affiliates or Third Party Licensees to an injunction or otherwise limit G1’s ability to take any actions or refrain from taking any actions under this Agreement or with respect to any Licensed Compound or Licensed Product anywhere in the world, including the Territory. (iii) The Party that does not bring legal action against Product Infringement pursuant to Section 12.3(c)(i) or Section 12.3(c)(ii) shall (A) provide reasonable support for such enforcement action to the other Party upon such other Party’s reasonable request [***] (including through such Party’s participation in the Litigation Working Group as further described in Section 12.3(e)(ii)); and control any such action at its own expense and by counsel of its own choice, and Ideaya shall (B) have the right, but not the obligation, to participate in such enforcement action at its own expense, to be represented in any such action by counsel of its own choice, and Biocytogen and its counsel will reasonably cooperate with Ideaya and its counsel in strategizing, preparing, and litigating any such action or proceeding. (ii) Except as otherwise agreed by the Parties as part of a cost-sharing arrangement, any recovery or damages realized as a result of such action or proceeding with respect to Licensed Patents or Joint Patents sole option [***]. Ideaya shall have the sole right to retain any recovery or damages realized as a result ] of any action or proceeding in relation to any Ideaya Patent, and any such amounts shall not be treated as Net Sales for the purposes of this Agreementits choosing.

Enforcement Right. (i) After Ideaya’s Option Exercise, as between the Parties, Ideaya Exelixis shall have (A) the sole right, but not the obligation, first right to bring and control any legal action or proceeding in connection with such Product Infringement at its own expense as it reasonably determines appropriate; provided, however, that with respect to infringement any action involving any Adagene Patent or challenge Adagene Platform Patent, Exelixis shall only have the right to enforce such Adagene Patent or Adagene Platform Patent, as applicable, to the extent such Patent directly and exclusively relates to a Compound or Product (and not to any compound or product that is not a Compound or Product). Exelixis shall not compromise or settle any such litigation in a way that could reasonably be expected to adversely affect the validity or enforceability of any Ideaya PatentAdagene Patent or Adagene Platform Patent or result in an admission of liability on the part of Adagene, without Adagene’s prior written consent, such consent not to be unreasonably withheld. If Exelixis (i) elects to not bring such legal action against a Product Infringement (the decision of which Exelixis shall inform Adagene promptly) or (ii) Exelixis otherwise fails to bring such legal action against a Product Infringement within [***] after first becoming aware of such Product Infringement, then, to the extent such Product Infringement pertains solely to one or more Adagene Patents or Adagene Platform Patents and (B) not to any Product Patents, Adagene shall have the first right, but not the obligation, right to bring and control any legal action or proceeding in connection with respect to infringement or challenge of any Licensed Patent or Joint Patent in the Field in the Territory relating to a Licensed such Product by a Third Party product (“Product Infringement”), in each case Infringement at its own expense and by counsel of its own choice. Biocytogen as it reasonably determines appropriate after consultation with Exelixis; provided, however, that Adagene shall not have the right, at its own expense, right to be represented in any action under subsection (A) or (B), in each case by counsel of its own choice, and Ideaya and its counsel will reasonably cooperate with Biocytogen and its counsel in strategizing, preparing, and litigating bring any such action to the extent it relates to a Patent claiming the composition of matter or proceeding. If Ideaya fails to bring an action or proceeding with respect to Product Infringement method of use of any Licensed Patent Compound or Joint Patent Product without Exelixis’ prior written consent, which Exelixis may grant in the Territory within (X) [***] following the notice of alleged infringement or declaratory judgment or (Y) [***] before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, Biocytogen shall have the right, but not the obligation, to bring and control any such action at its own expense and by counsel of its own choice, and Ideaya shall have the right, at its own expense, to be represented in any such action by counsel of its own choice, and Biocytogen and its counsel will reasonably cooperate with Ideaya and its counsel in strategizing, preparing, and litigating any such action or proceedingsole discretion. (ii) Except as otherwise agreed by the Parties as part of a cost-sharing arrangement, any recovery or damages realized as a result of such action or proceeding with respect to Licensed Patents or Joint Patents [***]. Ideaya shall have the sole right to retain any recovery or damages realized as a result of any action or proceeding in relation to any Ideaya Patent, and any such amounts shall not be treated as Net Sales for the purposes of this Agreement.