INFRINGEMENT AND OTHER ACTIONS. 7.1 LICENSEE and PSRF shall promptly provide written notice, to the other party, of any alleged infringement by a third party of any patent licensed under PATENT RIGHTS and provide such other party with any available evidence of such infringement. If necessary, a prima facie determination of infringement shall be made by an independent patent attorney satisfactory to both PSRF and LICENSEE. 7.2 During the term of the License Agreement, LICENSEE shall have the initial right, but not the obligation, to prosecute and/or defend, at its own expense, utilizing counsel of its own choice, any infringement of, and/or challenge to, the PATENT RIGHTS. In furtherance of such right, PSRF hereby agrees that PSRF may be legally joined as a party in any such suit, without expense to PSRF. Before LICENSEE commences an action hereunder, it shall consult with PSRF, and give careful consideration to the views of PSRF and the potential impact of litigation on PSRF. This shall include a face-to-face meeting between the parties’ designated representatives prior to the initiation of litigation. No settlement, consent judgment or other voluntary, final disposition of the suit may be entered into without the consent of PSRF, which consent shall be timely given and not unreasonably be withheld, unless such settlement does not materially affect the rights of PSRF. LICENSEE agrees to keep PSRF reasonably informed as to the status of any such action and to provide copies to PSRF, upon request by PSRF, of any papers or information relevant to the prosecution of any such action. LICENSEE shall timely inform PSRF of any offer for settlement presented by a third party for any such action and LICENSEE shall consider PSRF’s input in deciding whether or not to accept any such settlement offer. The total cost of any such action, commenced or defended solely by the LICENSEE, shall be borne by the LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to pay LICENSEE the cost paid out by LICENSEE in taking such action. Any funds remaining therefrom will be treated as NET SALES under this License Agreement, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties. 7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PSRF at any time prior thereto of its intention not to bring suit against any alleged infringer in the TERRITORY for the FIELD OF USE, then, and in those events only, PSRF shall have the right, but not the obligation, at its own expense and utilizing counsel of its own choice, to prosecute any infringement of, and/or defend any challenge to, the PATENT RIGHTS. Before PSRF commences any action hereunder, it shall consult with LICENSEE and give careful consideration to the views of LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties. 7.4 In the event the parties hereto agree to share the costs of an action initiated hereunder, any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to reimburse the parties costs paid out in the action and the remainder shall be divided equally. 7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against PSRF, LICENSEE, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action, at its own expense; however, LICENSEE shall have the primary obligation to defend the patent at its expense. 7.6 In any infringement suit either party may institute to enforce the PATENT RIGHTS pursuant to this License Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like. 7.7 LICENSEE, during the exclusive period of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to grant a sublicense to an infringer under Article 7.1 in the TERRITORY for the FIELD OF USE for future use of the PATENT RIGHTS. Any fees received shall be treated as sublicense fees according to Article 3.2(ii). 7.8 Each party hereto agrees that it and its AFFILIATES will not challenge the validity of the PATENT RIGHTS.
Appears in 3 contracts
Samples: License Agreement (Innovive Pharmaceuticals, Inc.), License Agreement (Innovive Pharmaceuticals, Inc.), License Agreement (Innovive Pharmaceuticals, Inc.)
INFRINGEMENT AND OTHER ACTIONS. 7.1 A. LICENSEE and PSRF LICENSOR shall promptly provide written notice, to the other party, of any alleged infringement by a third party Third Party of any patent licensed under PATENT RIGHTS the Licensed Patents and provide such other party with any available evidence of such infringement. If necessaryLICENSOR and the officers of LICENSEE shall confer to determine in good faith an appropriate course of action to enforce such Licensed Patents or other wise xxxxx the infringement thereof. LICENSEE and LICENSOR shall promptly provide written notice, a prima facie determination to the other party, of infringement any potential or actual declaratory judgment challenge to the Licensed Patents and shall be made by confer to determine in good faith an independent patent attorney satisfactory appropriate course of action in response to both PSRF and LICENSEEsuch challenge.
7.2 B. During the term of the License this Agreement, LICENSEE shall will have the initial right, but not the obligation, to prosecute and/or defend, obligation at its own expense, expense and utilizing counsel of its own choice, to prosecute any infringement of, of and/or defend any declaratory judgment challenge to, the PATENT RIGHTSLicensed Patents. In furtherance of such right, PSRF LICENSOR hereby agrees that PSRF LICENSEE may be legally joined join LICENSOR as a party in any such suit, without expense to PSRF. Before LICENSEE commences an action hereunderLICENSOR, it shall consult with PSRF, and give careful consideration to the views of PSRF and the potential impact of litigation on PSRF. This shall include a face-to-face meeting between the parties’ designated representatives prior to the initiation of litigation. No settlement, consent judgment or other voluntary, voluntary final disposition of any such suit that would adversely affect the suit rights of LICENSOR may be entered into without the written consent of PSRFLICENSOR, which consent shall not be timely given and not unreasonably be withheld, unless such settlement does not materially affect the rights of PSRF. LICENSEE agrees to keep PSRF reasonably informed as to the status of will indemnify and hold LICENSOR harmless against any and all damages, settlements, costs, expenses, penalties, tines or liability (including, without limitation, reasonable attorneys’ fees) that may be found or assessed against LICENSOR in any such action and to provide copies to PSRFsuit other than those resulting from LICENSOR’s gross negligence or willful misconduct,
C. Any recovery, upon request award or damages for infringement or other moneys derived by PSRFLICENSEE in any suit under Section 9B, of any papers whether by judgment or information relevant to the prosecution of any such action. LICENSEE shall timely inform PSRF of any offer for settlement presented by a third party for any such action and LICENSEE shall consider PSRF’s input in deciding whether or not to accept any such settlement offer. The total cost of any such action, commenced or defended solely by the LICENSEEsettlement, shall be borne applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to the suit and then to LICENSOR for any royalties credited in accordance with Section 9D. The balance remaining from any such recovery will be treated as royalties received by the LICENSEE. Any funds resulting LICENSEE from such action, whether a sublicensee and shared by LICENSOR and LICENSEE in an accordance with Section 3C(i) hereof.
D. LICENSEE may credit up to fifty percent (50%) of any out-of-court settlement or through a judgment in the courts will be used first to pay LICENSEE the cost paid out pocket litigation costs incurred by LICENSEE in taking any country pursuant to Section 9B against royalties thereafter payable to LICENSOR hereunder for such actioncountry and apply the same toward one-half of its actual, reasonable out-of-pocket litigation costs. Any funds remaining therefrom If fifty percent (50%) of such out-of-pocket litigation costs in such country exceeds fifty percent (50%) of royalties payable to LICENSOR for such country in any year in which such costs are incurred, then the portion of the fifty percent (50%) of the out-of-pocket litigation costs in excess of’ such fifty percent (50%) of the royalties payable will be treated as NET SALES under this License Agreement, with the exception of amounts awarded carried over and credited against royalty payments in future years for treble, exemplary or punitive damages, which shall be divided equally between the partiessuch country.
7.3 E. If within six two (62) months after having been notified receiving notice of any alleged infringementinfringement of the Licensed Patents, LICENSEE shall have been unsuccessful has not notified in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement writing LICENSOR of LICENSEE’S intended action, or if LICENSEE shall notify PSRF notifies LICENSOR at any time prior thereto thereto, of its intention not to bring suit against any the alleged infringer or to defend the Licensed Patents in the TERRITORY for the FIELD OF USEa declaratory judgment action, then, and in those events only, PSRF shall LICENSOR will have the right, but not the obligation, at its own expense and utilizing counsel of its own choice, to prosecute any infringement of, and/or defend any declaratory judgment challenge to, the PATENT RIGHTSLicensed Patents. Before PSRF commences LICENSOR may, for such purposes, join LICENSEE as a party plaintiff. LICENSOR will keep any action hereunderrecovery, it shall consult with LICENSEE award or damages for infringement or other moneys derived therefrom, whether by judgment or settlement, and give careful consideration such will not be applicable to the views any royalty obligation of LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.4 F. In the event the parties hereto agree any suit to share the costs of an action initiated hereunder, any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to reimburse the parties costs paid out in the action and the remainder shall be divided equally.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against PSRF, LICENSEE, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action, at its own expense; however, LICENSEE shall have the primary obligation to enforce and/or defend the patent at its expense.
7.6 In any infringement suit either party may institute to enforce the PATENT RIGHTS Licensed Patents pursuant to this License AgreementSection 9, the other party hereto not in control of such suit shall, at the request and expense of the party initiating such suitcontrolling party, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
7.7 LICENSEE, during the exclusive period of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to grant a sublicense to an infringer under Article 7.1 in the TERRITORY for the FIELD OF USE for future use of the PATENT RIGHTS. Any fees received shall be treated as sublicense fees according to Article 3.2(ii).
7.8 Each party hereto agrees that it and its AFFILIATES will not challenge the validity of the PATENT RIGHTS.
Appears in 2 contracts
Samples: Exclusive License Agreement (Dor Biopharma Inc), Collaboration and Supply Agreement (Dor Biopharma Inc)
INFRINGEMENT AND OTHER ACTIONS. 7.1 LICENSEE 9.1 TRIMERIS and PSRF shall NYBC will promptly provide written notice, to the other party, of any alleged infringement by a third party of any patent licensed under PATENT RIGHTS the Patent Rights and provide such other party with any available evidence of such infringement. If necessary, a prima facie determination of infringement shall be made by an independent patent attorney satisfactory to both PSRF and LICENSEE.
7.2 9.2 During the term of the License Agreementthis LICENSE AGREEMENT, LICENSEE shall TRIMERIS will have the initial right, but not the obligation, to prosecute and/or defend, at its own expense, expense and utilizing counsel of its own choice, any infringement of, and/or challenge to, the PATENT RIGHTS. In furtherance of such right, PSRF NYBC hereby agrees that PSRF TRIMERIS may be legally joined join NYBC as a party in any such suit, without expense to PSRF. Before LICENSEE commences an action hereunder, it shall consult with PSRF, and give careful consideration to the views of PSRF and the potential impact of litigation on PSRF. This shall include a face-to-face meeting between the parties’ designated representatives prior to the initiation of litigationNYBC. No settlement, consent judgment or other voluntary, voluntary final disposition of the any such suit may be entered into without the consent of PSRFNYBC, which consent shall be timely given and not unreasonably be withheld, unless such settlement does not materially affect the rights of PSRF. LICENSEE agrees to keep PSRF reasonably informed as to the status of TRIMERIS shall indemnify NYBC against any order for costs that may be made against NYBC in any such action suit.
9.3 In the event that TRIMERIS shall undertake the enforcement and/or defense of the Patent Rights, as provided in Paragraph 9.2, TRIMERIS may withhold up to fifty percent (50%) of the royalties otherwise thereafter due NYBC and to provide copies to PSRFapply the same toward reimbursement of its expenses, upon request including attorneys' fees, in connection therewith. Any recovery of damages by PSRFTRIMERIS, of any papers or information relevant to the prosecution of in any such action. LICENSEE shall timely inform PSRF of any offer for settlement presented by a third party for any such action and LICENSEE shall consider PSRF’s input in deciding whether or not to accept any such settlement offer. The total cost of any such action, commenced or defended solely by the LICENSEEsuit, shall be borne by applied first in satisfaction of any unreimbursed expenses and legal fees of TRIMERIS relating to the LICENSEEsuit, and next toward reimbursement of NYBC for any royalties past due or withheld and applied pursuant to this paragraph. Any funds resulting The balance remaining from any such action, whether in an out-of-court settlement or through a judgment in the courts will be used first recovery shall belong to pay LICENSEE the cost paid out by LICENSEE in taking such action. Any funds remaining therefrom will be treated as NET SALES under this License Agreement, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the partiesTRIMERIS.
7.3 9.4 If within six (6) months after having been notified receiving notice of any alleged infringement, LICENSEE TRIMERIS shall have been unsuccessful in persuading the alleged infringer to desist and desist, or shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE TRIMERIS shall notify PSRF NYBC, at any time prior thereto thereto, of its intention not to bring suit against any the alleged infringer in the TERRITORY for the FIELD OF USEinfringer, then, and in those events only, PSRF NYBC shall have the right, but not the obligation, to prosecute, at its own expense and utilizing counsel of its own choice, to prosecute any infringement ofof the Patent Rights, and NYBC may, for such purposes, join the TRIMERIS as a party plaintiff. The total cost of any such infringement action commenced solely by NYBC shall be borne by NYBC and NYBC shall keep any recovery or damages for past infringement derived therefrom.
9.5 In any suit to enforce and/or defend any challenge to, the PATENT RIGHTS. Before PSRF commences any action hereunder, it shall consult with LICENSEE and give careful consideration to the views of LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.4 In the event the parties hereto agree to share the costs of an action initiated hereunder, any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to reimburse the parties costs paid out in the action and the remainder shall be divided equally.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against PSRF, LICENSEE, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action, at its own expense; however, LICENSEE shall have the primary obligation to defend the patent at its expense.
7.6 In any infringement suit either party may institute to enforce the PATENT RIGHTS Patent Rights pursuant to this License Agreement, the other party hereto not in control of such suit shall, at the request and expense of the party initiating such suitcontrolling party, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
7.7 LICENSEE, during the exclusive period of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to grant a sublicense to an infringer under Article 7.1 in the TERRITORY for the FIELD OF USE for future use of the PATENT RIGHTS. Any fees received shall be treated as sublicense fees according to Article 3.2(ii).
7.8 Each party hereto agrees that it and its AFFILIATES will not challenge the validity of the PATENT RIGHTS.
Appears in 2 contracts
Samples: License Agreement (Trimeris Inc), License Agreement (Trimeris Inc)
INFRINGEMENT AND OTHER ACTIONS. 7.1 LICENSEE and PSRF A. The parties shall promptly provide written noticenotify each other of any claim that is asserted, and of any action or proceeding that is threatened or commenced, in which a third party (i) challenges MARKETING’s right to use any of the Licensed Marks, (ii) alleges that any Licensed Xxxx infringes the trademark or trade name rights of such third party, or (iii) in which the revocation, cancellation or declaration of invalidity of any of the Licensed Marks is sought. TM and MARKETING shall consult with respect to each such claim, action, or proceeding, the assertion of counterclaims thereto and the settlement thereof and shall jointly defend, in the name of TM and/or in the name of MARKETING, each such action or proceeding that is commenced. If an action or proceeding brought by a third party concerns the registrations and/or products of both TM and MARKETING, both TM and MARKETING shall be responsible for their pro rata share of legal expenses incurred in defending such action or proceeding, said pro rata share to be determined by the proportion of products and/or registrations at issue in the third party action or proceeding. If there is a disagreement as to the other appropriate pro rata share of legal expenses to be borne by each party, the matter shall be submitted to arbitration in accordance with Paragraph 15 below. If the claim or action concerns only products (other than claims pertaining to the Licensed Marks) and/or registrations of MARKETING, MARKETING shall bear all legal expenses incurred in defending such actions and proceedings and bear all damages and costs, if any, recovered by the third party.
B. TM and MARKETING will each undertake commercially reasonable efforts to learn of any alleged unauthorized uses of the Licensed Marks. Promptly upon receiving notice or knowledge thereof, the parties shall notify each other of any infringement or other violation by a third party of any patent licensed under PATENT RIGHTS of the Licensed Marks. TM and provide MARKETING shall consult with respect to any such other party with infringement, and any available evidence of action or proceeding, including opposition and cancellation actions, that may be brought against such infringement. TM shall exercise its discretion with respect to taking appropriate action including the bringing of actions at TM’s expense in the name of TM and/or MARKETING, but shall not be obligated to take any action or institute any proceedings. If necessarysuch action or proceeding is commenced by TM, a prima facie determination it shall promptly notify MARKETING and MARKETING shall cooperate, including the defense of infringement counterclaims, and TM shall bear the expenses of MARKETING except for fees charged by any attorneys retained solely by MARKETING in connection with such cooperation. MARKETING shall be made by given an independent patent attorney satisfactory opportunity to both PSRF participate with counsel of its choice bearing its own legal and LICENSEE.
7.2 During other costs. In the term of the License Agreementevent that TM determines not to commence such action or proceeding at its expense, LICENSEE it shall have the initial right, but not the obligation, to prosecute and/or defendpromptly notify MARKETING. MARKETING may then, at its own expense, utilizing initiate such action or proceedings in its capacity as a licensee of such Licensed Marks, provided however, that MARKETING must obtain the prior written approval of TM regarding commencement of such action, such consent not to be unreasonably withheld. The foregoing notwithstanding, in the event of any unauthorized use of the Licensed Marks by one of MARKETING’S sublicensees, MARKETING shall undertake efforts to cause the unauthorized use to stop. In the event those efforts are unsuccessful, MARKETING shall, at its expense, initiate such action or proceedings in its capacity as a licensee of such Licensed Marks with respect to such unauthorized use. TM shall cooperate with MARKETING in any such proceeding or action, including the defense of any counterclaims, and MARKETING shall bear the expenses of TM, except for fees charged by any attorneys retained solely by TM in connection with such cooperation. TM may, if not a party, join in, with counsel of its own choice, bearing its own legal and other costs. The party bringing any infringement of, and/or challenge to, action or proceeding under this sub-paragraph (B) shall keep the PATENT RIGHTS. In furtherance other party informed of such right, PSRF hereby agrees that PSRF may be legally joined as a the proceedings and give the other party an opportunity to participate in any such suitsettlements, without expense but the final decision whether to PSRF. Before LICENSEE commences an settle the action hereunderor proceeding shall be made by the party bringing the action or proceeding, it shall consult with PSRF, and give careful consideration subject to the views approval of PSRF TM (if not a party), such approval not to be unreasonably withheld. If within ten (10) business days or such shorter time period as shall be reasonably practicable under the circumstances TM does not approve a proposed settlement recommended by MARKETING in good faith, TM shall be deemed to have taken over responsibility for the action or proceeding, including subsequent legal fees, awards against TM or MARKETING and the potential impact of litigation on PSRF. This shall include a face-to-face meeting between the parties’ designated representatives prior to the initiation of litigationexpenses relating thereto. No settlement, consent judgment settlement by either party shall bind the other to make any payment or suffer any loss of existing or future rights without such other voluntary, final disposition of the suit may be entered into without the consent of PSRF, which consent shall be timely given and not unreasonably be withheld, unless such settlement does not materially affect the rights of PSRF. LICENSEE agrees to keep PSRF reasonably informed as to the status of any such action and to provide copies to PSRF, upon request by PSRF, of any papers or information relevant to the prosecution of any such action. LICENSEE shall timely inform PSRF of any offer for settlement presented by a third party for any such action and LICENSEE shall consider PSRFparty’s input in deciding whether or not to accept any such settlement offer. The total cost of any such action, commenced or defended solely by the LICENSEE, shall be borne by the LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to pay LICENSEE the cost paid out by LICENSEE in taking such action. Any funds remaining therefrom will be treated as NET SALES under this License Agreement, with the exception of amounts awarded for treble, exemplary or punitive damagesconsent, which shall be divided equally between the parties.
7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PSRF at any time prior thereto of its intention not to bring suit against any alleged infringer in the TERRITORY for the FIELD OF USE, then, and in those events only, PSRF shall have the right, but not the obligation, at its own expense and utilizing counsel of its own choice, to prosecute any infringement of, and/or defend any challenge to, the PATENT RIGHTS. Before PSRF commences any action hereunder, it shall consult with LICENSEE and give careful consideration to the views of LICENSEEunreasonably withheld. Any funds resulting from recovery in such action, whether in an out-of-court settlement action or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which proceeding shall be divided equally between the parties.
7.4 In the event the parties hereto agree to share the costs of an action initiated hereunder, any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used applied first to reimburse the party or parties costs paid out for its or their legal expenses in maintaining such action or proceeding. The excess shall belong to the party maintaining the action or proceeding at the time such recovery is awarded. If the action is brought jointly and the remainder shall be divided equally.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against PSRF, LICENSEE, at its option, shall have the right, within thirty (30) days after commencement of recovery is not sufficient to reimburse TM and MARKETING for their legal expenses in such action, to intervene and take over the sole defense unreimbursed portion of the action, at its own expense; however, LICENSEE shall have the primary obligation to defend the patent at its expense.
7.6 In any infringement suit either party may institute to enforce the PATENT RIGHTS pursuant to this License Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
7.7 LICENSEE, during the exclusive period of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to grant a sublicense to an infringer under Article 7.1 in the TERRITORY for the FIELD OF USE for future use of the PATENT RIGHTS. Any fees received legal expenses shall be treated as sublicense fees according to Article 3.2(ii)borne equally by each party.
7.8 Each party hereto agrees that it and its AFFILIATES will not challenge the validity of the PATENT RIGHTS.
Appears in 2 contracts
Samples: Trademark License Agreement (Getty Realty Corp /Md/), Trademark License Agreement (Getty Realty Corp /Md/)
INFRINGEMENT AND OTHER ACTIONS. 7.1 LICENSEE and PSRF A. The parties shall promptly provide written noticenotify each other of any claim that is asserted, and of any action or proceeding that is threatened or commenced, in which a third party (i) challenges MARKETING’s right to use any of the Licensed Marks, (ii) alleges that any Licensed Xxxx infringes the trademark or trade name rights of such third party, or (iii) in which the revocation, cancellation or declaration of invalidity of any of the Licensed Marks is sought. REALTY and MARKETING shall consult with respect to each such claim, action, or proceeding, the assertion of counterclaims thereto and the settlement thereof and shall jointly defend, in the name of REALTY and/or in the name of MARKETING, each such action or proceeding that is commenced. If an action or proceeding brought by a third party concerns the registrations and/or products of both REALTY and MARKETING, both REALTY and MARKETING shall be responsible for their pro rata share of legal expenses incurred in defending such action or proceeding, said pro rata share to be determined by the proportion of products and/or registrations at issue in the third party action or proceeding. If there is a disagreement as to the other appropriate pro rata share of legal expenses to be borne by each party, the matter shall be submitted to arbitration in accordance with Paragraph 15 below. If the claim or action concerns only products (other than claims pertaining to the Licensed Marks) and/or registrations of MARKETING, MARKETING shall bear all legal expenses incurred in defending such actions and proceedings and bear all damages and costs, if any, recovered by the third party.
B. REALTY and MARKETING will each undertake commercially reasonable efforts to learn of any alleged unauthorized uses of the Licensed Marks. Promptly upon receiving notice or knowledge thereof, the parties shall notify each other of any infringement or other violation by a third party of any patent licensed under PATENT RIGHTS of the Licensed Marks. REALTY and provide MARKETING shall consult with respect to any such other party with infringement, and any available evidence of action or proceeding, including opposition and cancellation actions, that may be brought against such infringement. REALTY shall exercise its discretion with respect to taking appropriate action including the bringing of actions at REALTY’s expense in the name of REALTY and/or MARKETING, but shall not be obligated to take any action or institute any proceedings. If necessarysuch action or proceeding is commenced by REALTY, a prima facie determination it shall promptly notify MARKETING and MARKETING shall cooperate, including the defense of infringement counterclaims, and REALTY shall bear the expenses of MARKETING except for fees charged by any attorneys retained solely by MARKETING in connection with such cooperation. MARKETING shall be made by given an independent patent attorney satisfactory opportunity to both PSRF participate with counsel of its choice bearing its own legal and LICENSEE.
7.2 During other costs. In the term of the License Agreementevent that REALTY determines not to commence such action or proceeding at its expense, LICENSEE it shall have the initial right, but not the obligation, to prosecute and/or defendpromptly notify MARKETING. MARKETING may then, at its own expense, utilizing initiate such action or proceedings in its capacity as a licensee of such Licensed Marks, provided however, that MARKETING must obtain the prior written approval of REALTY regarding commencement of such action, such consent not to be unreasonably withheld. The foregoing notwithstanding, in the event of any unauthorized use of the Licensed Marks by one of MARKETING’S sublicensees, MARKETING shall undertake efforts to cause the unauthorized use to stop. In the event those efforts are unsuccessful, MARKETING shall, at its expense, initiate such action or proceedings in its capacity as a licensee of such Licensed Marks with respect to such unauthorized use. REALTY shall cooperate with MARKETING in any such proceeding or action, including the defense of any counterclaims, and MARKETING shall bear the expenses of REALTY, except for fees charged by any attorneys retained solely by REALTY in connection with such cooperation. REALTY may, if not a party, join in, with counsel of its own choice, bearing its own legal and other costs. The party bringing any infringement of, and/or challenge to, action or proceeding under this sub-paragraph (B) shall keep the PATENT RIGHTS. In furtherance other party informed of such right, PSRF hereby agrees that PSRF may be legally joined as a the proceedings and give the other party an opportunity to participate in any such suitsettlements, without expense but the final decision whether to PSRF. Before LICENSEE commences an settle the action hereunderor proceeding shall be made by the party bringing the action or proceeding, it shall consult with PSRF, and give careful consideration subject to the views approval of PSRF REALTY (if not a party), such approval not to be unreasonably withheld. If within ten (10) business days or such shorter time period as shall be reasonably practicable under the circumstances REALTY does not approve a proposed settlement recommended by MARKETING in good faith, REALTY shall be deemed to have taken over responsibility for the action or proceeding, including subsequent legal fees, awards against REALTY or MARKETING and the potential impact of litigation on PSRF. This shall include a face-to-face meeting between the parties’ designated representatives prior to the initiation of litigationexpenses relating thereto. No settlement, consent judgment settlement by either party shall bind the other to make any payment or suffer any loss of existing or future rights without such other voluntary, final disposition of the suit may be entered into without the consent of PSRF, which consent shall be timely given and not unreasonably be withheld, unless such settlement does not materially affect the rights of PSRF. LICENSEE agrees to keep PSRF reasonably informed as to the status of any such action and to provide copies to PSRF, upon request by PSRF, of any papers or information relevant to the prosecution of any such action. LICENSEE shall timely inform PSRF of any offer for settlement presented by a third party for any such action and LICENSEE shall consider PSRFparty’s input in deciding whether or not to accept any such settlement offer. The total cost of any such action, commenced or defended solely by the LICENSEE, shall be borne by the LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to pay LICENSEE the cost paid out by LICENSEE in taking such action. Any funds remaining therefrom will be treated as NET SALES under this License Agreement, with the exception of amounts awarded for treble, exemplary or punitive damagesconsent, which shall be divided equally between the parties.
7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PSRF at any time prior thereto of its intention not to bring suit against any alleged infringer in the TERRITORY for the FIELD OF USE, then, and in those events only, PSRF shall have the right, but not the obligation, at its own expense and utilizing counsel of its own choice, to prosecute any infringement of, and/or defend any challenge to, the PATENT RIGHTS. Before PSRF commences any action hereunder, it shall consult with LICENSEE and give careful consideration to the views of LICENSEEunreasonably withheld. Any funds resulting from recovery in such action, whether in an out-of-court settlement action or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which proceeding shall be divided equally between the parties.
7.4 In the event the parties hereto agree to share the costs of an action initiated hereunder, any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used applied first to reimburse the party or parties costs paid out for its or their legal expenses in maintaining such action or proceeding. The excess shall belong to the party maintaining the action or proceeding at the time such recovery is awarded. If the action is brought jointly and the remainder shall be divided equally.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against PSRF, LICENSEE, at its option, shall have the right, within thirty (30) days after commencement of recovery is not sufficient to reimburse REALTY and MARKETING for their legal expenses in such action, to intervene and take over the sole defense unreimbursed portion of the action, at its own expense; however, LICENSEE shall have the primary obligation to defend the patent at its expense.
7.6 In any infringement suit either party may institute to enforce the PATENT RIGHTS pursuant to this License Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
7.7 LICENSEE, during the exclusive period of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to grant a sublicense to an infringer under Article 7.1 in the TERRITORY for the FIELD OF USE for future use of the PATENT RIGHTS. Any fees received legal expenses shall be treated as sublicense fees according to Article 3.2(ii)borne equally by each party.
7.8 Each party hereto agrees that it and its AFFILIATES will not challenge the validity of the PATENT RIGHTS.
Appears in 2 contracts
Samples: Trademark License Agreement (Getty Realty Corp /Md/), Trademark License Agreement (Getty Realty Corp /Md/)
INFRINGEMENT AND OTHER ACTIONS. 7.1 LICENSEE and PSRF A. The parties shall promptly provide written noticenotify each other of any claim that is asserted, and of any action or proceeding that is threatened or commenced, in which a third party (i) challenges MARKETING's right to use any of the Licensed Marks, (ii) alleges that any Licensed Mark xxxringes the trademark or trade name rights of such third party, or (iii) in which the revocation, cancellation or declaration of invalidity of any of the Licensed Marks is sought. TM and MARKETING shall consult with respect to each such claim, action, or proceeding, the assertion of counterclaims thereto and the settlement thereof and shall jointly defend, in the name of TM and/or in the name of MARKETING, each such action or proceeding that is commenced. If an action or proceeding brought by a third party concerns the registrations and/or products of both TM and MARKETING, both TM and MARKETING shall be responsible for their pro rata share of legal expenses incurred in defending such action or proceeding, said pro rata share to be determined by the proportion of products and/or registrations at issue in the third party action or proceeding. If there is a disagreement as to the other appropriate pro rata share of legal expenses to be borne by each party, the matter shall be submitted to arbitration in accordance with Paragraph 15 below. If the claim or action concerns only products (other than claims pertaining to the Licensed Marks) and/or registrations of MARKETING, MARKETING shall bear all legal expenses incurred in defending such actions and proceedings and bear all damages and costs, if any, recovered by the third party.
B. TM and MARKETING will each undertake commercially reasonable efforts to learn of any alleged unauthorized uses of the Licensed Marks. Promptly upon receiving notice or knowledge thereof, the parties shall notify each other of any infringement or other violation by a third party of any patent licensed under PATENT RIGHTS and provide such other party with any available evidence of such infringement. If necessary, a prima facie determination of infringement shall be made by an independent patent attorney satisfactory to both PSRF and LICENSEE.
7.2 During the term of the License Agreement, LICENSEE shall have the initial right, but not the obligation, to prosecute and/or defend, at its own expense, utilizing counsel of its own choice, any infringement of, and/or challenge to, the PATENT RIGHTSLicensed Marks. In furtherance of such right, PSRF hereby agrees that PSRF may be legally joined as a party in any such suit, without expense to PSRF. Before LICENSEE commences an action hereunder, it TM and MARKETING shall consult with PSRFrespect to any such infringement, and give careful consideration to the views of PSRF and the potential impact of litigation on PSRF. This shall include a face-to-face meeting between the parties’ designated representatives prior to the initiation of litigation. No settlement, consent judgment or other voluntary, final disposition of the suit may be entered into without the consent of PSRF, which consent shall be timely given and not unreasonably be withheld, unless such settlement does not materially affect the rights of PSRF. LICENSEE agrees to keep PSRF reasonably informed as to the status of any such action and to provide copies to PSRF, upon request by PSRF, of any papers or information relevant to the prosecution of any such action. LICENSEE shall timely inform PSRF of any offer for settlement presented by a third party for any such action and LICENSEE shall consider PSRF’s input in deciding whether or not to accept any such settlement offer. The total cost of any such action, commenced or defended solely by the LICENSEE, shall be borne by the LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to pay LICENSEE the cost paid out by LICENSEE in taking such action. Any funds remaining therefrom will be treated as NET SALES under this License Agreement, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PSRF at any time prior thereto of its intention not to bring suit against any alleged infringer in the TERRITORY for the FIELD OF USE, then, and in those events only, PSRF shall have the right, but not the obligation, at its own expense and utilizing counsel of its own choice, to prosecute any infringement of, and/or defend any challenge to, the PATENT RIGHTS. Before PSRF commences any action hereunderor proceeding, it shall consult with LICENSEE including opposition and give careful consideration to the views of LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.4 In the event the parties hereto agree to share the costs of an action initiated hereunder, any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to reimburse the parties costs paid out in the action and the remainder shall be divided equally.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against PSRF, LICENSEE, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action, at its own expense; however, LICENSEE shall have the primary obligation to defend the patent at its expense.
7.6 In any infringement suit either party may institute to enforce the PATENT RIGHTS pursuant to this License Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
7.7 LICENSEE, during the exclusive period of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to grant a sublicense to an infringer under Article 7.1 in the TERRITORY for the FIELD OF USE for future use of the PATENT RIGHTS. Any fees received shall be treated as sublicense fees according to Article 3.2(ii).
7.8 Each party hereto agrees that it and its AFFILIATES will not challenge the validity of the PATENT RIGHTS.cancellation
Appears in 2 contracts
Samples: Trademark License Agreement (Getty Realty Corp /Md/), Trademark License Agreement (Getty Petroleum Marketing Inc /Md/)
INFRINGEMENT AND OTHER ACTIONS. 7.1 9.1 LICENSEE and PSRF PRINCETON shall promptly provide written notice, to the other party, of any alleged infringement by a third party of any patent licensed under PATENT RIGHTS the Patent Rights and provide such other party with any available evidence of such infringement. If necessary, a prima facie determination of infringement shall be made by an independent patent attorney satisfactory to both PSRF and LICENSEE.
7.2 9.2 During the term of the License this Agreement, LICENSEE shall have the initial right, but not the obligation, to prosecute and/or defend, at its own expense, expense and utilizing counsel of its own choice, any infringement of, and/or challenge to, the PATENT RIGHTSPatent Rights. In furtherance of such right, PSRF PRINCETON hereby agrees that PSRF LICENSEE may be legally joined join PRINCETON as a party in any such suit, without expense to PSRF. Before LICENSEE commences an action hereunder, it shall consult with PSRF, and give careful consideration to the views of PSRF and the potential impact of litigation on PSRF. This shall include a face-to-face meeting between the parties’ designated representatives prior to the initiation of litigationPRINCETON. No settlement, consent judgment or other voluntary, voluntary final disposition of the any such suit may be entered into without the consent of PSRFPRINCETON, which consent shall be timely given and not unreasonably be withheld, unless such settlement does not materially affect the rights of PSRF. LICENSEE agrees to keep PSRF reasonably informed as to the status of any such action and to provide copies to PSRF, upon request by PSRF, of any papers or information relevant to the prosecution of any such action. LICENSEE shall timely inform PSRF of indemnify PRINCETON against any offer order for settlement presented by a third party for costs that may be made against PRINCETON in any such action and suit.
9.3 In the event that LICENSEE shall consider PSRF’s input undertake the enforcement and/or defense of the Patent Rights, as provided in deciding whether or not Paragraph 9.2, LICENSEE may withhold up to accept fifty percent (50%) of the royalties otherwise thereafter due PRINCETON and apply the same toward reimbursement of its expenses, including attorneys' fees, in connection therewith. Any recovery of damages by LICENSEE, in any such settlement offer. The total cost of any such action, commenced or defended solely by the LICENSEEsuit, shall be borne by applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to the LICENSEEsuit, and next toward reimbursement of PRINCETON for any royalties past due or withheld and applied pursuant to this paragraph. Any funds resulting The balance remaining from any such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to pay LICENSEE the cost paid out by LICENSEE in taking such action. Any funds remaining therefrom will be treated as NET SALES under this License Agreement, with the exception of amounts awarded for treble, exemplary or punitive damages, which recovery shall be divided equally between the partiesLICENSEE and PRINCETON.
7.3 9.4 If within six (6) months after having been notified receiving notice of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and desist, or shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PSRF PRINCETON, at any time prior thereto thereto, of its intention not to bring suit against any the alleged infringer in the TERRITORY for the FIELD OF USEinfringer, then, and in those events only, PSRF PRINCETON shall have the right, but not the obligation, to prosecute, at its own expense and utilizing counsel of its own choice, to prosecute any infringement ofof the Patent Rights, and PRINCETON may, for such purposes, join the LICENSEE as a party plaintiff. The total cost of any such infringement action commenced solely by PRINCETON shall be borne by PRINCETON and PRINCETON shall keep any recovery or damages for past infringement derived therefrom.
9.5 In any suit to enforce and/or defend any challenge to, the PATENT RIGHTS. Before PSRF commences any action hereunder, it shall consult with LICENSEE and give careful consideration to the views of LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.4 In the event the parties hereto agree to share the costs of an action initiated hereunder, any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to reimburse the parties costs paid out in the action and the remainder shall be divided equally.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against PSRF, LICENSEE, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action, at its own expense; however, LICENSEE shall have the primary obligation to defend the patent at its expense.
7.6 In any infringement suit either party may institute to enforce the PATENT RIGHTS Patent Rights pursuant to this License Agreement, the other party hereto not in control of such suit shall, at the request and expense of the party initiating such suitcontrolling party, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, specimens and the like.
7.7 LICENSEE, during the exclusive period of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to grant a sublicense to an infringer under Article 7.1 in the TERRITORY for the FIELD OF USE for future use of the PATENT RIGHTS. Any fees received shall be treated as sublicense fees according to Article 3.2(ii).
7.8 Each party hereto agrees that it and its AFFILIATES will not challenge the validity of the PATENT RIGHTS.
Appears in 2 contracts
Samples: Research Collaboration and License Agreement (Interneuron Pharmaceuticals Inc), Research Collaboration and License Agreement (Intercardia Inc)
INFRINGEMENT AND OTHER ACTIONS. 7.1 LICENSEE 9.1 The Licensee and PSRF the Licensors shall promptly provide written notice, to the other party, of any alleged infringement by a third party of any patent licensed under PATENT RIGHTS the Patent Rights and provide such other party with any available evidence of such infringement. If necessary, a prima facie determination of infringement shall be made by an independent patent attorney satisfactory to both PSRF and LICENSEE.
7.2 9.2 During the term of Term, the License Agreement, LICENSEE Licensee shall have the initial right, but not the obligation, to prosecute and/or defend, at its own expense, expense and utilizing counsel of its own choice, any infringement of, and/or challenge to, the PATENT RIGHTS. In furtherance of such right, PSRF hereby agrees that PSRF may be legally joined as a party in any such suit, without expense to PSRF. Before LICENSEE commences an action hereunder, it shall consult with PSRF, and give careful consideration to the views of PSRF and the potential impact of litigation on PSRF. This shall include a face-to-face meeting between the parties’ designated representatives prior to the initiation of litigationPatent Rights. No settlement, consent judgment or other voluntary, voluntary final disposition of the any such suit may be entered into without the consent of PSRFthe Licensors, which consent shall not be timely given unreasonably withheld. The Licensee shall indemnify and not unreasonably hold the Licensors harmless against any costs, expenses or liability that may be withheld, unless such settlement does not materially affect found or assessed against the rights of PSRF. LICENSEE agrees to keep PSRF reasonably informed as to the status of Licensors in any such action and to provide copies to PSRFsuit other than resulting from the Licensors’ gross negligence, upon request recklessness or willful misconduct.
9.3 Any recovery of damages by PSRFthe Licensee, of any papers or information relevant to the prosecution of in any such action. LICENSEE shall timely inform PSRF of any offer for settlement presented by a third party for any such action and LICENSEE shall consider PSRF’s input in deciding whether or not to accept any such settlement offer. The total cost of any such action, commenced or defended solely by the LICENSEEsuit, shall be borne by applied first in satisfaction of any unreimbursed expenses and legal fees of the LICENSEELicensee relating to the suit and then to the Licensors for any credited royalties. Any funds resulting The balance remaining from any such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to pay LICENSEE the cost paid out by LICENSEE in taking such action. Any funds remaining therefrom will recovery shall be treated as NET SALES under this License Agreement, with royalties received by the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between Licensee from sublicensees and shared by the partiesLicensors and the Licensee [***] percent ([***]%) to the Licensee and [***] percent ([***]%) to the Licensors.
7.3 9.4 If within six ninety (690) months after having been notified days from receipt of notice by the Licensee of any alleged infringement, LICENSEE the Licensee shall have been unsuccessful in persuading the alleged infringer to desist and desist, or shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE the Licensee shall notify PSRF the Licensors, at any time prior thereto thereto, of its intention not to bring suit against any the alleged infringer in the TERRITORY for the FIELD OF USEinfringer, then, and in those events only, PSRF the Licensors shall have the right, but not the obligation, to prosecute, at its own expense and utilizing counsel of its own choice, to prosecute any infringement of, and/or defend any challenge to, the PATENT RIGHTS. Before PSRF commences any action hereunder, it shall consult with LICENSEE and give careful consideration to the views of LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.4 In the event the parties hereto agree to share the costs of an action initiated hereunder, any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to reimburse the parties costs paid out in the action and the remainder shall be divided equally.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against PSRF, LICENSEE, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action, at its own expense; however, LICENSEE shall have the primary obligation to defend the patent at its expense.
7.6 In any infringement suit either party may institute to enforce the PATENT RIGHTS pursuant to this License Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimensPatent Rights, and the like.
7.7 LICENSEELicensors may, during for such purposes, join the exclusive period of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to grant Licensee as a sublicense to an infringer under Article 7.1 in the TERRITORY for the FIELD OF USE for future use of the PATENT RIGHTS. Any fees received shall be treated as sublicense fees according to Article 3.2(ii).
7.8 Each party hereto agrees that it and its AFFILIATES will not challenge the validity of the PATENT RIGHTS.party
Appears in 1 contract
Samples: Exclusive License Agreement (Dare Bioscience, Inc.)
INFRINGEMENT AND OTHER ACTIONS. 7.1 LICENSEE and PSRF A. The parties shall promptly provide written noticenotify each other of any claim that is asserted, and of any action or proceeding that is threatened or commenced, in which a third party (i) challenges MARKETING's right to use any of the Licensed Marks, or (ii) alleges that any Licensed Mark xxxringes the trademark or trade name rights of such third party, or (iii) in which the revocation, cancellation or declaration of invalidity of any of the Licensed Marks is sought. REALTY and MARKETING shall consult with respect to each such claim, action, or proceeding, the assertion of counterclaims thereto and the settlement thereof and shall jointly defend, in the name of REALTY and/or in the name of MARKETING, each such action or proceeding that is commenced. If an action or proceeding brought by a third party concerns the registrations and/or products of both REALTY and MARKETING, both REALTY and MARKETING shall be responsible for their pro rata share of legal expenses incurred in defending such action or proceeding, said pro rata share to be determined by the proportion of products and/or registrations at issue in the third party action or proceeding. If there is a disagreement as to the other appropriate pro rata share of legal expenses to be borne by each party, the matter shall be submitted to arbitration in accordance with paragraph 16 below. If the claim or action concerns only products and/or registrations of MARKETING, MARKETING shall bear all legal expenses incurred in defending such actions and proceedings and bear all damages and costs, if any, recovered by the third party.
B. REALTY and MARKETING will each undertake commercially reasonable efforts to learn of any alleged unauthorized uses of the Licensed Marks. Promptly upon receiving notice or knowledge thereof, the parties shall notify each other of any infringement or other violation by a third party of any patent licensed under PATENT RIGHTS of the Licensed Marks. REALTY and provide MARKETING shall consult with respect to any such other party with infringement, and any available evidence of action or proceeding, including opposition and cancellation actions, that may be brought against such infringement. REALTY shall exercise its discretion with respect to taking appropriate action including the bringing of actions at REALTY's expense in the name of REALTY and/or MARKETING, but shall not be obligated to take any action or institute any proceedings. If necessarysuch action or proceeding is commenced by REALTY, a prima facie determination it shall promptly notify MARKETING and MARKETING shall cooperate, including the defense of infringement counterclaims, and REALTY shall bear the expenses of MARKETING except for fees charged by any attorneys retained solely by MARKETING in connection with such cooperation. MARKETING shall be made by given an independent patent attorney satisfactory opportunity to both PSRF and LICENSEE.
7.2 During the term of the License Agreement, LICENSEE shall have the initial right, but not the obligation, to prosecute and/or defend, at its own expense, utilizing participate with counsel of its own choice, any infringement of, and/or challenge to, the PATENT RIGHTS. In furtherance of such right, PSRF hereby agrees that PSRF may be legally joined as a party in any such suit, without expense to PSRF. Before LICENSEE commences an action hereunder, it shall consult with PSRF, and give careful consideration to the views of PSRF and the potential impact of litigation on PSRF. This shall include a face-to-face meeting between the parties’ designated representatives prior to the initiation of litigation. No settlement, consent judgment or other voluntary, final disposition of the suit may be entered into without the consent of PSRF, which consent shall be timely given and not unreasonably be withheld, unless such settlement does not materially affect the rights of PSRF. LICENSEE agrees to keep PSRF reasonably informed as to the status of any such action and to provide copies to PSRF, upon request by PSRF, of any papers or information relevant to the prosecution of any such action. LICENSEE shall timely inform PSRF of any offer for settlement presented by a third party for any such action and LICENSEE shall consider PSRF’s input in deciding whether or not to accept any such settlement offer. The total cost of any such action, commenced or defended solely by the LICENSEE, shall be borne by the LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to pay LICENSEE the cost paid out by LICENSEE in taking such action. Any funds remaining therefrom will be treated as NET SALES under this License Agreement, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PSRF at any time prior thereto of its intention not to bring suit against any alleged infringer in the TERRITORY for the FIELD OF USE, then, and in those events only, PSRF shall have the right, but not the obligation, at choice bearing its own expense legal and utilizing counsel of its own choice, to prosecute any infringement of, and/or defend any challenge to, the PATENT RIGHTSother costs. Before PSRF commences any action hereunder, it shall consult with LICENSEE and give careful consideration to the views of LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.4 In the event the parties hereto agree to share the costs of an action initiated hereunder, any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to reimburse the parties costs paid out in the action and the remainder shall be divided equally.
7.5 In the event that a declaratory judgment REALTY determines not to commence such action alleging invalidity or noninfringement of any of the PATENT RIGHTS proceeding at its expense, it shall be brought against PSRF, LICENSEEpromptly notify MARKETING. MARKETING may then, at its optionexpense, shall have initiate such action or proceedings in its capacity as a licensee of such Licensed Marks, provided however, that MARKETING must obtain the right, within thirty (30) days after prior written approval of REALTY regarding commencement of such action, such consent not to intervene and take over be unreasonably withheld. REALTY shall cooperate with MARKETING in such proceeding or action, including the sole defense of the action, at its own expense; however, LICENSEE shall have the primary obligation to defend the patent at its expense.
7.6 In any infringement suit either party may institute to enforce the PATENT RIGHTS pursuant to this License Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimenscounterclaims, and MARKETING shall bear the like.
7.7 LICENSEEexpenses of REALTY, during the exclusive period of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to grant a sublicense to an infringer under Article 7.1 in the TERRITORY except for the FIELD OF USE for future use of the PATENT RIGHTS. Any fees received shall be treated as sublicense fees according to Article 3.2(ii).
7.8 Each party hereto agrees that it and its AFFILIATES will not challenge the validity of the PATENT RIGHTS.charged by any attorneys retained solely by REALTY
Appears in 1 contract
Samples: Trademark License Agreement (Getty Petroleum Marketing Inc)
INFRINGEMENT AND OTHER ACTIONS. 7.1 LICENSEE 9.1 Each of IDDS, Shimoda and PSRF Farmarc shall promptly provide written noticenotice to IDDS, to the other party, Shimoda and Farmarc of any alleged infringement by a third party of any patent licensed under PATENT RIGHTS the Patent Rights and provide such other party parties with any available evidence of such infringement. If necessary, a prima facie determination of infringement shall be made by an independent patent attorney satisfactory to both PSRF and LICENSEE.
7.2 9.2 During the term of the License this Agreement, LICENSEE IDDS shall have the initial right, but not the obligation, to prosecute and/or defend, at its own expense, expense and utilizing counsel of its own choice, any infringement of, and/or challenge to, the PATENT RIGHTSPatent Rights. In furtherance of such right, PSRF Shimoda and Farmarc hereby agrees agree that PSRF IDDS may be legally joined join Shimoda and/or Farmarc as a party in any such suit, without expense to PSRF. Before LICENSEE commences an action hereunder, it shall consult with PSRF, and give careful consideration to the views of PSRF and the potential impact of litigation on PSRF. This shall include a face-to-face meeting between the parties’ designated representatives prior to the initiation of litigationShimoda or Farmarc. No settlement, consent judgment or other voluntary, voluntary final disposition of any such suit which would adversely affect the suit rights of Shimoda or Farmarc may be entered into without the consent of PSRFShimoda or Farmarc (as the case may be), which consent shall no; be timely given and not unreasonably be withheld, unless such settlement does not materially affect the rights of PSRF. LICENSEE agrees to keep PSRF reasonably informed as to the status of any such action and to provide copies to PSRF, upon request by PSRF, of any papers or information relevant to the prosecution of any such action. LICENSEE shall timely inform PSRF of any offer for settlement presented by a third party for any such action and LICENSEE shall consider PSRF’s input in deciding whether or not to accept any such settlement offer. The total cost of any such action, commenced or defended solely by the LICENSEE, shall be borne by the LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to pay LICENSEE the cost paid out by LICENSEE in taking such action. Any funds remaining therefrom will be treated as NET SALES under this License Agreement, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.3 If 9.3 If, within six (6) months 90 days after having been notified receiving notice of any alleged infringement, LICENSEE IDDS shall have been unsuccessful in persuading the alleged infringer to desist and desist, or shall not have brought EXECUTION COPY and shall not be diligently prosecuting an infringement action, or if LICENSEE IDDS shall notify PSRF Shimoda (if the alleged infringement relates to the Shimoda Rights) or Farmarc (if the alleged infringement relates to the Farmarc Rights), at any time prior thereto thereto, of its intention not to bring suit against any the alleged infringer in the TERRITORY for the FIELD OF USEinfringer, then, and in those events only, PSRF Shimoda or Farmarc (as the case may be) shall have the right, but not the obligation, to prosecute, at its own expense and utilizing counsel of its own choice, to prosecute any infringement ofof the Patent Right, and/or defend and Shimoda or Farmarc may, for such purposes, join IDDS as a party plaintiff. The total cost of any challenge tosuch infringement action commenced solely by Shimoda or Farmarc shall be borne by Shimoda or Farmarc and such party shall keep any recovery or damages for infringement or otherwise derived therefrom and such shall not be applicable to any royalty obligation of IDDS.
9.4 Any recovery of damages by IDDS, the PATENT RIGHTS. Before PSRF commences in any action hereundersuch suit, it shall consult with LICENSEE be applied first in satisfaction of any unreimbursed expenses and give careful consideration legal fees of IDDS relating to the views of LICENSEEsuit and then to Shimoda and Farmarc for any royalties credited in accordance with paragraph 9.6 below. Any funds resulting The balance remaining from any such action, whether in an out-of-court settlement or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which recovery shall be divided equally between the partiestreated as Net Sales received by IDDS in accordance with paragraph 4.1 hereof.
7.4 In the event the parties hereto agree to share the costs of an action initiated hereunder, any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to reimburse the parties costs paid out in the action and the remainder shall be divided equally.
7.5 9.5 In the event that a declaratory judgment action claim or suit is asserted or brought against IDDS alleging invalidity that the manufacture or noninfringement sale of any Licensed Product by IDDS, an Affiliate of IDDS, or any sublicensee, or the PATENT RIGHTS shall be brought against PSRF, LICENSEE, at its option, shall have the right, within thirty (30) days after commencement use of such actionLicensed Product, infringes the proprietary rights of a third party, IDDS shall give written notice thereof to intervene Shimoda and take over the Farmarc. IDDS may, in its sole defense of the actiondiscretion, at its own expense; however, LICENSEE shall have the primary obligation modify such Licensed Product to defend the patent at its expense.
7.6 In any avoid such infringement suit either party and/or may institute to enforce the PATENT RIGHTS pursuant to this License Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
7.7 LICENSEE, during the exclusive period of this License Agreement, shall have the sole right in accordance with the settle on terms and conditions herein to grant a sublicense to an infringer under Article 7.1 in the TERRITORY for the FIELD OF USE for future use of the PATENT RIGHTS. Any fees received shall be treated as sublicense fees according to Article 3.2(ii).
7.8 Each party hereto agrees that it and deems advisable in its AFFILIATES will not challenge the validity of the PATENT RIGHTSsole discretion, subject to paragraph 9.
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Samples: License Agreement (Innovative Drug Delivery Systems Inc)
INFRINGEMENT AND OTHER ACTIONS. 7.1 LICENSEE and PSRF shall promptly provide written notice, notice to the other party, party of any alleged infringement by a third party of any patent licensed hereunder under PATENT RIGHTS and provide such other party with any available evidence of such infringement. If necessary, a prima facie determination of infringement shall be made by an independent patent attorney satisfactory to both PSRF and LICENSEE.
7.2 During the term of the License Agreement, LICENSEE PSRF shall have the initial right, but not the obligation, to prosecute and/or defend, at its own expense, expense and utilizing counsel of its own choice, any infringement of, and/or challenge to, the PATENT RIGHTS. In furtherance of such right, PSRF LICENSEE hereby agrees that PSRF may be legally joined join LICENSEE as a party in any such suit, without expense to PSRFLICENSEE. Before LICENSEE commences an action hereunderThe total cost of any such action, it shall consult with commenced or defended solely by PSRF, shall be borne by PSRF, which shall keep any recovery or damages derived therefrom.
7.3 If within six (6) months after having been notified of any alleged infringement, PSRF shall have been unsuccessful in persuading the alleged infringer to desist and give careful consideration shall not have brought and shall not be diligently prosecuting an infringement action, or if PSRF shall notify LICENSEE at any time prior thereto of its intention not to bring suit against any alleged infringer in the views TERRITORY for the FIELD, then, and in those events only, LICENSEE shall have the right, but not the obligation, at its own expense and utilizing counsel of its choice, to prosecute any infringement of, and/or defend any challenge to, the PATENT RIGHTS, and LICENSEE may, for such purposes, join PSRF and as a party plaintiff, provided, however, that such right to bring such an infringement action shall remain in effect only for so long as the potential impact of litigation on PSRF. This shall include a facelicense granted herein remains exclusive, or as in 1.4.9, non-to-face meeting between the parties’ designated representatives prior to the initiation of litigationexclusive. No settlement, consent judgment or other voluntary, final disposition of the suit may be entered into without the consent of PSRF, which consent shall be timely given and not unreasonably be withheld, unless such settlement does not materially affect the rights of PSRF. LICENSEE agrees to keep PSRF reasonably informed as to the status of any such action and to provide copies to PSRF, upon request by PSRF, of any papers or information relevant to the prosecution of any such action. LICENSEE shall timely inform PSRF of any offer for settlement presented by a third party for any such action and LICENSEE shall consider PSRF’s input in deciding whether or not to accept any such settlement offer. The total cost of any such action, action commenced or defended solely by the LICENSEE, LICENSEE shall be borne by the LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to pay LICENSEE the cost paid out by LICENSEE in taking such action. Any funds remaining therefrom will be treated as NET SALES under this License Agreement, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PSRF at any time prior thereto of its intention not to bring suit against any alleged infringer in the TERRITORY for the FIELD OF USE, then, and in those events only, PSRF shall have the right, but not the obligation, at its own expense and utilizing counsel of its own choice, to prosecute any infringement of, and/or defend any challenge to, the PATENT RIGHTS. Before PSRF commences any action hereunder, it shall consult with LICENSEE and give careful consideration to the views of LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.4 In the event that LICENSEE shall undertake the parties hereto agree to share enforcement and/or defense of the costs of an action initiated hereunderPATENT RIGHTS, as provided in Paragraph 7.2 or 7.3, any funds resulting from recovery of damages by LICENSEE for each such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to reimburse the parties costs paid out in the action and the remainder suit shall be divided equallyapplied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to such suit, and next toward reimbursement of PSRF for any payments under Article III past due or withheld and applied pursuant to this Article VII. The balance remaining from any such recovery shall be subject to the royalty schedule as expressed in paragraph 3.4.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against LICENSEE, PSRF, LICENSEE, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action, action at its own expense; however, LICENSEE shall have the primary obligation to defend the patent at its expense.
7.6 In any infringement suit as either party may institute to enforce the PATENT RIGHTS pursuant to this License Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
7.7 LICENSEE, during the exclusive and, in the case of 1.4.9, the non-exclusive period of this License Agreement, shall have the sole right rights in accordance with the terms and conditions herein to grant a sublicense to an any alleged infringer under Article 7.1 in the TERRITORY for the FIELD OF USE for future use of the PATENT RIGHTS. Any upfront fees received as part of such a sublicense shall be treated as sublicense fees according to in Paragraph 3.4; other royalties shall be treated per Article 3.2(ii)III.
7.8 Each party hereto agrees that it and its AFFILIATES will not challenge the validity of the PATENT RIGHTS.
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INFRINGEMENT AND OTHER ACTIONS. 7.1 LICENSEE 9.1. TITAN and PSRF BAR-ILAN shall promptly provide written notice, notice to the other party, party of any alleged infringement by a third party of any patent licensed under PATENT RIGHTS the Patent Rights within the TITAN Field and provide such other party with any available evidence of such infringement. If necessary, a prima facie determination of infringement shall be made by an independent patent attorney satisfactory to both PSRF and LICENSEE.
7.2 9.2. During the term of the License this Agreement, LICENSEE TITAN shall have the initial right, but not the obligation, to prosecute and/or defend, at its own expense, expense and utilizing counsel of its own choice, any infringement of, of and/or challenge to, to the PATENT RIGHTSPatent Rights within the TITAN Field. In furtherance of such right, PSRF BAR-ILAN hereby agrees that PSRF TITAN may be legally joined join BAR-ILAN as a party in any such suit, without expense to PSRF. Before LICENSEE commences an action hereunder, it shall consult with PSRF, and give careful consideration to the views of PSRF and the potential impact of litigation on PSRF. This shall include a faceBAR-to-face meeting between the parties’ designated representatives prior to the initiation of litigationILAN. No settlement, consent judgment judgment, or other voluntary, voluntary final disposition of the any such suit may be entered into without the consent of PSRFBAR-ILAN, which consent shall be timely given and not unreasonably be withheld, unless . TITAN shall indemnify BAR-ILAN against any order for costs that may be made against BAR-ILAN in any such settlement does not materially affect the rights suit.
9.3. Any recovery of PSRF. LICENSEE agrees to keep PSRF reasonably informed as damages by TITAN in any such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of TITAN relating to the status of suit. The balance remaining from any such action and to provide copies to PSRF, upon request by PSRF, of any papers or information relevant to the prosecution of any such action. LICENSEE recovery shall timely inform PSRF of any offer for settlement presented by a third party for any such action and LICENSEE shall consider PSRF’s input in deciding whether or not to accept any such settlement offer. The total cost of any such action, commenced or defended solely by the LICENSEE, shall be borne by the LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to pay LICENSEE the cost paid out by LICENSEE in taking such action. Any funds remaining therefrom will be treated as NET SALES under this License Agreement, royalties received by TITAN from sublicensees and shared by BAR-ILAN and TITAN in accordance with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the partiesParagraph 4.1.2 hereof.
7.3 9.4. If within six (6) months after having been notified receiving notice of any alleged infringementinfringement within the TITAN Field, LICENSEE TITAN shall have been unsuccessful in persuading the alleged infringer to desist and desist, or shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE TITAN shall notify PSRF BARILAN, at any time prior thereto thereto, of its intention not to bring suit against any the alleged infringer in the TERRITORY for the FIELD OF USEinfringer, then, and in those events only, PSRF BAR-ILAN shall have the right, but not the obligation, to prosecute, at its own expense and utilizing counsel of its own choice, to prosecute any infringement ofof the Patent-Rights within the TITAN Field, and BAR-ILAN may, for such purposes, join TITAN as a party plaintiff. The total cost of any such infringement action commenced solely by BAR-ILAN shall be borne by BAR-ILAN and BAR-ILAN shall keep any recovery or damages for past infringement derived therefrom.
9.5. In any suit to enforce and/or defend any challenge to, the PATENT RIGHTS. Before PSRF commences any action hereunder, it shall consult with LICENSEE and give careful consideration to the views of LICENSEE. Any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be paid to PSRF, with the exception of amounts awarded for treble, exemplary or punitive damages, which shall be divided equally between the parties.
7.4 In the event the parties hereto agree to share the costs of an action initiated hereunder, any funds resulting from such action, whether in an out-of-court settlement or through a judgment in the courts will be used first to reimburse the parties costs paid out in the action and the remainder shall be divided equally.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against PSRF, LICENSEE, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action, at its own expense; however, LICENSEE shall have the primary obligation to defend the patent at its expense.
7.6 In any infringement suit either party may institute to enforce the PATENT RIGHTS Patent Rights pursuant to this License Agreement, the other party hereto not in control of such suit shall, at the request and expense of the party initiating such suitcontrolling party, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
7.7 LICENSEE9.6. BAR-ILAN and TITAN agree for the benefit of ANSAN that, during before either of them shall commence or respond to a suit to enforce and/or defend the exclusive period Patent Rights, they shall consult with ANSAN in good faith to the extent legally permissible to ensure that no action shall jeopardize the legitimate interests of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to grant a sublicense to an infringer under Article 7.1 ANSAN in the TERRITORY for the FIELD OF USE for future use of the PATENT RIGHTSPatent Rights. Any fees received shall be treated as sublicense fees according to Article 3.2(ii).
7.8 Each party hereto TITAN further agrees that it will cooperate in good faith with ANSAN to establish an agreement for shared responsibility and/or cost of enforcement and/or defense to the extent that such enforcement and/or defense implicates both the ANSAN Field and its AFFILIATES will not challenge the validity of the PATENT RIGHTSTITAN Field.
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