INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 PHS and LICENSEE shall notify each other promptly of each infringement or possible infringement of the LICENSED PATENT RIGHTS, as well as any facts which may affect the validity, scope, or enforceability of the LICENSED PATENT RIGHTS of which either Party becomes aware. 11.02 Pursuant to this AGREEMENT and the provisions of Chapter 29 of title 35, United States Code, LICENSEE may: a) bring suit in its own name, at its own expense, and on its own behalf for infringement of presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, enjoin infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for infringement of the LICENSED PATENT RIGHTS provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions at its sole expense. If LICENSEE desires to initiate a suit for patent infringement, LICENSEE shall notify PHS in writing. If PHS does not notify LICENSEE of its intent to pursue legal action within sixty (60) days, LICENSEE will be free to initiate suit. PHS shall have a continuing right to intervene in such suit. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such suit for patent infringement. LICENSEE may request the GOVERNMENT to initiate or join in any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action, including any and all costs incurred by the GOVERNMENT in opposing any such motion or other action. In all cases, LICENSEE shall keep PHS apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit. 11.03 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the LICENSED PATENT RIGHTS shall be brought against LICENSEE or raised by way of counterclaim or affirmative defense in an infringement suit brought by LICENSEE under Paragraph 11.02, pursuant to this AGREEMENT and the provisions of Chapter 29 of Title 35, United States Code or other statutes, LICXXXXX xxx: x) xxxxxx xxx suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for declaratory judgment involving the LICENSED PATENT RIGHTS; provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions and shall have a continuing right to intervene in such suit. If PHS does not notify LICENSEE of its intent to respond to the legal action within sixty (60) days, LICENSEE will be free to do so. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such declaratory judgment action. LICENSEE may request the GOVERNMENT to initiate or to join any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit by motion or any other action of LICENSEE, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action. If LICENSEE elects not to defend against such declaratory judgment action, PHS, at its option, may do so at its own expense. In all cases, LICENSEE shall keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit. 11.04 In any action under Paragraphs 11.02 or 11.03, the expenses including costs, fees, attorney fees, and disbursements, shall be paid by LICENSEE. Up to fifty percent (50%) of such expenses may be credited against earned royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty (50%) of such expenses exceed the amount of earned royalties payable by LICENSEE in any calendar year in such country, the expenses in excess may be carried over as a credit on the same basis into succeeding calendar years. Such a credit against litigation expenses, however, shall not apply to royalties other than earned royalties for the country in which a suit is brought. Any recovery made by LICENSEE, through a court judgement or settlement, first shall be applied to reimburse PHS for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount shall be treated as NET SALES and earned royalties on such amounts shall be calculated based on the royalty rate that would have applied to NET SALES in the year in which such loss occurred. 11.05 PHS shall cooperate fully with LICENSEE in connection with any action under Paragraphs 11.02 or 11.03. PHS agrees promptly to provide access to all necessary documents and to render reasonable assistance in response to a request by LICENSEE.
Appears in 1 contract
INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 PHS 11.1 The IC and LICENSEE shall the Licensee agree to notify each other promptly of each infringement or possible infringement of the LICENSED PATENT RIGHTSJointly Owned Licensed Patent Rights, as well as any facts which that may affect the validity, scope, or enforceability of the LICENSED PATENT RIGHTS Jointly Owned Licensed Patent Rights of which either Party party becomes aware.
11.02 11.2 Pursuant to this AGREEMENT Agreement and the provisions of 35 U.S.C. Chapter 29 of title 3529, United States Code, LICENSEE may: the Licensee or its Affiliate or Sublicensee shall have the right (but not the obligation) to:
(a) bring suit in its own name, at its own expense, and on its own behalf for infringement of presumably valid claims Valid Claims in the LICENSED PATENT RIGHTS; Jointly Owned Licensed Patent Rights;
(b) in any such suit, enjoin infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for such the infringement; and or
(c) settle any claim or suit for infringement of the LICENSED PATENT RIGHTS Jointly Owned Licensed Patent Rights provided, however, that PHS the IC and appropriate GOVERNMENT Government authorities shall have the first right rights to take such actions at actions; and
(d) If the Licensee or its sole expense. If LICENSEE Affiliate or Sublicensee desires to initiate a suit for patent infringement, LICENSEE the Licensee or its Affiliate or Sublicensee shall notify PHS the IC in writingwriting of such desire. If PHS the IC does not notify LICENSEE the Licensee of its intent to pursue legal action within sixty ninety (6090) daysdays of Licensee’s (or its Affiliate’s or Sublicensee’s) notice to the IC, LICENSEE will then the Licensee shall be free to initiate suit. PHS For expedited proceedings that, by law, require a plaintiff to pursue legal action within ninety (90) days of a triggering event, such as the period prescribed by 35 U.S.C. § 271(e)(5), Licensee shall notify the IC immediately upon receipt of any information that may give rise to a triggering event. If the IC does not inform the Licensee of its intent to pursue legal action within (10) business days of the triggering event, the Licensee shall be free to initiate suit. The IC shall have a continuing right to intervene in such the suit, at its own expense. LICENSEE The Licensee or its Affiliates or Sublicensees shall take no action to not compel the GOVERNMENT Government either to initiate or to join in any such suit for patent infringement. LICENSEE The Licensee may request the GOVERNMENT Government to initiate or join in any such suit if necessary to avoid dismissal of the suit, and the Government shall not unreasonably withhold, condition or delay its agreement to such. Should the GOVERNMENT Government be made a party to any such suitsuit brought by the Licensee or its Affiliate or Sublicensee, LICENSEE the Licensee shall reimburse the GOVERNMENT Government for any reasonable costs, expenses, or fees which the GOVERNMENT Government incurs as a result of such motion or other action, including any and all costs incurred by the GOVERNMENT in opposing any such motion or other action. In all such cases, LICENSEE shall the Licensee or its Affiliate or Sublicensee agrees to keep PHS the IC reasonably apprised of the status and progress of any such litigation. Before LICENSEE The Licensee shall notify the IC, before the Licensee commences an infringement actionaction in accordance with the foregoing, LICENSEE shall notify PHS and give careful consideration to the views of PHS the IC provided to Licensee and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.03 11.3 In the event that a declaratory judgment action alleging invalidity invalidity, unenforceability or non-infringement of any of the LICENSED PATENT RIGHTS Jointly Owned Licensed Patent Rights shall be brought against LICENSEE the Licensee or its Affiliate or Sublicensee raised by way of counterclaim or affirmative defense in an infringement suit brought by LICENSEE the Licensee or its Affiliate or Sublicensee under Paragraph 11.0211.2, pursuant to this AGREEMENT Agreement and the provisions of 35 U.S.C. Chapter 29 of Title 35, United States Code or other statutes, LICXXXXX xxx: xor in the event of any other legal action involving the defense of the validity and/or enforceability of any Jointly Owned Licensed Patent Rights, including actions brought through any inter partes review, post-grant review, and any other post-grant proceedings, including reexamination, reissue, supplemental examination, opposition, revocation and other similar proceedings, the Licensee or its Affiliate or Sublicensee shall have the right (but not the obligation) xxxxxx xxx to:
(a) defend the suit or action in its own name, at its own expense, and on its own behalf for presumably valid claims Valid Claims in the LICENSED PATENT RIGHTS; Jointly Owned Licensed Patent Rights;
(b) in any such suitsuit or action, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such the infringement; and and
(c) settle any claim or suit for declaratory judgment or other action involving the LICENSED PATENT RIGHTS; Jointly Owned Licensed Patent Rights provided, however, that PHS the IC and appropriate GOVERNMENT Government authorities shall have the first right to take such actions and shall have a continuing right to intervene in such suit. If PHS the suit at its own expense; and
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(d) if the IC does not notify LICENSEE the Licensee of its intent to respond to the such legal action within sixty a reasonable time, not to exceed ninety (6090) daysdays from when such action is brought, LICENSEE will the Licensee shall be free to do so. LICENSEE The Licensee shall take no action to compel the GOVERNMENT Government either to initiate or to join in any such declaratory judgment action. LICENSEE The Licensee may request the GOVERNMENT Government to initiate or to join any such suit if necessary to avoid dismissal of the suit, and the Government shall not unreasonably withhold, condition or delay its agreement to such. Should the GOVERNMENT Government be made a party to any such suit by motion or any other action of LICENSEEthe Licensee, LICENSEE the Licensee shall reimburse the GOVERNMENT Government for any reasonable costs, expenses, or fees fees, which the GOVERNMENT Government incurs as a result of such the motion or other action. If LICENSEE the Licensee elects not to defend against such the declaratory judgment action, PHSthe IC, at its option, may do so at its own expense. In all cases, LICENSEE shall the Licensee agrees to keep PHS the IC reasonably apprised of the status and progress of any litigation. Before LICENSEE the Licensee commences an infringement action, LICENSEE the Licensee shall notify PHS the IC and give careful consideration to the views of PHS the IC, and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.04 In 11.4 Except as otherwise provided in Paragraphs 11.2(c) or 11.3(d), in any action brought under Paragraphs 11.02 11.2 or 11.0311.3, the expenses expenses, including costs, fees, attorney fees, and disbursements, shall be paid by LICENSEEthe Licensee (or its Affiliate or Sublicensee) if the Licensee elects to commence or defend such action. Up to fifty percent (50%) The value of such expenses may be credited against earned royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty (50%) of such expenses exceed the amount of earned royalties payable by LICENSEE in any calendar year in such country, the expenses in excess may be carried over as a credit on the same basis into succeeding calendar years. Such a credit against litigation expenses, however, shall not apply to royalties other than earned royalties for the country in which a suit is brought. Any recovery made by LICENSEE, the Licensee through a court judgement judgment or settlement, first shall be applied to reimburse PHS for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount settlement shall be treated as NET SALES Net Sales and subject to earned royalties on after reimbursing for such amounts shall be calculated based on the royalty rate that would have applied to NET SALES in the year in which such loss occurredexpenses paid by Licensee or Government.
11.05 PHS 11.5 The IC shall cooperate fully with LICENSEE the Licensee or its Affiliate or Sublicensee in connection with any action under Paragraphs 11.02 11.2 or 11.03. PHS agrees promptly to provide access to all necessary documents and to render reasonable assistance in response to a request by LICENSEE11.
Appears in 1 contract
Samples: Patent License Agreement (Lixte Biotechnology Holdings, Inc.)
INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 PHS and LICENSEE shall agree to notify each other promptly of each infringement or possible infringement of the LICENSED PATENT RIGHTS, as well as any facts which may affect the validity, scope, or enforceability of the LICENSED PATENT RIGHTS of which either Party becomes aware.
11.02 Pursuant to this AGREEMENT and the provisions of Chapter 29 of title 35, United States Code, LICENSEE mayshall have: a) the first right to bring suit in its own name, at its own expense, and on its own behalf for infringement of presumably valid claims in the LICENSED PATENT RIGHTS; b) the right in any such suit, suit to enjoin infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) the right to settle any claim or suit for infringement of the LICENSED PATENT RIGHTS providedRIGHTS, however, that PHS and appropriate GOVERNMENT authorities shall have subject to approval by the first right to take such actions at its sole expenseU.S. Government. If LICENSEE desires to initiate a suit for patent infringement, LICENSEE shall notify PHS in writing. If PHS does not notify LICENSEE of its intent fails to pursue legal initiate such suit or action within sixty ninety (6090) daysdays of a written notice by PHS requesting that LICENSEE initiate infringement proceedings, LICENSEE will be free PHS shall have the right to initiate suitsuch action. PHS LICENSEE shall have a continuing right to intervene or join in such suit. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such suit for patent infringement. LICENSEE may request the GOVERNMENT to initiate or join in any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action, including any and all costs incurred by the GOVERNMENT in opposing any such motion or other action. In all cases, LICENSEE shall agrees to keep PHS reasonably apprised of the status and progress of any litigationlitigation brought by LICENSEE and PHS agrees to keep LICENSEE reasonably apprised of the status and progress of any litigation brought by PHS. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.03 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the LICENSED PATENT RIGHTS shall be brought against LICENSEE or raised by way of counterclaim or affirmative defense in an infringement suit brought by LICENSEE under Paragraph 11.02, pursuant to this AGREEMENT and the provisions of Chapter 29 of Title 35Xxxxx 00, United States Xxxxxx Xxxxxx Code or other statutes, LICXXXXX xxxLICENSEE may: xa) xxxxxx xxx defend the suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the LICENSED PATENT RIGHTSbehalf; b) in any such suit, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for declaratory judgment involving the LICENSED PATENT RIGHTS; -provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions and shall have a continuing right to intervene join in such suit. If PHS does not notify LICENSEE of its intent to respond to Except where the legal action within sixty (60) daysGovernment is a legally necessary party, LICENSEE will be free to do so. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such declaratory judgment action. LICENSEE may request the GOVERNMENT to initiate or to join any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit by motion or any other action of LICENSEE, LICENSEE shall reimburse the GOVERNMENT for any reasonable costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action. If LICENSEE elects not to defend against such declaratory judgment action, PHS, at its option, may do so at its own expense. In all cases, LICENSEE shall agrees to keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.04 In any action under Paragraphs 11.02 or 11.03, the expenses including costs, fees, attorney fees, and disbursements, shall be paid by LICENSEE. Up to fifty percent (50%) The value of such expenses may be credited against earned royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty (50%) of such expenses exceed the amount of earned royalties payable by LICENSEE in any calendar year in such country, the expenses in excess may be carried over as a credit on the same basis into succeeding calendar years. Such a credit against litigation expenses, however, shall not apply to royalties other than earned royalties for the country in which a suit is brought. Any recovery made by LICENSEE, LICENSEE through a court judgement judgment or settlement, first shall be applied to reimburse PHS for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount settlement shall be treated as NET SALES and subject to earned royalties on such amounts shall be calculated based on the royalty rate that would have applied to NET SALES in the year in which such loss occurredroyalties.
11.05 PHS shall cooperate fully with LICENSEE in connection with any action under Paragraphs 11.02 or 11.03. PHS agrees promptly to provide access to all necessary documents and relevant existing employees, pursuant to 45 C.F.R. Part 2 and to render reasonable assistance in response to a request by LICENSEE.
Appears in 1 contract
Samples: Patent License Agreement (Millennium Pharmaceuticals Inc)
INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 PHS CHOP and LICENSEE shall agree to notify each other promptly of each infringement or possible infringement of the LICENSED PATENT RIGHTS, as well as any facts which that may affect the validity, scope, or enforceability of the LICENSED PATENT RIGHTS of which either Party party becomes aware.
11.02 Pursuant to this AGREEMENT CHOP will protect its LICENSED PATENT RIGHTS from infringement and the provisions of Chapter 29 of title 35, United States Code, LICENSEE may: a) bring suit in its own namename when, at in its own expensesole judgment, such action may be reasonably necessary, proper and on its own behalf for justified.
11.03 If LICENSEE shall have supplied CHOP with written evidence demonstrating to CHOP'S reasonable satisfaction prima facie infringement of presumably valid claims in a claim of a LICENSED PATENT RIGHT by a third party, CHOP is by notice requested to take steps to protect the LICENSED PATENT RIGHTSRIGHT, and unless CHOP shall within three (3) months of the receipt of such notice either (i) cause the infringement to terminate; bor (ii) initiate legal proceeding against the infringing party. LICENSEE may, upon notice to CHOP, at LICENSEE'S expense, initiate legal proceedings against the infringing party using CHOP'S name if so required by law. LICENSEE'S reasonable and customary expenses for such legal proceedings shall be fully creditable against royalties owed to CHOP, provided royalties as determined in any such accordance with APPENDIX C shall [*] No settlement, consent judgement or other voluntary disposition of the suit, enjoin infringement and collect for its use, damages, profits, and awards which invalidates or restricts the claims of whatever nature recoverable for such infringement; and c) settle any claim or suit for infringement of the LICENSED PATENT RIGHTS providedmay be entered into without the consent of LICENSEE AND CHOP, however, which consent shall not be unreasonably withheld. [*] except to the extent that PHS and appropriate GOVERNMENT authorities such [*]
11.04 In the event one party shall have the first right initiate or carry on legal proceedings to take such actions at its sole expense. If LICENSEE desires to initiate a suit for patent enforce any LICENSED PATENT RIGHT against any alleged infringement, LICENSEE the other party shall notify PHS in writing. If PHS does not notify LICENSEE of its intent fully cooperate with and supply all assistance reasonably requested by the party initiating or carrying on such proceedings, including without limitation being joined as a necessary party to pursue legal action within sixty (60) days, LICENSEE will be free to initiate suit. PHS shall have a continuing right to intervene in such suit. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such suit for patent infringement. LICENSEE may request the GOVERNMENT to initiate or join in any such suit if necessary to avoid dismissal of the suit. Should The party which institutes any suit to protect or enforce a LICENSED PATENT RIGHT shall have sole control of that suit and shall bear the GOVERNMENT be made a party to any such suit, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action, including any and all costs reasonable expenses (excluding legal fees) incurred by the GOVERNMENT said other party in opposing any providing such motion or other action. In all cases, LICENSEE shall keep PHS apprised of the status assistance and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.03 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the LICENSED PATENT RIGHTS shall be brought against LICENSEE or raised by way of counterclaim or affirmative defense in an infringement suit brought by LICENSEE under Paragraph 11.02, cooperation as is requested pursuant to this AGREEMENT paragraph. The party initiating or carrying on such legal proceedings shall keep the other party informed of the progress of such proceedings and the provisions of Chapter 29 of Title 35, United States Code or said other statutes, LICXXXXX xxx: x) xxxxxx xxx suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, ultimately party shall be entitled to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for declaratory judgment involving the LICENSED PATENT RIGHTS; provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions and shall have a continuing right to intervene counsel in such suit. If PHS does not notify LICENSEE of its intent to respond to the legal action within sixty (60) days, LICENSEE will be free to do so. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such declaratory judgment action. LICENSEE may request the GOVERNMENT to initiate or to join any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit by motion or any other action of LICENSEE, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action. If LICENSEE elects not to defend against such declaratory judgment action, PHS, at its option, may do so proceedings but at its own expense. In all cases, LICENSEE Any award paid by third parties as the result of such proceedings (whether by way of settlement or otherwise) shall keep PHS reasonably apprised first be applied to reimbursement of the status unreimbursed legal fees and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS expenses incurred by either party and give careful consideration then to the views of PHS [*] and to any potential effects of then the litigation on the public health in deciding whether to bring suit.
11.04 In any action under Paragraphs 11.02 or 11.03, the expenses including costs, fees, attorney fees, and disbursements, remainder shall be paid by LICENSEE. Up divided between the parties as follows:
(i) If the amount is [*] shall receive an amount equal to fifty percent (50%) of such expenses may be credited against earned royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty (50%) of such expenses exceed [*] less the amount of earned royalties payable by LICENSEE in any calendar year in such country[*] as a result of the infringement [*] shall receive an amount equal to [*] or
(b) As to awards other than [*], the expenses in excess may amount will be carried over as a credit on the same basis into succeeding calendar years. Such a credit against litigation expenses[*] [*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, howeverMARKED BY BRACKETS, shall not apply to royalties other than earned royalties for the country in which a suit is brought. Any recovery made by LICENSEEHAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, through a court judgement or settlement, first shall be applied to reimburse PHS for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount shall be treated as NET SALES and earned royalties on such amounts shall be calculated based on the royalty rate that would have applied to NET SALES in the year in which such loss occurredAS AMENDED.
11.05 PHS For the purpose of the proceedings referred to in this Article 11, CHOP and LICENSEE shall cooperate fully with LICENSEE in connection with any action under Paragraphs 11.02 or 11.03. PHS agrees promptly to provide access to all necessary permit the use of their names and shall execute such documents and to render reasonable assistance in response to a request by LICENSEEcarry out such other acts as may be necessary.
Appears in 1 contract
Samples: Factor Ix Patent and Know How Exclusive License Agreement (Avigen Inc \De)
INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 PHS and LICENSEE shall agree to notify each other promptly of each infringement or possible infringement of the LICENSED PATENT RIGHTS, as well as any facts which may affect the validity, scope, or enforceability of the LICENSED PATENT RIGHTS of which either Party becomes aware.
11.02 Pursuant to this AGREEMENT and the provisions of Chapter 29 of title 35, United States Code, LICENSEE may: may a) bring suit in its own name, at its own expense, and on its own behalf for infringement of presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, enjoin infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for infringement of the LICENSED PATENT RIGHTS provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions at its sole expenseactions. If LICENSEE desires to initiate a suit for patent infringement, LICENSEE shall notify PHS in writing. If PHS does not notify LICENSEE of its intent to pursue legal action within sixty ninety (6090) days, LICENSEE will be free to initiate suit. PHS shall have a continuing right to intervene in such suit. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such suit for patent infringement. LICENSEE may request the GOVERNMENT to initiate or join in any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action, including any and all costs incurred by the GOVERNMENT in opposing any such motion or other action. In all cases, LICENSEE shall agrees to keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.03 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the LICENSED PATENT RIGHTS shall be brought against LICENSEE or raised by way of counterclaim or affirmative defense in an infringement suit brought by LICENSEE under Paragraph 11.02, pursuant to this AGREEMENT and the provisions of Chapter 29 of Title 35Xxxxx 00, United States Xxxxxx Xxxxxx Code or other statutes, LICXXXXX xxx: xLICENSEE may a) xxxxxx xxx defend the suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for declaratory judgment involving the LICENSED PATENT RIGHTS; Rights-provided, however, that PHS and appropriate GOVERNMENT Government authorities shall have the first right to take such actions and shall have a continuing right to intervene in such suit. If PHS does not notify LICENSEE of its intent to respond to the legal action within sixty (60) daysa reasonable time, LICENSEE will be free to do so. LICENSEE Licensee shall take no action to compel the GOVERNMENT either to initiate or to join in any such declaratory judgment action. LICENSEE may request the GOVERNMENT to initiate or to join any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit by motion or any other action of LICENSEE, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action. If LICENSEE elects not to defend against such declaratory judgment action, PHS, at its option, may do so at its own expense. In all cases, LICENSEE shall agrees to keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.04 In any action under Paragraphs 11.02 or 11.03, the expenses including costs, fees, attorney fees, and disbursements, shall be paid by LICENSEE. Up to fifty twenty-five percent (5025%) of such expenses may be credited against earned the royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty twenty-five percent (5025%) of such expenses exceed the amount of earned royalties payable by LICENSEE in any calendar year in such countryyear, the expenses in excess may be carried over as a credit on the same basis into succeeding calendar years. Such a A credit against litigation expenses, however, shall may not apply reduce the royalties due in any calendar year to royalties other less than earned royalties for the country in which a suit is broughtminimum annual royalty. Any recovery made by LICENSEE, through a court judgement judgment or settlement, first shall be applied to reimburse PHS for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount recoveries shall be treated as NET SALES split with seventy-five (75%) going to Licensee and earned royalties on such amounts shall be calculated based on the royalty rate that would have applied twenty-five percent (25%) going to NET SALES in the year in which such loss occurredPHS.
11.05 PHS shall cooperate fully with LICENSEE in connection with any action under Paragraphs 11.02 or 11.03. PHS agrees promptly to provide access to all necessary documents and to render reasonable assistance in response to a request by LICENSEE.
Appears in 1 contract
INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 9.01 PHS and LICENSEE shall agree to notify each other promptly of each infringement or possible infringement of the LICENSED PATENT RIGHTSinfringement, as well as any facts which may affect the validity, scope, or enforceability of the LICENSED PATENT RIGHTS of which either Party becomes aware.
11.02 Pursuant 9.02 If PHS has been unable to this AGREEMENT and eliminate a substantial infringement within one (1) year of written notification to the provisions Office of Chapter 29 Technology Transfer from LICENSEE of title 35, United States Code, LICENSEE may: a) bring suit in its own name, at its own expense, and on its own behalf for infringement the existence of presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, enjoin a substantial infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for has not instituted infringement of the LICENSED PATENT RIGHTS provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions at its sole expense. If LICENSEE desires to initiate a suit for patent infringementlitigation, LICENSEE shall be excused from the payment of the minimum annual royalty and earned royalties in any country in which the substantial infringement continues to occur. Thereafter, when the substantial infringement has ceased or an infringement suit has been initiated, PHS shall so notify PHS the LICENSEE in writing. If PHS does not notify LICENSEE of its intent , at which time LICENSEE'S obligation to pursue legal action within sixty (60) days, LICENSEE will be free to initiate suit. PHS pay such royalties shall have a continuing right to intervene in such suit. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such suit for patent infringement. LICENSEE may request the GOVERNMENT to initiate or join in any such suit if necessary to avoid dismissal resume as of the suit. Should the GOVERNMENT be made a party to any such suit, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result date of such motion or other action, including any and all costs incurred by the GOVERNMENT in opposing any such motion or other action. In all cases, LICENSEE shall keep PHS apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suitnotification.
11.03 9.03 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the LICENSED PATENT RIGHTS shall be brought against PHS, PHS agrees to notify LICENSEE or raised by way of counterclaim or affirmative defense in that an infringement suit brought by LICENSEE under Paragraph 11.02, pursuant to this AGREEMENT and the provisions of Chapter 29 of Title 35, United States Code or other statutes, LICXXXXX xxx: x) xxxxxx xxx suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for declaratory judgment involving the LICENSED PATENT RIGHTS; provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions and shall have a continuing right to intervene in such suitaction alleging invalidity has been brought. If PHS does not notify LICENSEE of its intent to respond to the represent that it will commence legal action within sixty (60) days, LICENSEE will be free to do sodefend against a declaratory action alleging invalidity. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such declaratory judgment action. LICENSEE may request the GOVERNMENT to initiate or to join any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit by motion or any other action of LICENSEE, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of its defending against such NIH Office of Technology Transfer PHS PATENT LICENSE AGREEMENT NONEXCLUSIVE 940329 C Page 7 of 17 L-152-97/0 BioDx Inc. FINAL 9/17/97 7 motion or other action taken in response to the motion. Upon LICENSEE'S payment of all costs incurred by the GOVERNMENT as a result of LICENSEE'S joinder motion or other action. If , these actions by LICENSEE elects will not to defend against such declaratory judgment action, PHS, at its option, may do so at its own expense. In all cases, LICENSEE shall keep PHS reasonably apprised of be considered a default in the status and progress performance of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suitmaterial obligation under this AGREEMENT.
11.04 In any action under Paragraphs 11.02 or 11.03, the expenses including costs, fees, attorney fees, and disbursements, shall be paid by LICENSEE. Up to fifty percent (50%) of such expenses may be credited against earned royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty (50%) of such expenses exceed the amount of earned royalties payable by LICENSEE in any calendar year in such country, the expenses in excess may be carried over as a credit on the same basis into succeeding calendar years. Such a credit against litigation expenses, however, shall not apply to royalties other than earned royalties for the country in which a suit is brought. Any recovery made by LICENSEE, through a court judgement or settlement, first shall be applied to reimburse PHS for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount shall be treated as NET SALES and earned royalties on such amounts shall be calculated based on the royalty rate that would have applied to NET SALES in the year in which such loss occurred.
11.05 PHS shall cooperate fully with LICENSEE in connection with any action under Paragraphs 11.02 or 11.03. PHS agrees promptly to provide access to all necessary documents and to render reasonable assistance in response to a request by LICENSEE.
Appears in 1 contract
Samples: PHS Patent License Agreement Nonexclusive (Cellomics Inc)
INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 9.01 PHS and LICENSEE shall agree to notify each other promptly of each infringement or possible infringement of the LICENSED PATENT RIGHTSinfringement, as well as any facts which may affect the validity, scope, or enforceability of the LICENSED PATENT RIGHTS of which either Party becomes aware.
11.02 Pursuant 9.02 If PHS has been unable to this AGREEMENT and eliminate a substantial infringement within one (1) year of written notification to the provisions Office of Chapter 29 Technology Transfer from LICENSEE of title 35, United States Code, LICENSEE may: a) bring suit in its own name, at its own expense, and on its own behalf for infringement the existence of presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, enjoin a substantial infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for has not instituted infringement of the LICENSED PATENT RIGHTS provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions at its sole expense. If LICENSEE desires to initiate a suit for patent infringementlitigation, LICENSEE shall be excused from [*]. Thereafter, when the substantial infringement has ceased or an infringement suit has been initiated, PHS shall so notify PHS the LICENSEE in writing. If PHS does not notify LICENSEE of its intent to pursue legal action within sixty (60) days, LICENSEE will be free to initiate suit. PHS at which time [*] shall have a continuing right to intervene in such suit. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such suit for patent infringement. LICENSEE may request the GOVERNMENT to initiate or join in any such suit if necessary to avoid dismissal resume as of the suit. Should the GOVERNMENT be made a party to any such suit, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result date of such motion or other action, including any and all costs incurred by the GOVERNMENT in opposing any such motion or other action. In all cases, LICENSEE shall keep PHS apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suitnotification.
11.03 9.03 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the LICENSED PATENT RIGHTS shall be brought against PHS, PHS agrees to notify LICENSEE or raised by way of counterclaim or affirmative defense in that an infringement suit brought by LICENSEE under Paragraph 11.02, pursuant to this AGREEMENT and the provisions of Chapter 29 of Title 35, United States Code or other statutes, LICXXXXX xxx: x) xxxxxx xxx suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for declaratory judgment involving the LICENSED PATENT RIGHTS; provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions and shall have a continuing right to intervene in such suitaction alleging invalidity has been brought. If PHS does not notify LICENSEE of its intent to respond to the represent that it will commence legal action within sixty (60) days, LICENSEE will be free to do sodefend against a declaratory action alleging invalidity. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such declaratory judgment action. LICENSEE may request the GOVERNMENT to initiate or to join any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit by motion or [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. any other action of LICENSEE, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of its defending against such motion or other action. If LICENSEE elects not to defend against such declaratory judgment action, PHS, at its option, may do so at its own expense. In all cases, LICENSEE shall keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.04 In any action under Paragraphs 11.02 or 11.03, the expenses including costs, fees, attorney fees, and disbursements, shall be paid by LICENSEE. Up to fifty percent (50%) of such expenses may be credited against earned royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty (50%) of such expenses exceed the amount of earned royalties payable by LICENSEE in any calendar year in such country, the expenses in excess may be carried over as a credit on the same basis into succeeding calendar years. Such a credit against litigation expenses, however, shall not apply to royalties other than earned royalties for the country in which a suit is brought. Any recovery made by LICENSEE, through a court judgement or settlement, first shall be applied to reimburse PHS for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount shall be treated as NET SALES and earned royalties on such amounts shall be calculated based on the royalty rate that would have applied to NET SALES in the year in which such loss occurred.
11.05 PHS shall cooperate fully with LICENSEE in connection with any action under Paragraphs 11.02 or 11.03. PHS agrees promptly to provide access to all necessary documents and to render reasonable assistance taken in response to the motion. Upon LICENSEE's payment of all costs incurred by the GOVERNMENT as a request result of LICENSEE's joinder motion or other action, these actions by LICENSEELICENSEE will not be considered a default in the performance of any material obligation under this AGREEMENT.
Appears in 1 contract
Samples: Patent License Agreement (Introgen Therapeutics Inc)
INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 PHS and LICENSEE shall agree to notify each other promptly of each infringement or possible infringement of the LICENSED PATENT RIGHTS, as well as any facts which may affect the validity, scope, or enforceability of the LICENSED PATENT RIGHTS of which either Party becomes aware.
11.02 Pursuant to this AGREEMENT and the provisions of Chapter 29 of title 35, United States Code, LICENSEE may: may a) bring suit in its own name, at its own expense, and on its own behalf for infringement of presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, enjoin infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for infringement of the LICENSED PATENT RIGHTS provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions at its sole expenseactions. If LICENSEE desires to initiate a suit for patent infringement, LICENSEE shall notify PHS in writing. If PHS does not notify LICENSEE of its intent to pursue legal action within sixty ninety (6090) days, LICENSEE will be free to initiate suit. PHS shall have a continuing right to intervene in such suit. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such suit for patent infringement. LICENSEE may request the GOVERNMENT to initiate or join in any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action, including any and all costs incurred by the GOVERNMENT in opposing any such motion or other action. In all cases, LICENSEE shall agrees to keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.03 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the LICENSED PATENT RIGHTS shall be brought against LICENSEE or raised by way of counterclaim or affirmative defense in an infringement suit brought by LICENSEE under Paragraph 11.02, pursuant to this AGREEMENT and the provisions of Chapter 29 of Title 35Titlx 00, United States Code Xxxxxx Xxxxxx Xxxe or other statutes, LICXXXXX xxx: xLICENSEE may a) xxxxxx xxx defend the suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for declaratory judgment involving the LICENSED PATENT RIGHTS; Rights-provided, however, that PHS and appropriate GOVERNMENT Government authorities shall have the first right to take such actions and shall have a continuing right to intervene in such suit. If PHS does not notify LICENSEE of its intent to respond to the legal action within sixty (60) daysa reasonable time, LICENSEE will be free to do so. LICENSEE Licensee shall take no action to compel the GOVERNMENT either to initiate or to join in any such declaratory judgment action. LICENSEE may request the GOVERNMENT to initiate or to join any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit by motion or any other action of LICENSEE, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action. If LICENSEE elects not to defend against such declaratory judgment action, PHS, at its option, may do so at its own expense. In all cases, LICENSEE shall agrees to keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.04 In any action under Paragraphs 11.02 or 11.03, the expenses including costs, fees, attorney fees, and disbursements, shall be paid by LICENSEE. Up to fifty twenty-five percent (5025%) of such expenses may be credited against earned the royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty twenty-five percent (5025%) of such expenses exceed the amount of earned royalties payable by LICENSEE in any calendar year in such countryyear, the expenses in excess may be carried over as a credit on the same basis into succeeding calendar years. Such a A credit against litigation expenses, however, shall may not apply reduce the royalties due in any calendar year to royalties other less than earned royalties for the country in which a suit is broughtminimum annual royalty. Any recovery made by LICENSEE, through a court judgement judgment or settlement, first shall be applied to reimburse PHS for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount recoveries shall be treated as NET SALES split with seventy-five (75%) going to Licensee and earned royalties on such amounts shall be calculated based on the royalty rate that would have applied twenty-five percent (25%) going to NET SALES in the year in which such loss occurredPHS.
11.05 PHS shall cooperate fully with LICENSEE in connection with any action under Paragraphs 11.02 or 11.03. PHS agrees promptly to provide access to all necessary documents and to render reasonable assistance in response to a request by LICENSEE.
Appears in 1 contract
INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 PHS and LICENSEE shall agree to notify each other promptly of each infringement or possible infringement of the LICENSED PATENT RIGHTS, as well as any facts which may affect the validity, scope, or enforceability of the LICENSED PATENT RIGHTS of which either Party becomes aware.
11.02 Pursuant to this AGREEMENT and the provisions of Chapter 29 of title 35, United States Code, LICENSEE may: a) bring suit in its own name, at its own expense, and on its own behalf for infringement of presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, enjoin infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and (c) settle any claim or suit for infringement of the LICENSED PATENT RIGHTS Licensed Patent Rights provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions at its sole expenseactions. If LICENSEE desires to initiate a suit for patent infringement, LICENSEE shall notify PHS in writing. If PHS does not notify LICENSEE of its intent to pursue legal action within sixty ninety (6090) days, LICENSEE will be free to initiate suit. PHS shall have a continuing right to intervene in such suit. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such suit for patent infringement. LICENSEE may request the GOVERNMENT to initiate or join in any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action, including any and all costs incurred by the GOVERNMENT in opposing any such motion or other action. In all cases, LICENSEE shall agrees to keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.. PHS Patent License Agreement-Exclusive CONFIDENTIAL L-180-97/0 Model 980611 Page 10 of 38 Final GenVec, Inc. January 7, 2000
11.03 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the LICENSED PATENT RIGHTS shall be brought against LICENSEE or raised by way of counterclaim or affirmative defense in an infringement suit brought by LICENSEE under Paragraph 11.02, pursuant to this AGREEMENT and the provisions of Chapter 29 of Title 35Txxxx 00, United States Xxxxxx Xxxxxx Code or other statutes, LICXXXXX xxxLICENSEE may: xa) xxxxxx xxx defend the suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for declaratory judgment involving the LICENSED PATENT RIGHTS; -provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions and shall have a continuing right to intervene in such suit. If PHS does not notify LICENSEE of its intent to respond to the legal action within sixty (60) daysa reasonable time, LICENSEE will be free to do so. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such declaratory judgment action. LICENSEE may request the GOVERNMENT to initiate or to join any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit by motion or any other action of LICENSEE, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action. If LICENSEE elects not to defend against such declaratory judgment action, PHS, at its option, may do so at its own expense. In all cases, LICENSEE shall agrees to keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.04 In any action under Paragraphs 11.02 or 11.03, the expenses including costs, fees, attorney fees, and disbursements, shall be paid by LICENSEE. Up to fifty percent (50%) The value of such expenses may be credited against earned royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty (50%) of such expenses exceed the amount of earned royalties payable by LICENSEE in any calendar year in such country, the expenses in excess may be carried over as a credit on the same basis into succeeding calendar years. Such a credit against litigation expenses, however, shall not apply to royalties other than earned royalties for the country in which a suit is brought. Any recovery made by LICENSEE, LICENSEE through a court judgement judgment or settlement, first shall be applied to reimburse PHS for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount settlement shall be treated as NET SALES and subject to earned royalties on such amounts shall be calculated based on the royalty rate that would have applied to NET SALES in the year in which such loss occurredroyalties.
11.05 PHS shall cooperate fully with LICENSEE in connection with any action under Paragraphs 11.02 or 11.03. PHS agrees promptly to provide access to all necessary documents and to render reasonable assistance in response to a request by LICENSEE.
Appears in 1 contract
INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 PHS 12.01 OXIQUANT and LICENSEE OHSU shall notify each promptly provide written notice, to the other promptly party, of each any alleged infringement or possible infringement by a third party of the LICENSED PATENT RIGHTS, as well as Licensed Patent Rights and provide such other party with any facts which may affect the validity, scope, or enforceability available evidence of the LICENSED PATENT RIGHTS of which either Party becomes awaresuch infringement.
11.02 Pursuant 12.02 During the term of this Agreement, OXIQUANT shall have the right, but not the obligation, to this AGREEMENT and the provisions of Chapter 29 of title 35, United States Code, LICENSEE may: a) bring suit in its own nameprosecute and/or defend, at its own expenseexpense and utilizing counsel of its choice, and on its own behalf for any infringement of, and/or challenge to, the Licensed Patent Rights. In furtherance of presumably valid claims in the LICENSED PATENT RIGHTS; b) such right, OXIQUANT hereby agrees that QHSU may join OXIQUANT as a party in any such suit, enjoin infringement and collect for its usewithout expense to OHSU. No settlement, damagesconsent judgment or other voluntary final disposition of any such suit which would adversely affect the rights of OHSU may be entered into without the consent of OHSU, profits, and awards of whatever nature recoverable for such infringement; and c) settle any which consent shall not be unreasonably withheld.
12.03 In the event that a claim or suit for infringement is asserted or brought against OXIQUANT alleging that the manufacture or sale of any Licensed Product by OXIQUANT, an Affiliate of OXIQUANT, or any sublicensee, or the use of such Licensed Product by any customer of any of the LICENSED PATENT RIGHTS foregoing, infringes proprietary rights of a third party, OXIQUANT shall give written notice thereof to OHSU. OXIQUANT may, in its sole discretion, modify such Licensed Product to avoid such infringement and/or may settle on terms that it deems advisable in its sole discretion, subject to Paragraph 12.02; provided, howeverthat OXIQUANT shall not enter into any settlement affecting the validity of the Licensed Patents Rights or that would otherwise have a materially adverse impact on OHSU without OHSU’s prior written consent. Otherwise, that PHS and appropriate GOVERNMENT authorities OXIQUANT shall have the first right right, but not the obligation, to take defend any such actions at its sole expenseclaim or suit. If LICENSEE desires In the event OXIQUANT elects not to initiate a defend such suit for patent infringement, LICENSEE shall notify PHS in writing. If PHS does not notify LICENSEE of its intent to pursue legal action within sixty (60) daysdays after the filing thereof, LICENSEE will be free to initiate suit. PHS OHSU shall have a continuing right the right, but not the obligation to intervene in such suit. LICENSEE do so at its sole expense.
12.04 Without limiting either party’s obligation to cooperate with the other under Section 12.08, OXIQUANT shall take no action to compel the GOVERNMENT OHSU either to initiate or to join in any such suit for patent infringementbrought under Paragraphs 12.02 or 12.03. LICENSEE OXIQUANT may request the GOVERNMENT OHSU to initiate or join in any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT OHSU be made a party to any such suit, LICENSEE OXIQUANT shall reimburse the GOVERNMENT OHSU for any costs, expenses, or fees which the GOVERNMENT OHSU incurs as a result of such motion or other action, including any and all costs incurred by the GOVERNMENT OHSU in opposing any such motion or other action. In all cases, LICENSEE shall keep PHS apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.03 In the event that a declaratory judgment action alleging invalidity or non-infringement 12.05 Any recovery of any of the LICENSED PATENT RIGHTS shall be brought against LICENSEE or raised damages by way of counterclaim or affirmative defense in an infringement suit brought by LICENSEE under Paragraph 11.02OXIQUANT, pursuant to this AGREEMENT and the provisions of Chapter 29 of Title 35, United States Code or other statutes, LICXXXXX xxx: x) xxxxxx xxx suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, ultimately shall be applied first in satisfaction of any unreimbursed expenses and legal fees of OXIQUANT relating to enjoin infringement the suit and then to collect OHSU for its use, damages, profits, any royalties credited in accordance with Paragraph 12.06. The balance remaining from any such recovery shall be treated as payments received by OXIQUANT from sublicensees and awards shared by OHSU and OXIQUANT in accordance with Paragraph 6.03 hereof.
12.06 OXIQUANT may credit any litigation costs incurred by OXIQUANT in any country pursuant to this Article 12 and all amounts paid in judgement or settlement of whatever nature recoverable litigation within the scope of this Article 12 against royalties thereafter payable to OHSU hereunder for such country and apply the same toward one-half of its actual, reasonable out-of-pocket litigation costs. If such litigation costs in such country exceeds 50% of royalties payable to OHSU in any year in which such costs are incurred than the amount of such costs, expenses and amounts paid in judgement or settlement, in excess of such 50% of the royalties payable shall be carried over and credited against royalty payments in future years for such country.
12.07 If within six (6) months after receiving notice of any alleged infringement; and c) settle any claim or suit for declaratory judgment involving the LICENSED PATENT RIGHTS; provided, however, that PHS and appropriate GOVERNMENT authorities OXIQUANT shall have been unsuccessful in persuading the first right alleged infringer to take such actions desist, or shall not have brought and shall have a continuing right to intervene in such suit. If PHS does not notify LICENSEE of its intent to respond to the legal action within sixty (60) days, LICENSEE will be free to do so. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such declaratory judgment action. LICENSEE may request the GOVERNMENT to initiate or to join any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit by motion or any other action of LICENSEE, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action. If LICENSEE elects not to defend against such declaratory judgment action, PHS, at its option, may do so at its own expense. In all cases, LICENSEE shall keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences diligently prosecuting an infringement action, LICENSEE or if OXIQUANT shall notify PHS OHSU, at any time prior thereto, of its intention not to bring suit against the alleged infringer, then, and give careful consideration in those events only, OHSU shall have the right, but not the obligation, to prosecute, at its own expense and utilizing counsel of its choice, any infringement of the Licensed Patent Rights, and OXIQUANT may, for such purposes, join OHSU as a party plaintiff. The total cost of any such infringement action commenced solely by OHSU shall be borne by OHSU and OHSU shall keep any recovery or damages for infringement or otherwise derived therefrom and such shall not be applicable to any royalty obligation of OXIQUANT.
12.08 In any suit to enforce and/or defend the Licensed Patent Rights pursuant to this License Agreement, the party not in control of such suit shall, at the request and expense of the controlling party, cooperate in all reasonable respects and, to the views of PHS extent practicable, have its employees testify when requested and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.04 In any action under Paragraphs 11.02 or 11.03make available relevant records, the expenses including costspapers, feesinformation, attorney feessamples, specimens, and disbursements, shall be paid by LICENSEE. Up to fifty percent (50%) of such expenses may be credited against earned royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty (50%) of such expenses exceed the amount of earned royalties payable by LICENSEE in any calendar year in such country, the expenses in excess may be carried over as a credit on the same basis into succeeding calendar years. Such a credit against litigation expenses, however, shall not apply to royalties other than earned royalties for the country in which a suit is brought. Any recovery made by LICENSEE, through a court judgement or settlement, first shall be applied to reimburse PHS for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount shall be treated as NET SALES and earned royalties on such amounts shall be calculated based on the royalty rate that would have applied to NET SALES in the year in which such loss occurredlike.
11.05 PHS shall cooperate fully with LICENSEE in connection with any action under Paragraphs 11.02 or 11.03. PHS agrees promptly to provide access to all necessary documents and to render reasonable assistance in response to a request by LICENSEE.
Appears in 1 contract
Samples: Exclusive License Agreement (Adherex Technologies Inc)
INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 PHS 10.01 PDM and LICENSEE shall agree to notify each other promptly of each infringement or possible infringement of the LICENSED PATENT RIGHTS, as well as any facts which may affect the validity, scope, or enforceability of the LICENSED PATENT RIGHTS of which either Party becomes aware.
11.02 10.02 Pursuant to this AGREEMENT and the provisions of Chapter 29 of title 35, United States Code, LICENSEE may: may a) bring suit in its own name, at its own expense, and on its own behalf for infringement of presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, enjoin infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for infringement of the LICENSED PATENT RIGHTS provided, however, that PHS and appropriate GOVERNMENT authorities PDM shall have the first right to take such actions at its sole expenseactions. If LICENSEE desires to initiate a suit for patent infringement, LICENSEE shall notify PHS PDM in writing. If PHS PDM does not notify LICENSEE of its intent to pursue legal action within sixty ninety (6090) days, LICENSEE will be free to initiate suit. PHS PDM shall have a continuing right to intervene in such suit. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such suit for patent infringement. LICENSEE may request the GOVERNMENT to initiate or join in any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action, including any and all costs incurred by the GOVERNMENT in opposing any such motion or other action. In all cases, LICENSEE shall agrees to keep PHS PDM reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS PDM and give careful consideration to the views of PHS PDM and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.03 10.03 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the LICENSED PATENT RIGHTS shall be brought against LICENSEE or raised by way of counterclaim or affirmative defense in an infringement suit brought by LICENSEE under Paragraph 11.0210.02, pursuant to this AGREEMENT and the provisions of Chapter 29 of Title 35, United States Code or other statutesXxxxxx Xxxx xx xxxxx xxxxxxxx, LICXXXXX xxx: xXXXXNSEE may a) xxxxxx xxx defend the suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for declaratory judgment involving the LICENSED PATENT RIGHTS; Rights-provided, however, that PHS and appropriate GOVERNMENT authorities PDM shall have the first right to take such actions and shall have a continuing right to intervene in such suit. If PHS PDM does not notify LICENSEE of its intent to respond to the legal action within sixty (60) daysa reasonable time, LICENSEE will be free to do so. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such declaratory judgment action. LICENSEE may request the GOVERNMENT to initiate or to join any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit by motion or any other action of LICENSEE, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action. If LICENSEE elects not to defend against such declaratory judgment action, PHSPDM, at its option, may do so at its own expense. In all cases, LICENSEE shall agrees to keep PHS PDM reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS PDM and give careful consideration to the views of PHS PDM and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.04 In any action under Paragraphs 11.02 or 11.03, the expenses including costs, fees, attorney fees, and disbursements, shall be paid by LICENSEE. Up to fifty percent (50%) of such expenses may be credited against earned royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty percent (50%) of such expenses exceed the amount of earned royalties payable by LICENSEE in any calendar year in such countryyear, the expenses in excess may be carried over as a credit on the same basis into succeeding calendar years. Such a A credit against litigation expenses, however, shall may not apply reduce the royalties due in any calendar year to royalties other less than earned royalties for the country in which a suit is broughtminimum annual royalty. Any recovery made by LICENSEE, through a court judgement judgment or settlement, first shall be applied to reimburse PHS PDM for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount recoveries shall be treated as NET SALES shared equally by LICENSEE and earned royalties on such amounts shall be calculated based on the royalty rate that would have applied to NET SALES in the year in which such loss occurredPDM.
11.05 PHS 10.04 PDM shall cooperate fully with LICENSEE in connection with any action under Paragraphs 11.02 Paragraph 10.02 or 11.03. PHS agrees promptly to provide access to all necessary documents and to render reasonable assistance in response to a request by LICENSEE10.
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Samples: Patent License Agreement (Utek Corp)
INFRINGEMENT AND PATENT ENFORCEMENT. 11.01 PHS and LICENSEE shall agree to notify each other promptly of each infringement or possible infringement of the LICENSED PATENT RIGHTS, as well as any facts which may affect the validity, scope, or enforceability of the LICENSED Licensed PATENT RIGHTS of which either Party becomes aware.
11.02 Pursuant to this AGREEMENT and the provisions of Chapter 29 of title 35, United States Code, LICENSEE may: Licensee may a) bring suit in its own name, at its own expense, and on its own behalf for infringement of presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, suit enjoin infringement and collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for infringement of the LICENSED PATENT RIGHTS provided, however, that PHS and appropriate GOVERNMENT authorities shall have the first right to take such actions at its sole expenseactions. If LICENSEE desires to initiate a suit for patent infringement, LICENSEE shall notify PHS in writing. If PHS does not notify LICENSEE of its intent to pursue legal action within sixty ninety (6090) days, or such shorter period as may be required to permit filing of the suit within any applicable limitations period, LICENSEE will be free to initiate suit. PHS shall have a continuing right to intervene in such suit. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such suit for patent infringement. LICENSEE may request the GOVERNMENT to initiate or join in any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action, including any and all costs incurred by the GOVERNMENT in opposing any such motion or other action; provided, however, that LICENSEE shall be reimbursed for such expenses out of any final recovery awarded to the GOVERNMENT. In all cases, LICENSEE shall agrees to keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.03 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the LICENSED PATENT RIGHTS shall be brought against LICENSEE or raised by way of counterclaim or affirmative defense in an infringement suit brought by LICENSEE under Paragraph 11.02, pursuant to this AGREEMENT and the provisions of Chapter 29 of Title 35Xxxxx 00, United States Xxxxxx Xxxxxx Code or other statutes, LICXXXXX xxx: xLICENSEE may a) xxxxxx xxx defend the suit in its own name, at its own expense, and on its own behalf for presumably valid claims in the LICENSED PATENT RIGHTS; b) in any such suit, ultimately to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and c) settle any claim or suit for declaratory judgment involving the LICENSED PATENT RIGHTS; Rights, provided, however, that PHS and appropriate GOVERNMENT Government authorities shall have the first right to take such actions and shall have a continuing right to intervene in such suit. If PHS does not notify LICENSEE of its intent to respond to the legal action within sixty (60) daysa reasonable time, LICENSEE will be free to do so. LICENSEE shall take no action to compel the GOVERNMENT either to initiate or to join in any such declaratory judgment action. LICENSEE may request the GOVERNMENT to initiate or to join any such suit if necessary to avoid dismissal of the suit. Should the GOVERNMENT be made a party to any such suit by motion or any other action of LICENSEE, LICENSEE shall reimburse the GOVERNMENT for any costs, expenses, or fees which the GOVERNMENT incurs as a result of such motion or other action; provided, however, that LICENSEE shall be reimbursed for such expenditures out of any final recovery awarded to the GOVERNMENT. If LICENSEE elects not to defend against such declaratory judgment action, PHS, at its option, may do so at its own expense. In all cases, LICENSEE shall agrees to keep PHS reasonably apprised of the status and progress of any litigation. Before LICENSEE commences an infringement action, LICENSEE shall notify PHS and give careful consideration to the views of PHS and to any potential effects of the litigation on the public health in deciding whether to bring suit.
11.04 In any action under Paragraphs 11.02 or 11.03, the expenses including costs, fees, attorney fees, and disbursements, . shall be paid by LICENSEE. Up to fifty percent (50%) of such expenses, representing expenses paid on behalf of the Government and not reimbursed out of any recovery, may be credited against earned the royalties payable to PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in the country in which such a suit is filed. In the event that fifty percent (50%) of such expenses exceed the amount of earned royalties payable by LICENSEE in any calendar year in such countryyear, the expenses in excess may be carried over as a credit on the same basis into succeeding calendar years. Such a A credit against litigation expenses, however, shall may not apply reduce the royalties due in any calendar year to royalties other less than earned royalties for the country in which a suit minimum annual royalty, if any is broughtdue. Any recovery made by LICENSEE, through a court judgement judgment or settlement, first shall be applied to reimburse PHS for royalties withheld as a credit against litigation expenses and then to reimburse LICENSEE for its litigation expense. Any remaining amount recoveries shall be treated as NET SALES shared equally by LICENSEE and earned royalties on such amounts shall be calculated based on the royalty rate that would have applied to NET SALES in the year in which such loss occurredPHS.
11.05 PHS shall cooperate fully with LICENSEE in connection with any action under Paragraphs 11.02 or 11.03. PHS agrees promptly to provide access to all necessary documents and to render reasonable assistance in response to a request by LICENSEE.
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