Infringement of the Licensed Patents. 8.3.1 Each Party shall inform the other Parties promptly if it becomes aware (provided that in the case of UCLA, UCLA shall be deemed only to have become aware if the matter in question is in the awareness of the licensing officer responsible for administration of this Agreement) of: (a) any infringement or potential infringement or unauthorised use of any of the Joint Patents, UCLB Patents, Joint Clinical Data, the LCR-EFS Platform IP, the MPS1 IP, the Perforin IP or the [***] (the “Exclusively Licensed IP”); (b) any challenge to the validity of any of the Licensed Patents; or (c) any challenge to the ownership of the Exclusively Licensed IP and Orchard and UCLB shall consult with each other (and, in the case of Joint UCLB/UCLA Technology, with UCLA) to decide the best way to respond to such infringement, unauthorised use or challenge. 8.3.2 Orchard shall have the sole right (but not obligation) to take action against any third party infringing or alleged to be infringing or making any unauthorised use of any of the Exclusively Licensed IP in the Field or challenging the validity of any of the Licensed Patents or the ownership of any of the Exclusively Licensed IP at its sole expense. Should Orchard take any such action to enforce or defend such IP then: (a) UCLB shall on Orchard’s request cooperate with Orchard in such action and do all things and execute all documents as Orchard shall request. Orchard shall reimburse UCLB for all reasonable Third Party costs and expenses (including legal fees and expenses) incurred by UCLB solely in providing such cooperation in accordance with the terms hereof; and (b) Orchard shall be entitled to request by giving written notice that UCLA shall, in connection with the enforcement and/or defence of the Joint UCLB/UCLA Technology, cooperate with Orchard in such action and do all things and execute all documents as Orchard shall request. UCLA shall not unreasonably withhold or delay its consent. If UCLA consents to be joined Orchard shall reimburse UCLA for all reasonable Third Party costs and expenses (including legal fees and expenses) incurred by UCLA solely in providing such cooperation in accordance with the terms hereof. If UCLA does not consent, all payments due under this Agreement in respect of the ADA SCID Products and the country to which the legal action relates (except patent cost reimbursement), including all royalties, milestones and other payments, shall be reduced by [***] for so long as the subject matter of the legal action continues unabated but only to the extent that such infringement materially and adversely affects the business of Orchard or its Sub-licensees relating to ADA SCID Products; and (c) subject to Clauses 8.3.3 to 8.3.6, and Clause 8.4, Orchard shall be solely responsible for the conduct of the action or for settlement thereof and, subject to Clause 8.3.4, shall be entitled to all damages received from such action. 8.3.3 Before starting or defending or settling any legal action under Clause 8.3.2, Orchard shall consult with UCLB (and where it concerns Joint UCLB/UCLA Technology, UCLA) as to the advisability of the action or defence or settlement, its effect on the good reputation of UCLB and, as applicable, UCLA, and how the action or defence should be conducted. Orchard shall not settle any legal action concerning the Joint UCLB/UCLA Technology without the written consent of UCLA’s Board of Regents, not to be unreasonably withheld or delayed. 8.3.4 Orchard shall indemnify and hold harmless and keep indemnified and held harmless UCLB (and in connection with the enforcement and/or defence of the Joint Technology, UCLA) for all Third Party expenses and claims awarded against it in any legal action under Clause 8.3.2, including any third party costs, account of profits, awards, damages, or other third party legal costs, expenses or liability incurred by UCLB or UCLA as a consequence of their involvement in such proceedings. Orchard shall pay UCLB Royalties, in accordance with Clause 5, on any damages received from such action as if the amount of such damages after deduction of all litigation costs and expenses and payments under any indemnities in relation to the action were Net Sales Value. 8.3.5 UCLB may agree (such agreement not to be unreasonably withheld or delayed), on the reasonable request of Orchard, to be joined in any suit to enforce such rights or take such action in its own name subject to being indemnified and held harmless and kept indemnified and held harmless by Orchard as to any out of pocket costs, account of profits, awards, damages, or other third party legal costs, expenses or liability which may be incurred as a result of so doing. Orchard shall have the right to conduct such proceedings but shall seek and take into reasonable consideration UCLB’s views and opinions in respect of any such suit or action. UCLB shall have the right to be separately represented in any proceedings into which it is joined at its own expense in which case the foregoing indemnity shall not apply.
Appears in 2 contracts
Samples: License Agreement (Orchard Rx LTD), License Agreement (Orchard Rx LTD)
Infringement of the Licensed Patents. 8.3.1 Each Party shall inform the other Parties promptly if it becomes aware (provided that in the case of UCLA, UCLA shall be deemed only to have become aware if the matter in question is in the awareness of the licensing officer responsible for administration of this Agreement) of:
(a) If either Licensor or Licensee becomes aware of any infringement or potential infringement or unauthorised use of any of the Joint Licensed Patents, UCLB Patents, Joint Clinical Data, each party shall promptly notify the LCR-EFS Platform IP, the MPS1 IP, the Perforin IP or the [***] (the “Exclusively Licensed IP”);other of such in writing.
(b) Licensee shall enforce the Licensed Patents against any challenge infringement by a third party. Licensee shall be responsible for payment of all fees and expenses associated with such enforcement incurred by Licensee and incurred by Licensor in providing cooperation or joining as a party as provided in Section 10.3(e). Licensee shall pay Licensor a percentage equivalent to the validity Sublicense Fee rate set forth in Section 3.5 above on any monetary recovery, including any punitive damages, in excess of Licensee’s documented, third-party expenses in enforcing the Licensed Patents and amounts reimbursed to Licensor under this Section 10.3. Licensee shall not settle, enter into voluntary disposition of, or compromise any such suit in a manner that imposes any obligations or restrictions on Licensor or grants any rights to the Licensed Patents without Licensor’s prior written permission.
(c) If Licensee does not file suit within six (6) months after a written request by Licensor to initiate an infringement action, then Licensor shall have the right, at its sole discretion, to bring suit to enforce any Licensed Patents against the infringing activities, with Licensor retaining all recoveries from such enforcement. If Licensor pursues such infringement action, Licensor may, as part of the resolution of such efforts, grant non-exclusive license rights to the alleged infringer notwithstanding Licensee’s exclusive license rights. In addition, Licensor, in its sole discretion, shall have the right at any time to intervene at Licensor’s own expense and join Licensee in any claim or suit for infringement of the Licensed Patents; or. In the event Licensor elects to join in such claim or suit, any consideration received in connection with any such claim or suit shall be shared between Licensor and Licensee in proportion with their share of the litigation expenses in such infringement action.
(cd) In any challenge infringement suit or dispute, the parties agree to cooperate fully with each other. At the ownership request of the Exclusively Licensed IP and Orchard and UCLB shall consult party bringing suit, the other party will permit reasonable access after reasonable advance notice to all relevant personnel, records, papers, information, samples, specimens, etc., during regular business hours, as is necessary for the infringement suit or dispute and/or to comply with each other (and, in the case lawful process of Joint UCLB/UCLA Technology, with UCLA) to decide the best way to respond to such infringement, unauthorised use or challengea court of competent jurisdiction.
8.3.2 Orchard shall have the sole right (but not obligatione) If it is necessary to take action against any third name Licensor as a party infringing or alleged to be infringing or making any unauthorised use of any of the Exclusively Licensed IP in the Field or challenging the validity of any of the Licensed Patents or the ownership of any of the Exclusively Licensed IP at its sole expense. Should Orchard take any such action to enforce or defend such IP then:
(a) UCLB shall on Orchard’s request cooperate with Orchard in such action for infringement, then Licensee must first obtain Licensor’s prior written permission, which permission shall not be unreasonably withheld, provided that Licensor shall have reasonable prior input on choice of counsel on any matter where such counsel represents Licensor, and do Licensee and such counsel agree to follow all things and execute all documents as Orchard shall request. Orchard shall reimburse UCLB for all reasonable Third Party costs and expenses (including legal fees and expenses) incurred by UCLB solely in providing such cooperation in accordance with the terms hereof; and
(b) Orchard shall be entitled to request by giving written notice that UCLA shall, in connection with the enforcement and/or defence required procedures of the Joint UCLB/UCLA Technology, cooperate with Orchard in such action and do all things and execute all documents as Orchard shall request. UCLA shall not unreasonably withhold or delay its consent. If UCLA consents to be joined Orchard shall reimburse UCLA Ohio Attorney General regarding retention of outside counsel for all reasonable Third Party costs and expenses (including legal fees and expenses) incurred by UCLA solely in providing such cooperation in accordance with the terms hereof. If UCLA does not consent, all payments due under this Agreement in respect of the ADA SCID Products and the country to which the legal action relates (except patent cost reimbursement), including all royalties, milestones and other payments, shall be reduced by [***] for so long as the subject matter of the legal action continues unabated but only to the extent that such infringement materially and adversely affects the business of Orchard or its Sub-licensees relating to ADA SCID Products; and
(c) subject to Clauses 8.3.3 to 8.3.6, and Clause 8.4, Orchard shall be solely responsible for the conduct of the action or for settlement thereof and, subject to Clause 8.3.4, shall be entitled to all damages received from such actionstate entities.
8.3.3 Before starting or defending or settling any legal action under Clause 8.3.2, Orchard shall consult with UCLB (and where it concerns Joint UCLB/UCLA Technology, UCLA) as to the advisability of the action or defence or settlement, its effect on the good reputation of UCLB and, as applicable, UCLA, and how the action or defence should be conducted. Orchard shall not settle any legal action concerning the Joint UCLB/UCLA Technology without the written consent of UCLA’s Board of Regents, not to be unreasonably withheld or delayed.
8.3.4 Orchard shall indemnify and hold harmless and keep indemnified and held harmless UCLB (and in connection with the enforcement and/or defence of the Joint Technology, UCLA) for all Third Party expenses and claims awarded against it in any legal action under Clause 8.3.2, including any third party costs, account of profits, awards, damages, or other third party legal costs, expenses or liability incurred by UCLB or UCLA as a consequence of their involvement in such proceedings. Orchard shall pay UCLB Royalties, in accordance with Clause 5, on any damages received from such action as if the amount of such damages after deduction of all litigation costs and expenses and payments under any indemnities in relation to the action were Net Sales Value.
8.3.5 UCLB may agree (such agreement not to be unreasonably withheld or delayed), on the reasonable request of Orchard, to be joined in any suit to enforce such rights or take such action in its own name subject to being indemnified and held harmless and kept indemnified and held harmless by Orchard as to any out of pocket costs, account of profits, awards, damages, or other third party legal costs, expenses or liability which may be incurred as a result of so doing. Orchard shall have the right to conduct such proceedings but shall seek and take into reasonable consideration UCLB’s views and opinions in respect of any such suit or action. UCLB shall have the right to be separately represented in any proceedings into which it is joined at its own expense in which case the foregoing indemnity shall not apply.
Appears in 1 contract
Samples: Patent License Agreement
Infringement of the Licensed Patents. 8.3.1 Each Party shall inform the other Parties promptly if it becomes aware (provided that in the case of UCLA, UCLA shall be deemed only to have become aware if the matter in question is in the awareness of the licensing officer responsible for administration of this Agreement) of:
(a) any infringement or potential infringement or unauthorised use of any of the Joint Patents, UCLB Patents, Joint Clinical Data, the LCR-EFS Platform IP, the MPS1 IP, the Perforin IP or the [***] (the “Exclusively Licensed IP”);
(b) any challenge to the validity of any of the Licensed Patents; or
(c) any challenge to the ownership of the Exclusively Licensed IP and Orchard and UCLB shall consult with each other (and, in the case of Joint UCLB/UCLA Technology, with UCLA) to decide the best way to respond to such infringement, unauthorised use or challenge.
8.3.2 Orchard 16.2.1. shall have the sole right (right, but not obligation) after notifying ***, through counsel of its choosing, to take action against any third party infringing or alleged measures it deems appropriate to be infringing or making any unauthorised use of any of the Exclusively Licensed IP in the Field or challenging the validity of any stop infringement of the Licensed Patents or for use pursuant to the ownership of License, by any of the Exclusively Licensed IP at its sole expense. Should Orchard take any such action to enforce or defend such IP then:
(a) UCLB shall on Orchard’s request cooperate with Orchard in such action and do all things and execute all documents as Orchard shall request. Orchard shall reimburse UCLB for all reasonable Third Party costs and expenses (including legal fees and expenses) incurred by UCLB solely or Sublicensee in providing such cooperation in accordance with the terms hereof; and
(b) Orchard shall be entitled Territory or to request by giving written notice that UCLA shall, in connection with grant to the enforcement and/or defence of the Joint UCLB/UCLA Technology, cooperate with Orchard in such action and do all things and execute all documents as Orchard shall request. UCLA shall not unreasonably withhold or delay its consent. If UCLA consents to be joined Orchard shall reimburse UCLA for all reasonable infringing Third Party costs or Sublicensee adequate rights and expenses (including legal fees and expenses) incurred licenses necessary for continuing such activities.
16.2.2. Notwithstanding what is stated in Section 16.2.1, if any Licensed Patent is infringed by UCLA solely a Third Party in providing such cooperation in accordance with the terms hereof. If UCLA does not consentany country, all payments due under this Agreement in respect of the ADA SCID Products and the country to which the legal action relates (except patent cost reimbursement), including all royalties, milestones and other payments, shall be reduced by [***] for so long as the subject matter of the legal action continues unabated but only to the extent that such infringement materially and adversely affects the business of Orchard or its Sub-licensees relating to ADA SCID Products; and
(c) subject to Clauses 8.3.3 to 8.3.6, and Clause 8.4, Orchard shall be solely responsible for the conduct of the action or for settlement thereof and, subject to Clause 8.3.4, shall be entitled to all damages received from such action.
8.3.3 Before starting or defending or settling any legal action under Clause 8.3.2, Orchard shall consult with UCLB (and where it concerns Joint UCLB/UCLA Technology, UCLA) as to the advisability of the action or defence or settlement, its effect on the good reputation of UCLB and, as applicable, UCLA, and how the action or defence should be conducted. Orchard shall not settle any legal action concerning the Joint UCLB/UCLA Technology without the written consent of UCLA’s Board of Regents, not to be unreasonably withheld or delayed.
8.3.4 Orchard shall indemnify and hold harmless and keep indemnified and held harmless UCLB (and in connection with the enforcement and/or defence of the Joint Technology, UCLA) for all Third Party expenses and claims awarded against it in any legal action under Clause 8.3.2, including any third party costs, account of profits, awards, damages, or other third party legal costs, expenses or liability incurred by UCLB or UCLA as a consequence of their involvement in such proceedings. Orchard shall pay UCLB Royalties, in accordance with Clause 5, on any damages received from such action as if the amount of such damages after deduction of all litigation costs and expenses and payments under any indemnities in relation to the action were Net Sales Value.
8.3.5 UCLB may agree (such agreement not to be unreasonably withheld or delayed), on the reasonable request of Orchard, to be joined in any suit to enforce such rights or take such action in its own name subject to being indemnified and held harmless and kept indemnified and held harmless by Orchard as to any out of pocket costs, account of profits, awards, damages, or other third party legal costs, expenses or liability which may be incurred as a result of so doing. Orchard * shall have the right to commence an action for infringement, the right to enforce any judgment thereon and shall have full control over the conduct such of the litigation, including, subject to what is stated below in this Section 16.2.2, settlement of it, provided that *** or a *** may join the proceedings but shall seek voluntarily, at *** cost and take into reasonable consideration UCLB’s views expense, and opinions in respect of any such suit or action. UCLB shall have the right to be separately represented heard and *** shall give due regard to ***. Notwithstanding the foregoing, *** shall not have the right to, and shall not permit any of its Sublicensees and shall procure such Sublicensees not to, enter into any settlement or consent to any claim to the effect that any claim under, or the patent protection otherwise offered under, any part of the Licensed Patents outside the Licensed Field would be materially negatively affected, without the prior written consent of ***, such consent not to be unreasonably withheld.
16.2.3. Upon the reasonable request by ***, *** shall give *** all reasonable information and assistance, including allowing *** access to *** files and documents and to *** personnel, including the inventors, who may have possession of relevant information and, if necessary for *** to prosecute any legal action, joining in any proceedings into which it is joined the legal action as a party at its own expense cost and expense. In the event *** fails within *** following notice of an infringement described in which case Section 16.1 to take, or notifies *** in writing of its intent not to take, commercially appropriate steps to remove any infringement of the foregoing indemnity Licensed Patents that is likely to have a material adverse effect on the sale of the Licensed Products or any other product sold under the Licensed Patents, and *** has not granted the infringing Third Party or Sublicensee rights and licenses to continue its otherwise infringing activities, ***, shall have the right to do so at *** cost and expense; provided, however, that if *** has commenced negotiations with an alleged infringer for discontinuance of such infringement within such *** period, *** shall have an *** to conclude its negotiations before ***, may bring suit for such infringement, provided, however, that ***may contribute to the proceedings or join such proceedings voluntarily, at its own cost and expense, and shall have the right to be heard and *** shall, and shall ***, give due regard to *** views. *** shall not applyhave the right to, and shall not permit any of its other licensees and shall procure such licensees not to, enter into any settlement or consent to any claim to the effect that any claim under, or the patent protection otherwise offered under, any part of the Licensed Patentswithin the Licensed Field would be materially negatively affected, without the prior written consent of ***, such consent not to be unreasonably withheld. Upon reasonable request by *** and at ***, *** shall give *** all reasonable information and assistance in connection with such suit for infringement.
16.2.4. shall provide *** with copies of all substantive documents in relation to the Licensed Patents that *** receives from any patent office, including notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions sufficiently in time prior to the deadline for the action to be taken.
Appears in 1 contract
Samples: Research Collaboration and License Agreement (Palatin Technologies Inc)
