Common use of Licensee’s Rights Clause in Contracts

Licensee’s Rights. (i) As between the Parties, Licensee shall have the right, but not the obligation, at its own cost and expense, to control enforcement or defense against any Third Party Infringement of the Exclusively Licensed IP with respect to which Licensee is granted a license hereunder (including by bringing an Action or entering into settlement discussions) if (1) Licensor provides Licensee with written notice that it is not exercising its right to control enforcement of such Exclusively Licensed IP (as described in Section 5.2(a)) and that Licensee may do so at its option, or (2) Licensor fails to initiate, or file the relevant response to, the Action (if any), or commence settlement discussions, with respect to the applicable Third Party Infringement prior to or upon the earlier of (A) expiration of the one hundred eighty (180) day period following first receipt by either Party of notice from the other Party of such Third Party Infringement or (B) ten (10) Business Days prior to the deadline for filing, or filing the applicable response to, such Action (if any). Licensor shall use commercially reasonably efforts to notify Licensee of a decision not to exercise its right to control enforcement or defense, as applicable, with respect to any Exclusively Licensed IP, but shall have no liability for any good faith, inadvertent failure to so notify Licensee. Notwithstanding the foregoing, Licensee shall not have any right to control such enforcement or defense pursuant to the foregoing if Licensor provides Licensee with written notice that it is not exercising its right to control enforcement or defense, as applicable, of such Licensed IP (as described in Section 5.2(a)) and that it has reasonably determined in good faith that the Licensed IP should not be enforced or defended at such time, and provides Licensee an opportunity to discuss such reasoning in good faith with Licensor. (ii) In the case of any infringement, misappropriation, or other violation, or any Third Party allegations of invalidity or unenforceability, of any Licensed IP non-exclusively licensed to Licensee hereunder, Licensee may request (which request Licensor may deny if Licensor reasonably determines that such Licensed IP should not be enforced or defended, and discusses its reasoning therefor with Licensee) that Licensor enforce or defend (as applicable) such Licensed IP (including by bringing an Action or entering into settlement discussions), and if such request is granted, such enforcement or defense (as applicable) shall be controlled by Licensor at Licensee’s sole cost and expense.

Licensee’s Rights. (i) As between If Licensor has decided not to exercise its rights in Section 6.1 above, then Licensor shall give written notice to Licensee of its determination not to file an application for and/or cease prosecution and/or maintenance of Licensed IP on a country by country basis. Following such notice, or if Licensor fails to provide any notice and fails to act in a timely manner such that there is a material risk that the Partiesdeadline to pursue such Licensed IP will not otherwise be met, Licensee shall have the right, but not the obligationin its sole discretion, to file an application for, and/or continue prosecution and/or maintenance of such Licensed IP at its own cost and expenseexpense (“Licensee Prosecution Controlled IP”), provided that Licensor has failed to control enforcement or defense against any Third Party Infringement of the Exclusively Licensed IP with respect to which act in a timely manner, Licensee is granted a license hereunder (including by bringing an Action or entering into settlement discussions) if (1) provides Licensor provides Licensee with written notice that it is not exercising its right Licensee intends to control enforcement of assume responsibility for such Exclusively Licensed IP (as described in Section 5.2(a)) and that Licensee may do so at its option, Licensor does not respond or (2) Licensor fails to initiate, or file the relevant response to, the Action (if any), or commence settlement discussions, timely act with respect to the applicable Third Party Infringement prior to or upon the earlier of (A) expiration of the one hundred eighty (180) day period following first receipt by either Party of notice from the other Party of such Third Party Infringement or (B) ten (10) Business Days prior to the deadline for filing, or filing the applicable response to, such Action (if any)Licensed IP. Licensor shall use commercially reasonably efforts to notify Licensee maintain all of a decision not to exercise its right to control enforcement or defense, as applicable, with respect to any Exclusively the Licensed IP, but shall have at its sole expense, unless it provides Licensee with such written notice of Licensor’s intent not to do so no liability less than sixty (60) days before any corresponding nominal deadline for incurring an expense or otherwise taking a necessary action to maintain such Licensed IP. If Licensor provides notice that it will not maintain any good faithLicensed IP, inadvertent failure or if Licensor fails to so notify Licensee. Notwithstanding provide any notice and fails to act in a timely manner such that there is a material risk that the foregoingdeadline to maintain such Licensed IP will not otherwise be met, Licensee shall not have any the right to control prosecute and maintain such enforcement or defense pursuant Licensed IP, provided that Licensor has failed to the foregoing if act in a timely manner, Licensee provides Licensor provides Licensee with written notice that it is not exercising its right Licensee intends to control enforcement or defense, as applicable, of assume responsibility for such Licensed IP and Licensor does not respond or timely act with respect to the Licensed IP. If Licensee elects to file an application for and/or continue prosecution and/or maintenance of any such Licensee Prosecution Controlled IP, Licensor shall cooperate with Licensee at Licensee’s expense as may be reasonably necessary in a timely manner for Licensee to perform any filing, prosecution or maintenance of any Licensee Prosecution Controlled IP. Licensor shall promptly assign, or caused to be assigned, to Licensee all of Licensor’s right, title, and interest to any Licensee Prosecution Controlled IP, and Licensor shall deliver to Licensee a suitable written assignment document confirming this assignment of the Licensee Prosecution Controlled IP within thirty (as described in Section 5.2(a)30) and that it has reasonably determined in good faith that days of Licensee electing to file an application, continue prosecution, and/or maintain such portion of the Licensed IP should not be enforced or defended at such timeas provided for in this Section 6.2; provided that Licensor’s obligation to so assign its rights in and to the Licensee Prosecution Controlled IP is conditioned upon Licensee granting Licensor a worldwide (except in the Territory, subject to Section 3.4), non-terminable, royalty-free, fully paid up, non-exclusive, irrevocable, non-transferable (except as expressly permitted by Section 15.6), sublicensable (through multiple tiers) right and license to make, have made, use, sell, have sold, offer for sale, have offered for sale, import and have imported products and services which embody any of the Licensee Prosecution Controlled IP, and provides the right to practice or have practiced the methods claimed in such Licensee an opportunity to discuss such reasoning in good faith with Licensor. (ii) In Prosecution Controlled IP. Upon any of the case of any infringement, misappropriation, or other violation, or any Third Party allegations of invalidity or unenforceability, of any Licensed IP non-exclusively licensed becoming Licensee Prosecution Controlled IP, the Parties’ respective first and second rights to Licensee hereundercontrol any proceeding or enforcement action, Licensee may request (which request Licensor may deny if Licensor reasonably determines that such Licensed IP should not be enforced or defendedas set forth in Sections 7 and 8 of this License Agreement, and discusses its reasoning therefor with Licensee) that Licensor enforce or defend (as applicable) such Licensed IP (including by bringing an Action or entering into settlement discussions), and if such request is granted, such enforcement or defense (as applicable) shall be controlled by Licensor at reversed so that the first right belongs to Licensee’s sole cost and expense.