Common use of Patent Enforcement Clause in Contracts

Patent Enforcement. 8.1 The U.S. Government is not obligated to enforce the Licensed Patent against infringers. COMPANY shall continue to make all payments accruing to USDA pursuant to Article IV hereunder until such time as this Agreement is terminated by either party, even if the Government elects not to enforce the Licensed Patent against infringers. 8.2 COMPANY is granted the first option at its own expense, in its own name, to enforce the Licensed Patent against a specific party who may be infringing the Licensed Patent, subject to the following conditions: (a) The right of enforcement granted under this Paragraph 8.2 shall constitute the rights provided under Title 35, Chapter 29, of the U.S. Code. (b) If COMPANY elects the option to enforce the Licensed Patent against a specific party, the Government shall not be entitled to bring an enforcement action against such party except if it chooses to join with COMPANY. (c) Prior to enforcement against a specific party, COMPANY shall submit a written request to elect the option to enforce the Licensed Patent, and USDA must approve the election before COMPANY may bring an enforcement action against such party. Such enforcement actions may include, but are not limited to, notifying such party, either verbally or in writing, to cease and desist the alleged infringing activity or filing an infringement suit against such party. (i) If USDA does not approve the election, and cannot reasonably establish non-infringement, within ninety (90) days of COMPANY’s request for approval, COMPANY shall not be obligated to pay royalties or fees that begin to accrue at the end of the ninety (90) day period. (ii) If USDA grants approval after the end of the ninety (90) day period, COMPANY shall be obligated to pay royalties and fees that accrue beginning with the day of subsequent approval, but shall not be obligated to pay royalties or fees that previously accrued during the time extending from the end of the ninety (90) day period to the day of subsequent approval. (d) If USDA requests in writing that COMPANY decide whether to elect the option to enforce the Licensed Patent against a specific party, COMPANY shall submit its decision within sixty (60) days of the date of request. In the absence of a written response during the sixty (60) day period, the U.S. Government may enforce the Licensed Patent without COMPANY. 8.3 The following conditions apply to court awards and sublicensing revenues and other considerations as to the Licensed Patent, if COMPANY elects the enforcement option against a specific party. (a) COMPANY is not required to share, with USDA, court awards from such party, but is required to share sublicensing revenues and other considerations from such party pursuant to Article IV hereunder. (b) COMPANY’s reasonable attorney’s fees for attempting to sublicense or enforce the Licensed Patent against a specific party may be deducted from payments due to USDA under a sublicense to such party, provided that such reasonable attorney’s fees are not recouped as part of a court award for infringement of the Licensed Patent by such party, and provided that any such deductions do not exceed fifty percent (50%) of the payments due to USDA during any single reporting period. 8.4 In the absence of prior written consent from USDA, COMPANY shall not be entitled to waive any rights in the Licensed Patent as part of an agreement with a party who may be infringing the Licensed Patent.

Patent Enforcement. 8.1 The U.S. Government is In the event either Party becomes aware of any interference, opposition, or request for reexamination, or similar proceedings, involving a ***CONFIDENTIAL TREATMENT REQUESTED patent application or patent filed in accordance with Section 5.2(a) or 5.2(b), it shall promptly notify the other Party hereto, and the Parties shall agree on the steps which shall be taken to protect the pertinent patent. In the event either Party becomes aware of any possible infringement of a patent filed in accordance with Section 5.2(a) or 5.2(b) or misappropriation of an invention within the Collaboration, it shall promptly notify the other Party hereto, providing a written description of the potentially infringing or misappropriation activities. SGX shall have the right, but not obligated the obligation to institute, prosecute and control any action or proceeding with respect to infringement of patents within SGX Background Technology. Roche shall have the right, but not the obligation, to institute, prosecute and control any action or proceeding with respect to infringement of patents within Roche Background Technology or compounds within Early Lead Series'. If a Party given the right to enforce the Licensed Patent against infringers. COMPANY shall continue to make all payments accruing to USDA a patent pursuant to Article IV hereunder until such time as this Agreement is terminated by either party, even if the Government elects not to enforce the Licensed Patent against infringers. 8.2 COMPANY is granted the first option at its own expense, in its own name, to enforce the Licensed Patent against a specific party who may be infringing the Licensed Patent, subject to the following conditions: (a) The right of enforcement granted under this Paragraph 8.2 shall constitute the rights provided under Title 35, Chapter 29, of the U.S. Code. (b) If COMPANY elects the option to enforce the Licensed Patent against a specific party, the Government shall not be entitled Section fails to bring an enforcement action against such party except if it chooses to join with COMPANY. or proceeding, or take other actions (ce.g., commence settlement discussions) Prior to enforcement against a specific party, COMPANY shall submit suspected infringer within a written request to elect the option to enforce the Licensed Patent, and USDA must approve the election before COMPANY may bring an enforcement action against such party. Such enforcement actions may include, but are not limited to, notifying such party, either verbally or in writing, to cease and desist the alleged infringing activity or filing an infringement suit against such party. (i) If USDA does not approve the election, and cannot reasonably establish non-infringement, within period of ninety (90) days after having notice of COMPANY’s request for approvalsuch infringement, COMPANY the other Party shall have the right to bring and control an action against such infringer by counsel of its own choice, and the non-enforcing Party shall have the right to be represented in any such action by counsel of its own choice at its own expense. The Party controlling an action involving any infringement of a patent under this Section shall consider in good faith the interests of the other Party in so doing, and shall not be obligated settle or consent to pay royalties an adverse judgment in any such action which would have a material adverse effect on the rights or fees that begin to accrue at the end interests of the ninety (90) day period. (ii) other Party without the prior express written consent of such other Party. If USDA grants approval after one Party brings any such action or proceeding, the end of other Party agrees to be joined as a Party plaintiff if necessary to prosecute the ninety (90) day period, COMPANY shall be obligated action and to pay royalties give the first Party reasonable assistance and fees that accrue beginning with authority to file and prosecute the day of subsequent approval, but shall not be obligated to pay royalties or fees that previously accrued during the time extending from the end of the ninety (90) day period to the day of subsequent approval. (d) If USDA requests in writing that COMPANY decide whether to elect the option to enforce the Licensed Patent against a specific party, COMPANY shall submit its decision within sixty (60) days of the date of requestsuit. In the absence each case relating to infringement of a written response during patent under this Section, each Party shall bear the sixty (60) day period, the U.S. Government may enforce the Licensed Patent without COMPANYcosts of its enforcement of such rights discussed in this section and retain for its own account any amounts received from Third Parties. 8.3 The following conditions apply to court awards and sublicensing revenues and other considerations as to the Licensed Patent, if COMPANY elects the enforcement option against a specific party. (a) COMPANY is not required to share, with USDA, court awards from such party, but is required to share sublicensing revenues and other considerations from such party pursuant to Article IV hereunder. (b) COMPANY’s reasonable attorney’s fees for attempting to sublicense or enforce the Licensed Patent against a specific party may be deducted from payments due to USDA under a sublicense to such party, provided that such reasonable attorney’s fees are not recouped as part of a court award for infringement of the Licensed Patent by such party, and provided that any such deductions do not exceed fifty percent (50%) of the payments due to USDA during any single reporting period. 8.4 In the absence of prior written consent from USDA, COMPANY shall not be entitled to waive any rights in the Licensed Patent as part of an agreement with a party who may be infringing the Licensed Patent.

Patent Enforcement. 8.1 The U.S. Government is not obligated to enforce the Licensed Patent Patents against infringers. COMPANY HEPALIFE shall continue to make all payments accruing to USDA pursuant to Article IV hereunder until such time as this Agreement is terminated by either party, even if the Government elects not to enforce the Licensed Patent Patents against infringers. 8.2 COMPANY HEPALIFE is granted the first option at its own expense, in its own name, to enforce the Licensed Patent Patents against a specific party who may be infringing the Licensed PatentPatents, subject to the following conditions: (a) The right of enforcement granted under this Paragraph 8.2 shall constitute the rights provided under Title 35, Chapter 29, of the U.S. Code. (b) If COMPANY HEPALIFE elects the option to enforce the Licensed Patent Patents against a specific party, the Government shall not be entitled to bring an enforcement action against such party except if it chooses to join with COMPANYHEPALIFE. (c) Prior to enforcement against a specific party, COMPANY HEPALIFE shall submit a written request to elect the option to enforce the Licensed PatentPatents, and USDA must approve the election before COMPANY HEPALIFE may bring an enforcement action against such party. Such enforcement actions may include, but are not limited to, notifying such party, either verbally or in writing, to cease and desist the alleged infringing activity or filing an infringement suit against such party. (i) If USDA does not approve the election, and cannot reasonably establish non-infringement, within ninety (90) days of COMPANYHEPALIFE’s request for approval, COMPANY HEPALIFE shall not be obligated to pay royalties or fees that begin to accrue at the end of the ninety (90) day period. (ii) If USDA grants approval after the end of the ninety (90) day period, COMPANY HEPALIFE shall be obligated to pay royalties and fees that accrue beginning with the day of subsequent approval, but shall not be obligated to pay royalties or fees that previously accrued during the time extending from the end of the ninety (90) day period to the day of subsequent approval. (d) If USDA requests in writing that COMPANY HEPALIFE decide whether to elect the option to enforce the Licensed Patent Patents against a specific party, COMPANY HEPALIFE shall submit its decision within sixty (60) days of the date of request. In the absence of a written response during the sixty (60) day period, the U.S. Government may enforce the Licensed Patent Patents without COMPANYHEPALIFE. 8.3 The following conditions apply to court awards and sublicensing revenues and other considerations as to the Licensed PatentPatents, if COMPANY HEPALIFE elects the enforcement option against a specific party. (a) COMPANY HEPALIFE is not required to share, with USDA, court awards from such party, but is required to share sublicensing revenues and other considerations from such party pursuant to Article IV hereunder. (b) COMPANYHEPALIFE’s reasonable attorney’s fees for attempting to sublicense or enforce the Licensed Patent Patents against a specific party may be deducted from payments due to USDA under a sublicense to such party, provided that such reasonable attorney’s fees are not recouped as part of a court award for infringement of the Licensed Patent Patents by such party, and provided that any such deductions do not exceed fifty percent (50%) of the payments due to USDA during any single reporting period. 8.4 In the absence of prior written consent from USDA, COMPANY HEPALIFE shall not be entitled to waive any rights in the Licensed Patent Patents as part of an agreement with a party who may be infringing the Licensed PatentPatents.