PATENT INFRINGEMENTS. 12.1 Wyeth shall be responsible for the filing, prosecution and maintenance of the Wyeth Patents. Wyeth shall not allow any issued Patent included within the Wyeth Patents and listed or Exhibit A attached hereto to lapse (by reason of failure to pay maintenance fees or annuities or to take any other action necessary to maintain such patent in full force and effect) or admit the invalidity thereof prior to the mutual expiration date thereof without DOV"s prior consent. 12.2 In case any actions, claims, demands, suits or other legal proceedings are brought or threatened to be brought against DOV by a third party for infringement of such third party's patent(s) relating to Product per se, by virtue of DOV's manufacture, use, sale or offer for sale of the Product or Marketed Product hereunder, DOV shall notify Wyeth forthwith of the threat or existence of such actions with sufficient evidence thereof to enable the parties to prepare an appropriate defense. strategy. The parties shall consult together as to the action to be taken and as to how the defense will be handled. DOV shall be responsible for all defense costs. DOV undertakes not to make any admission of liability to a claimant or plaintiff or his or her legal representative or insurer and not to sign any agreement in respect of such proceedings without Wyeth's previous written consent not to be unreasonably withheld. When DOV, because of the settlement with Wyeth's consent of the claimed infringement, or a final unappealable or non-appealed judgment of a court of competent jurisdiction, is required to make payments to one or more third parties to obtain a license without which the marketing of the Marketed Product could not be made in a given country, DOV may deduct such payments from the royalty payments due to Wyeth hereunder, provided however that in no event shall the royalty rate be reduced by more than fifty percent (50%) of that which would otherwise be due Wyeth. 12.3 DOV shall promptly inform Wyeth of any suspected infringement of any of Wyeth Patents by a third party and provide Wyeth with any available evidence of such suspected infringement. Wyeth shall have the right but not the obligation to institute any claim, suit or proceeding against an infringer or a presumed infringer to protect and defend Wyeth Patents. Wyeth shall control the prosecution of any such suit or claim, including without limitation the choice of counsel and shall settle or dispose of any such suit or claim. DOV shall provide Wyeth with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In the event Wyeth so elects, Wyeth shall bear the entire costs of such prosecution and shall be entitled to retain, after deducting the costs and expenses borne by Wyeth in prosecuting the claim of infringement, ninety percent (90%) of the amount of any recovery, court award or settlement. DOV shall not institute any negotiations or legal proceedings with respect to any such infringement without prior written consent of Wyeth, but shall have the right to institute infringement proceedings against a third party in the event that Wyeth elects not to do so. In such event, DOV shall bear the entire costs and expenses of such proceedings. Wyeth shall provide DOV with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In such event, DOV shall be entitled to retain ninety percent (90%) of the proceeds of any such recovery, after first deducting the costs and expenses borne by DOV in initiating and maintaining such infringement action and shall pay the remainder to Wyeth.
Appears in 2 contracts
Samples: Assignment and License Agreement (Neurocrine Biosciences Inc), License Agreement (Neurocrine Biosciences Inc)
PATENT INFRINGEMENTS. 12.1 Wyeth 10.1 In the Field of Use, MOTOROLA shall be responsible for have the filingprimary right, prosecution but not the obligation, to prosecute and maintenance control at its own expense all lawful actions in response to infringements or misappropriations of the Wyeth PatentsLicensed Patents or the Know-how (each, an "Unauthorized Use"). Wyeth Neither party shall not allow any issued Patent included within the Wyeth Patents and listed or Exhibit A attached hereto have a duty to lapse (by reason of failure to pay maintenance fees or annuities or to take any other action necessary to maintain such patent in full force and effect) or admit the invalidity thereof prior report to the mutual expiration date thereof without DOV"s prior consent.
12.2 In case any actions, claims, demands, suits or other legal proceedings are brought or threatened to be brought against DOV by party instances where a third party is or may be engaging in Unauthorized Use. Within a reasonable time (not to [The confidential material contained herein has been omitted and has been separately filed with the Commission.] after UDC gives written notice to MOTOROLA describing circumstances involving Unauthorized Use and requesting MOTOROLA to take action against such infringement, MOTOROLA shall provide UDC with written notice indicating whether or not MOTOROLA intends to take responsibility for ending the Unauthorized Use. If MOTOROLA (i) gives written notice to UDC that MOTOROLA does not intend to take responsibility for ending the Unauthorized Use, or (ii) gives written notice to UDC that MOTOROLA intends to take responsibility for ending the Unauthorized Use, but MOTOROLA, within [The confidential material contained herein has been omitted and has been separately filed with the Commission.] days after providing such notice, has not persuaded the third party engaged in or believed to be engaged in the Unauthorized Use (the "Unauthorized User") to cease such Unauthorized Use and has not brought and is not then diligently prosecuting an infringement action against the Unauthorized User (or at any time thereafter MOTOROLA ceases to diligently prosecute such an infringement action against the Unauthorized User), then UDC shall have the right, but shall not be obligated, to take responsibility for ending the Unauthorized Use at UDC's own expense. In furtherance of such third party's patent(s) relating right, MOTOROLA hereby agrees that UDC, at its expense, may name MOTOROLA as a party plaintiff in any lawsuit or other action against the Unauthorized User; provided, however, that the counsel retained by UDC to Product per se, by virtue of DOV's manufacture, use, sale prosecute or offer for sale of settle the Product or Marketed Product hereunder, DOV shall notify Wyeth forthwith of the threat or existence of such actions with sufficient evidence thereof to enable the parties to prepare an appropriate defense. strategy. The parties shall consult together as to the action to be taken and as to how the defense will be handled. DOV lawsuit shall be responsible for all defense costs. DOV undertakes not subject to make any admission of liability to a claimant or plaintiff or his or her legal representative or insurer and not to sign any agreement in respect of MOTOROLA's prior written approval, such proceedings without Wyeth's previous written consent approval not to be unreasonably withheld. When DOV, because The parties shall share any damages and other recoveries derived from the Unauthorized Use such that the recoveries shall first reimburse all legal and other expenses incurred by each of the settlement with Wyeth's parties in respect thereof (pro rata in proportion to the expenses incurred by each if the recoveries are insufficient to pay all of the expenses); any portions of such damages or other recoveries intended primarily to compensate UDC for Total Revenues that UDC would have received but for the Unauthorized Use or otherwise intended as actual or primary damages of UDC shall be treated as Total Revenues for purposes of this Agreement and UDC shall retain such Total Revenues after paying MOTOROLA royalties on said portions as specified in Section 4.0 above; and any recoveries in excess of the foregoing (including without limitation "treble damage" awards in excess of the foregoing) shall be apportioned 50% to UDC and 50% to MOTOROLA. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of MOTOROLA, which consent shall not be unreasonably withheld or delayed. With respect to any action against an Unauthorized User initiated by UDC, UDC shall indemnify MOTOROLA against any order for costs that may be made against MOTOROLA in such proceedings.
10.2 In the claimed infringement, or a final unappealable or non-appealed judgment event that either party learns of the institution of a court of competent jurisdiction, is required to make payments to one declaratory judgment action or more third parties to obtain a license without which the marketing of the Marketed Product could not be made in a given country, DOV may deduct such payments from the royalty payments due to Wyeth hereunder, provided however that in no event shall the royalty rate be reduced by more than fifty percent (50%) of that which would otherwise be due Wyeth.
12.3 DOV shall promptly inform Wyeth of any suspected infringement response alleging invalidity of any of Wyeth Patents by a third the Licensed Patents, that party and shall provide Wyeth the other party with prompt written notice thereof. MOTOROLA shall have the sole right (but no obligation), at its expense, to defend or settle such action; provided, however, that UDC may participate in the defense or settlement thereof with counsel of its own choosing at its own expense. In the event MOTOROLA notifies UDC that MOTOROLA does not intend to defend such action, or should MOTOROLA at any available evidence of time cease to diligently defend such suspected infringement. Wyeth action, UDC shall have the right (but no obligation) to take over the sole defense of the action at its own expense; provided, however, that the counsel retained by UDC to defend the action shall be subject to MOTOROLA's prior written approval, such approval not the obligation to be unreasonably withheld.
10.3 In any suit as either party may institute any claim, suit or proceeding against an infringer Unauthorized User, or a presumed infringer to protect enforce or defend the Licensed Patents pursuant to this Agreement, the other party hereto shall, at the request and defend Wyeth Patents. Wyeth shall control the prosecution of any such suit or claim, including without limitation the choice of counsel and shall settle or dispose of any such suit or claim. DOV shall provide Wyeth with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In the event Wyeth so elects, Wyeth shall bear the entire costs of such prosecution and shall be entitled to retain, after deducting the costs and expenses borne by Wyeth in prosecuting the claim of infringement, ninety percent (90%) expense of the amount of any recoveryparty initiating such suit, court award or settlement. DOV shall not institute any negotiations or legal proceedings with respect cooperate to any such infringement without prior written consent of Wyeth, but shall have the right extent reasonably needed to institute infringement proceedings against establish standing as a third party in the event suit and to establish validity of the Licensed Patents. Neither party shall have a duty to volunteer to testify against the opposing parties in such suit, violate any nondisclosure or confidentiality agreement that Wyeth elects may be in effect, or reveal any nonpublic information that a party to this agreement may have obtained in the course of commercial relationships, if any, with such opposing parties, provided that this sentence shall not be deemed to do sowaive or impair a party's right to compel testimony or discovery under applicable law. In such event, DOV The other party to this Agreement shall bear the entire costs and expenses of such proceedings. Wyeth shall provide DOV with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In such event, DOV shall also be entitled to retain ninety percent (90%) its own legal counsel for purposes of the proceeds suit, the cost of any such recovery, after first deducting the costs and expenses borne by DOV which shall be subject to reimbursement as provided in initiating and maintaining such infringement action and shall pay the remainder to WyethSection 10.1.
Appears in 1 contract
PATENT INFRINGEMENTS. 12.1 Wyeth 17.4.1 The Contractor shall be responsible for notify the filingContracting Authority of any patent infringement claims arising in the course of work performed under this Contract that affect this Contract. The Contracting Authority shall undertake that, prosecution and maintenance of where possible, the Wyeth Patents. Wyeth shall not allow any issued Patent included within contributing Members will provide Information available to them that may assist in defending the Wyeth Patents and listed or Exhibit A attached hereto to lapse (by reason of failure to pay maintenance fees or annuities or to take any other action necessary to maintain such patent in full force and effect) or admit the invalidity thereof prior to the mutual expiration date thereof without DOV"s prior consentclaim.
12.2 In case any actions, claims, demands, suits or other legal proceedings are brought or threatened to be brought against DOV by a third party for infringement of such third party's patent(s) relating to Product per se, by virtue of DOV's manufacture, use, sale or offer for sale of 17.4.2 The Contractor shall indemnify the Product or Marketed Product hereunder, DOV shall notify Wyeth forthwith of Contracting Authority and/or the threat or existence of such actions with sufficient evidence thereof to enable the parties to prepare an appropriate defense. strategy. The parties shall consult together as to the action to be taken and as to how the defense will be handled. DOV shall be responsible for all defense costs. DOV undertakes not to make any admission of liability to a claimant or plaintiff or his or her legal representative or insurer and not to sign any agreement contributing Members in respect of such proceedings without Wyeth's previous written consent not liabilities arising from infringement of Third Party patents resulting from the use of Foreground IP and Background IP necessary to be unreasonably withheld. When DOV, because use Foreground IP in accordance with the terms and objectives of this Contract which the Contractor knew or should have known was in breach of the settlement with Wyeth's consent rights of a Third Party. This indemnity shall not apply and the claimed infringement, Contractor shall not be liable if:
a) the Contracting Authority or a final unappealable contributing Member has made or non-appealed judgment of a court of competent jurisdiction, is required to make payments to one or more third parties to obtain a license without which the marketing of the Marketed Product could not be made in a given country, DOV may deduct such payments from the royalty payments due to Wyeth hereunder, provided however that in no event shall the royalty rate be reduced by more than fifty percent (50%) of that which would otherwise be due Wyeth.
12.3 DOV shall promptly inform Wyeth makes an admission of any suspected infringement of any of Wyeth Patents by a third party and provide Wyeth with any available evidence of such suspected infringement. Wyeth shall have the right but not the obligation sort relevant to institute any claim, suit or proceeding against an infringer or a presumed infringer to protect and defend Wyeth Patents. Wyeth shall control the prosecution of any such suit or claim, including without limitation the choice of counsel and shall settle or dispose of any such suit or claim. DOV shall provide Wyeth with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In the event Wyeth so elects, Wyeth shall bear the entire costs of such prosecution and shall be entitled to retain, after deducting the costs and expenses borne by Wyeth in prosecuting the claim allegation of infringement, ninety percent (90%) that undermines the ability of the amount Contractor to defend a claim, in respect of the Contracting Authority or the contributing Member concerned;
b) the Contracting Authority or a contributing Member has entered or enters into any discussions other than referring the matter to the Contractor, that undermine the ability of the Contractor to defend a claim, on an allegation of infringement with any Third Party without the prior written agreement of the Contractor, in respect of the Contracting Authority or the contributing Member concerned;
c) the Contracting Authority or a contributing Member has entered or enters into negotiations in respect of any recoveryrelevant claim for compensation in respect of use authorised by statute in their jurisdiction, court award in respect of the Contracting Authority or settlement. DOV the contributing Member concerned;
d) legal proceedings have been commenced against the Contracting Authority or a contributing Member or the Contractor in respect of use authorised by statute in its jurisdiction, but as far as the Contracting Authority or the contributing Member is concerned only to the extent that the infringing use has been properly authorised under any applicable statutory provision;
e) a particular use by the Contracting Authority or a contributing Member of anything supplied under the Contract was not reasonably foreseeable by the Contractor at the time of the Contract;
f) that Foreground IP and/or Background IP are used for Government Purposes, where the relevant terms will be covered under the agreement reached for that use.
17.4.3 The Contracting Authority shall:
a) indemnify the Contractor against all liabilities for infringement or alleged infringement of Third Party IP rights arising directly from the use, under this Contract, of any material, equipment, document or Information provided by it or resulting directly from a specific instruction from the Contracting Authority to use that Third Party IP, or both;
b) undertake that it and each contributing Member employs such powers as are available to it or the contributing Members, or both, to minimise all liabilities of the Contractor in respect of Third Party IP rights.
17.4.4 The Contractor shall not institute any negotiations be indemnified where Article 17.4.2, a) to c) applies, mutatis mutandis, or legal proceedings with respect to any such infringement without prior written consent where specific limitations of Wyeth, but shall use have the right to institute infringement proceedings against a third party been identified in the event that Wyeth elects not to do so. In such event, DOV shall bear the entire costs and expenses of such proceedings. Wyeth shall provide DOV with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In such event, DOV shall be entitled to retain ninety percent (90%) of the proceeds of any such recovery, after first deducting the costs and expenses borne by DOV in initiating and maintaining such infringement action and shall pay the remainder to WyethContract.
Appears in 1 contract
Samples: Research & Technology Contract
PATENT INFRINGEMENTS. 12.1 Wyeth shall be responsible for the filing, prosecution and maintenance of the Wyeth Patents. Wyeth shall not allow any issued Patent included within the Wyeth Patents and listed or Exhibit A attached hereto to lapse (by reason of failure to pay maintenance fees or annuities or to take any other action necessary to maintain such patent in full force and effect) or admit the invalidity thereof prior to the mutual expiration date thereof without DOV"s prior consent.
12.2 In case any actions, claims, demands, suits or other legal proceedings are brought or threatened to be brought against DOV by a third party for infringement of such third party's patent(s) relating to Product per sePER SE, by virtue of DOV's manufacture, use, sale or offer for sale of the Product or Marketed Product hereunder, DOV shall notify Wyeth ACY forthwith of the threat or existence of such actions with sufficient evidence thereof thereof, to enable the parties to prepare an appropriate defense. defense strategy. The parties shall consult together as to the action to be taken and as to how the defense will be handled. DOV shall be responsible for all defense costs. DOV undertakes not to make any admission of liability to a claimant or plaintiff or his or her legal representative or insurer and not to sign any agreement in respect of such proceedings without WyethACY's previous written consent not to be unreasonably withheld. When DOV, because of the settlement with WyethACY's consent of the claimed infringement, or a final unappealable or non-appealed judgment of a court of competent jurisdiction, is required isrequired to make payments to one or more third parties to obtain a license without which the marketing of the Marketed Product could not be made in a given country, DOV may deduct such payments from the royalty payments due to Wyeth ACY hereunder, provided however that in no event shall the royalty rate be reduced by more than fifty percent (50%) [***] of that which would otherwise be due WyethACY.
12.3 12.2 DOV shall promptly inform Wyeth ACY of any suspected infringement of any of Wyeth ACY Patents by a third party and provide Wyeth ACY with any available evidence of such suspected infringement. Wyeth ACY shall have the right but not the obligation to institute any claim, suit or proceeding against an infringer or a presumed infringer to protect and defend Wyeth ACY Patents. Wyeth ACY shall control the prosecution of any such suit or claim, including without limitation the choice of counsel and shall settle or dispose of any such suit or claim. DOV shall provide Wyeth ACY with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In the event Wyeth ACY so elects, Wyeth ACY shall bear the entire costs of such prosecution and shall be entitled to retain, retain after deducting the costs and expenses ---------- [***] Omitted pursuant to a request for confidential treatment. The omitted material has been separately filed with the Securities and Exchange Commission. borne by Wyeth ACY in prosecuting the claim of infringement, 90% (ninety percent (90%percent) of the amount of any recovery, court award or settlement. DOV shall not institute any negotiations or legal proceedings with respect to any such infringement without prior written consent of WyethACY, but shall have the right to institute infringement proceedings against a third party in the event that Wyeth elects ACY would elect not to do so. In such event, DOV shall bear the entire costs and expenses of such proceedings. Wyeth ACY shall provide DOV with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In such event, DOV shall be entitled to retain 90% ( ninety percent (90%percent) of the proceeds of any such recovery, after first deducting the costs and expenses borne by DOV in initiating and maintaining such infringement action and shall pay the remainder to Wyethaction.
Appears in 1 contract
PATENT INFRINGEMENTS. 12.1 Wyeth shall be responsible for the filing, prosecution and maintenance of the Wyeth Patents. Wyeth shall not allow any issued Patent included within the Wyeth Patents and listed or Exhibit A attached hereto to lapse (by reason of failure to pay maintenance fees or annuities or to take any other action necessary to maintain such patent in full force and effecta) or admit the invalidity thereof prior to the mutual expiration date thereof without DOV"s prior consent.
12.2 In case any actions, claims, demands, suits or other legal proceedings are brought or threatened to be brought against DOV by a third party for infringement of such third party's patent(s) relating to Product per se, by virtue of DOV's manufacture, use, sale or offer for sale of the Product or Marketed Product hereunder, DOV shall notify Wyeth forthwith of the threat or existence of such actions with sufficient evidence thereof to enable the parties to prepare an appropriate defense. strategy. The parties shall consult together as inform each other promptly, in writing, of any alleged infringement of a Development Program Invention and any available evidence thereof; provided that no such obligation shall arise in circumstances in which a party learns of an alleged infringement while under a confidentiality obligation to the alleged infringer that was entered into in good faith prior to such party learning of the alleged infringement. Neither party will settle or compromise any claim or action to be taken and as to how in a manner that imposes any restrictions or obligations on the defense will be handled. DOV other party without such other party’s written consent, which shall be responsible for all defense costs. DOV undertakes not to make any admission of liability to a claimant or plaintiff or his or her legal representative or insurer and not to sign any agreement in respect of such proceedings without Wyeth's previous written consent not to be unreasonably withheld. When DOV, because of the settlement with Wyeth's consent of the claimed infringement, or a final unappealable or non-appealed judgment of a court of competent jurisdiction, is required to make payments to one or more third parties to obtain a license without which the marketing of the Marketed Product could not be made in a given country, DOV may deduct such payments from the royalty payments due to Wyeth hereunder, provided however that in no event shall the royalty rate be reduced by more than fifty percent (50%) of that which would otherwise be due Wyeth.
12.3 DOV shall promptly inform Wyeth of any suspected infringement of any of Wyeth Patents by a third party and provide Wyeth with any available evidence of such suspected infringement. Wyeth (b) Targacept shall have the right first right, but shall not the obligation be obligated, to institute prosecute at its own expense any claimsuch infringement of a Development Program Invention and, suit or proceeding against an infringer or in furtherance of such right, SMRI hereby agrees that Targacept may join SMRI as a presumed infringer party plaintiff in any such suit, without expense to protect and defend Wyeth PatentsSMRI. Wyeth shall control the prosecution The total cost of any such suit infringement action commenced solely by Targacept shall be borne by Targacept, and Targacept shall keep any recovery or claimdamages for past infringement derived therefrom. Subject to Section 6.5(a), including without limitation the choice of counsel and shall settle or dispose of any such suit or claim. DOV shall provide Wyeth with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In the event Wyeth so elects, Wyeth shall bear the entire costs of such prosecution and Targacept shall be entitled to retainsettle any such litigation by agreement, consent, judgment, voluntary dismissal or otherwise.
(c) If within six (6) months after deducting the costs and expenses borne by Wyeth in prosecuting the claim of infringement, ninety percent (90%) of the amount having been notified of any recoveryalleged infringement of a Development Program Invention, court award or settlement. DOV Targacept shall have been unsuccessful in persuading the alleged infringer to desist and shall not institute have brought and shall not be diligently prosecuting an infringement action, or if Targacept shall notify SMRI at any negotiations or legal proceedings with respect time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, SMRI shall have the right, but shall not be obligated, to prosecute at its own expense the infringement of such Development Program Invention. The total cost of any such infringement without prior written consent action commenced solely by SMRI will be borne by SMRI, and SMRI will keep any recovery or damages for past infringement derived therefrom. Subject to Section 6.5(a), SMRI shall be entitled to settle any such litigation by agreement, consent, judgment, voluntary dismissal or otherwise.
(d) In the event that a declaratory judgment action alleging invalidity or noninfringement of Wyetha Development Program Invention shall be brought against SMRI, but Targacept at its option, shall have the right right, within thirty (30) days after commencement of such action, to institute infringement proceedings against a third party in intervene and take over the event that Wyeth elects not to do sosole defense of the action at its own expense. In such event, DOV Targacept shall bear keep any recovery or damages derived therefrom or from any counterclaims asserted therein.
(e) In any infringement suit instituted, or declaratory action defended, by either party to enforce or protect a Development Program Invention, the entire costs other party hereto shall, at the request and expenses of such proceedings. Wyeth shall provide DOV with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In such event, DOV shall be entitled to retain ninety percent (90%) expense of the proceeds of any party initiating or defending such recoverysuit, after first deducting cooperate in all respects and, to the costs extent practicable, allow its employees testify when requested and expenses borne by DOV in initiating make available relevant records, papers, information, samples, specimens and maintaining such infringement action and shall pay the remainder to Wyethlike.
Appears in 1 contract
PATENT INFRINGEMENTS. 12.1 Wyeth shall be responsible for the filing, prosecution and maintenance of the Wyeth Patents. Wyeth shall not allow any issued Patent included within the Wyeth Patents and listed or Exhibit A attached hereto to lapse (by reason of failure to pay maintenance fees or annuities or to take any other action necessary to maintain such patent in full force and effect) or admit the invalidity thereof prior to the mutual expiration date thereof without DOV"s DOV's prior consent.
12.2 In case any actions, claims, demands, suits or other legal proceedings are brought or threatened to be brought against DOV by a third party for infringement of such third party's patent(s) relating to Product per se, by virtue of DOV's manufacture, use, sale or offer for sale of the Product or Marketed Product hereunder, DOV shall notify Wyeth forthwith of the threat or existence of such actions with sufficient evidence thereof to enable the parties to prepare an appropriate defense. defense strategy. The parties shall consult together as to the action to be taken and as to how the defense will be handled. DOV shall be responsible for all defense costs. DOV undertakes not to make any admission of liability to a claimant or plaintiff or his or her legal representative or insurer and not to sign any agreement in respect of such proceedings without Wyeth's previous written consent not to be unreasonably withheld. When DOV, because of the settlement with Wyeth's consent of the claimed infringement, or a final unappealable or non-appealed judgment of a court of competent jurisdiction, is required to make payments to one or more third parties to obtain a license without which the marketing of the Marketed Product could not be made in a given country, DOV may deduct such payments from the royalty payments due to Wyeth hereunder, provided however that in no event shall the royalty rate be reduced by more than fifty percent (50%) of that which would otherwise be due Wyeth.
. 16 <PAGE> 12.3 DOV shall promptly inform Wyeth of any suspected infringement of any of Wyeth Patents by a third party and provide Wyeth with any available evidence of such suspected infringement. Wyeth shall have the right but not the obligation to institute any claim, suit or proceeding against an infringer or a presumed infringer to protect and defend Wyeth Patents. Wyeth shall control the prosecution of any such suit or claim, including without limitation the choice of counsel and shall settle or dispose of any such suit or claim. DOV shall provide Wyeth with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In the event Wyeth so elects, Wyeth shall bear the entire costs of such prosecution and shall be entitled to retain, retain after deducting the costs and expenses borne by Wyeth in prosecuting the claim of infringement, ninety percent (90%) of the amount of any recovery, court award or settlementsettlement and shall pay the remainder to DOV. DOV shall not institute any negotiations or legal proceedings with respect to any such infringement without prior written consent of Wyeth, but shall have the right to institute infringement proceedings against a third party in the event that Wyeth elects not to do so. In such event, DOV shall bear the entire costs and expenses of such proceedings. Wyeth shall provide DOV with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In such event, DOV shall be entitled to retain ninety percent (90%) of the proceeds of any such recovery, after first deducting the costs and expenses borne by DOV in initiating and maintaining such infringement action and shall pay the remainder to Wyeth.
Appears in 1 contract
Samples: License Agreement
PATENT INFRINGEMENTS. 12.1 Wyeth 17.4.1 The Contractor shall be responsible for notify the filingContracting Authority of any patent infringement claims arising in the course of work performed under this Contract that affect this Contract. The Contracting Authority shall undertake that, prosecution and maintenance of where possible, the Wyeth Patents. Wyeth shall not allow any issued Patent included within contributing Members will provide Information available to them that may assist in defending the Wyeth Patents and listed or Exhibit A attached hereto to lapse (by reason of failure to pay maintenance fees or annuities or to take any other action necessary to maintain such patent in full force and effect) or admit the invalidity thereof prior to the mutual expiration date thereof without DOV"s prior consentclaim.
12.2 In case any actions, claims, demands, suits or other legal proceedings are brought or threatened to be brought against DOV by a third party for infringement of such third party's patent(s) relating to Product per se, by virtue of DOV's manufacture, use, sale or offer for sale of 17.4.2 The Contractor shall indemnify the Product or Marketed Product hereunder, DOV shall notify Wyeth forthwith of the threat or existence of such actions with sufficient evidence thereof to enable the parties to prepare an appropriate defense. strategy. The parties shall consult together as to the action to be taken and as to how the defense will be handled. DOV shall be responsible for all defense costs. DOV undertakes not to make any admission of liability to a claimant or plaintiff or his or her legal representative or insurer and not to sign any agreement Contracting Authority and/or contributing Members in respect of such proceedings without Wyeth's previous written consent not liabilities arising from infringement of Third Party patents resulting from the use of Foreground IP and Background IP necessary to be unreasonably withheld. When DOV, because use Foreground IP in accordance with the terms and objectives of this Contract which the Contractor knew or should have known was in breach of the settlement with Wyeth's consent rights of a Third Party. This indemnity shall not apply and the claimed infringement, Contractor shall not be liable if:
a) the Contracting Authority or a final unappealable contributing Member has made or non-appealed judgment of a court of competent jurisdiction, is required to make payments to one or more third parties to obtain a license without which the marketing of the Marketed Product could not be made in a given country, DOV may deduct such payments from the royalty payments due to Wyeth hereunder, provided however that in no event shall the royalty rate be reduced by more than fifty percent (50%) of that which would otherwise be due Wyeth.
12.3 DOV shall promptly inform Wyeth makes an admission of any suspected infringement of any of Wyeth Patents by a third party and provide Wyeth with any available evidence of such suspected infringement. Wyeth shall have the right but not the obligation sort relevant to institute any claim, suit or proceeding against an infringer or a presumed infringer to protect and defend Wyeth Patents. Wyeth shall control the prosecution of any such suit or claim, including without limitation the choice of counsel and shall settle or dispose of any such suit or claim. DOV shall provide Wyeth with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In the event Wyeth so elects, Wyeth shall bear the entire costs of such prosecution and shall be entitled to retain, after deducting the costs and expenses borne by Wyeth in prosecuting the claim allegation of infringement, ninety percent (90%) that undermines the ability of the amount Contractor to defend a claim, in respect of the Contracting Authority or the contributing Member concerned;
b) the Contracting Authority or a contributing Member has entered or enters into any discussions other than referring the matter to the Contractor, that undermine the ability of the Contractor to defend a claim, on an allegation of infringement with any Third Party without the prior written agreement of the Contractor, in respect of the Contracting Authority or the contributing Member concerned;
c) the Contracting Authority or a contributing Member has entered or enters into negotiations in respect of any recoveryrelevant claim for compensation in respect of use authorised by statute in their jurisdiction, court award in respect of the Contracting Authority or settlement. DOV the contributing Member concerned;
d) legal proceedings have been commenced against the Contracting Authority or a contributing Member or the Contractor in respect of use authorised by statute in its jurisdiction, but as far as the Contracting Authority or the contributing Member is concerned only to the extent that the infringing use has been properly authorised under any applicable statutory provision;
e) a particular use by the Contracting Authority or a contributing Member of anything supplied under the Contract was not reasonably foreseeable by the Contractor at the time of the Contract;
f) that Foreground IP and/or Background IP are used for Government Purposes, where the relevant terms will be covered under the agreement reached for that use.
17.4.3 The Contracting Authority shall:
a) indemnify the Contractor against all liabilities for infringement or alleged infringement of Third Party IP rights arising directly from the use, under this Contract, of any material, equipment, document or Information provided by it or resulting directly from a specific instruction from the Contracting Authority to use that Third Party IP, or both;
b) undertake that it and each contributing Member employs such powers as are available to it or the contributing Members, or both, to minimise all liabilities of the Contractor in respect of Third Party IP rights.
17.4.4 The Contractor shall not institute any negotiations be indemnified where Article 17.4.2, a) to c) applies mutatis mutandis, or legal proceedings with respect to any such infringement without prior written consent where specific limitations of Wyeth, but shall use have the right to institute infringement proceedings against a third party been identified in the event that Wyeth elects not to do so. In such event, DOV shall bear the entire costs and expenses of such proceedings. Wyeth shall provide DOV with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In such event, DOV shall be entitled to retain ninety percent (90%) of the proceeds of any such recovery, after first deducting the costs and expenses borne by DOV in initiating and maintaining such infringement action and shall pay the remainder to WyethContract.
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Samples: Research & Technology Contract
PATENT INFRINGEMENTS. 12.1 Wyeth 10.1 In the Field of Use, MOTOROLA shall be responsible for have the filingprimary right, prosecution but not the obligation, to prosecute and maintenance control at its own expense all lawful actions in response to infringements or misappropriations of the Wyeth PatentsLicensed Patents or the Know-how (each, an "Unauthorized Use"). Wyeth Neither party shall not allow any issued Patent included within the Wyeth Patents and listed or Exhibit A attached hereto have a duty to lapse (by reason of failure to pay maintenance fees or annuities or to take any other action necessary to maintain such patent in full force and effect) or admit the invalidity thereof prior report to the mutual expiration date thereof without DOV"s prior consent.
12.2 In case any actions, claims, demands, suits or other legal proceedings are brought or threatened to be brought against DOV by party instances where a third party is or may be engaging in Unauthorized Use. Within a reasonable time (not to [The confidential material contained herein has been omitted and has been separately filed with the Commission.]) after UDC gives written notice to MOTOROLA describing circumstances involving Unauthorized Use and requesting MOTOROLA to take action against such infringement, MOTOROLA shall provide UDC with written notice indicating whether or not MOTOROLA intends to take responsibility for ending the Unauthorized Use. If MOTOROLA (i) gives written notice to UDC that MOTOROLA does not intend to take responsibility for ending the Unauthorized Use, or (ii) gives written notice to UDC that MOTOROLA intends to take responsibility for ending the Unauthorized Use, but MOTOROLA, within [The confidential material contained herein has been omitted and has been separately filed with the Commission.] days after providing such notice, has not persuaded the third party engaged in or believed to be engaged in the Unauthorized Use (the "Unauthorized User") to cease such Unauthorized Use and has not brought and is not then diligently prosecuting an infringement action against the Unauthorized User (or at any time thereafter MOTOROLA ceases to diligently prosecute such an infringement action against the Unauthorized User), then UDC shall have the right, but shall not be obligated, to take responsibility for ending the Unauthorized Use at UDC's own expense. In furtherance of such third party's patent(s) relating right, MOTOROLA hereby agrees that UDC, at its expense, may name MOTOROLA as a party plaintiff in any lawsuit or other action against the Unauthorized User; provided, however, that the counsel retained by UDC to Product per se, by virtue of DOV's manufacture, use, sale prosecute or offer for sale of settle the Product or Marketed Product hereunder, DOV shall notify Wyeth forthwith of the threat or existence of such actions with sufficient evidence thereof to enable the parties to prepare an appropriate defense. strategy. The parties shall consult together as to the action to be taken and as to how the defense will be handled. DOV lawsuit shall be responsible for all defense costs. DOV undertakes not subject to make any admission of liability to a claimant or plaintiff or his or her legal representative or insurer and not to sign any agreement in respect of MOTOROLA's prior written approval, such proceedings without Wyeth's previous written consent approval not to be unreasonably withheld. When DOV, because The parties shall share any damages and other recoveries derived from the Unauthorized Use such that the recoveries shall first reimburse all legal and other expenses incurred by each of the settlement with Wyeth's parties in respect thereof (pro rata in proportion to the expenses incurred by each if the recoveries are insufficient to pay all of the expenses); any portions of such damages or other recoveries intended primarily to compensate UDC for Total Revenues that UDC would have received but for the Unauthorized Use or otherwise intended as actual or primary damages of UDC shall be treated as Total Revenues for purposes of this Agreement and UDC shall retain such Total Revenues after paying MOTOROLA royalties on said portions as specified in Section 4.0 above; and any recoveries in excess of the foregoing (including without limitation "treble damage" awards in excess of the foregoing) shall be apportioned 50% to UDC and 50% to MOTOROLA. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of MOTOROLA, which consent shall not be unreasonably withheld or delayed. With respect to any action against an Unauthorized User initiated by UDC, UDC shall indemnify MOTOROLA against any order for costs that may be made against MOTOROLA in such proceedings.
10.2 In the claimed infringement, or a final unappealable or non-appealed judgment event that either party learns of the institution of a court of competent jurisdiction, is required to make payments to one declaratory judgment action or more third parties to obtain a license without which the marketing of the Marketed Product could not be made in a given country, DOV may deduct such payments from the royalty payments due to Wyeth hereunder, provided however that in no event shall the royalty rate be reduced by more than fifty percent (50%) of that which would otherwise be due Wyeth.
12.3 DOV shall promptly inform Wyeth of any suspected infringement response alleging invalidity of any of Wyeth Patents by a third the Licensed Patents, that party and shall provide Wyeth the other party with prompt written notice thereof. MOTOROLA shall have the sole right (but no obligation), at its expense, to defend or settle such action; provided, however, that UDC may participate in the defense or settlement thereof with counsel of its own choosing at its own expense. In the event MOTOROLA notifies UDC that MOTOROLA does not intend to defend such action, or should MOTOROLA at any available evidence of time cease to diligently defend such suspected infringement. Wyeth action, UDC shall have the right (but no obligation) to take over the sole defense of the action at its own expense; provided, however, that the counsel retained by UDC to defend the action shall be subject to MOTOROLA's prior written approval, such approval not the obligation to be unreasonably withheld.
10.3 In any suit as either party may institute any claim, suit or proceeding against an infringer Unauthorized User, or a presumed infringer to protect enforce or defend the Licensed Patents pursuant to this Agreement, the other party hereto shall, at the request and defend Wyeth Patents. Wyeth shall control the prosecution of any such suit or claim, including without limitation the choice of counsel and shall settle or dispose of any such suit or claim. DOV shall provide Wyeth with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In the event Wyeth so elects, Wyeth shall bear the entire costs of such prosecution and shall be entitled to retain, after deducting the costs and expenses borne by Wyeth in prosecuting the claim of infringement, ninety percent (90%) expense of the amount of any recoveryparty initiating such suit, court award or settlement. DOV shall not institute any negotiations or legal proceedings with respect cooperate to any such infringement without prior written consent of Wyeth, but shall have the right extent reasonably needed to institute infringement proceedings against establish standing as a third party in the event suit and to establish validity of the Licensed Patents. Neither party shall have a duty to volunteer to testify against the opposing parties in such suit, violate any nondisclosure or confidentiality agreement that Wyeth elects may be in effect, or reveal any nonpublic information that a party to this agreement may have obtained in the course of commercial relationships, if any, with such opposing parties, provided that this sentence shall not be deemed to do sowaive or impair a party's right to compel testimony or discovery under applicable law. In such event, DOV The other party to this Agreement shall bear the entire costs and expenses of such proceedings. Wyeth shall provide DOV with all reasonable assistance (other than financial) required to institute and maintain such proceedings. In such event, DOV shall also be entitled to retain ninety percent (90%) its own legal counsel for purposes of the proceeds suit, the cost of any such recovery, after first deducting the costs and expenses borne by DOV which shall be subject to reimbursement as provided in initiating and maintaining such infringement action and shall pay the remainder to WyethSection 10.1.
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