Common use of Patent Invalidity Claim Clause in Contracts

Patent Invalidity Claim. Each of the Parties shall promptly notify the other in the event of any legal or administrative action by any Third Party against a ROCHE Patent Right, SYNTA Patent Right or Joint Patent Right, of which it becomes aware, including any nullity, revocation, reexamination or compulsory license proceeding or, in accordance with Section 8.6, any Paragraph IV Certification. ROCHE shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a ROCHE Patent Right, in its own name, and the costs of any such defense shall be at ROCHE’s expense. SYNTA shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a SYNTA Patent Right or Joint Patent Right, in its own name, and the costs of any such defense shall be at SYNTA’s expense. The non-initiating Party, upon request Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended. of the initiating Party, agrees to join in any such action and to cooperate reasonably with the initiating Party, provided that the initiating Party shall promptly reimburse all out-of-pocket expenses (including reasonable counsel fees and expenses) actually incurred by the non-initiating Party in connection with such cooperation. If the initiating Party does not defend against any such action, then the non-initiating Party shall have the right, but not the obligation, to defend such action and any such defense shall be at the non-initiating Party’s expense.

Patent Invalidity Claim. Each of If a Third Party at any time asserts a claim that any Agios Patent Right or Agios Collaboration Patent Right (including Joint Patents) is invalid or otherwise unenforceable (an “Invalidity Claim”), whether as a defense in an infringement action brought by Agios or Celgene pursuant to Section 10.3, in a declaratory judgment action or in a Third-Party Infringement claim brought against Agios or Celgene, the Parties shall promptly notify the cooperate with each other in preparing and formulating a response to such Invalidity Claim; provided that, subject to the event terms and conditions of any legal or administrative action by any the Existing Third Party against a ROCHE Agreements to the extent any such agreement applies to such Agios Patent Right or Agios Collaboration Patent Right, SYNTA Patent Right or Joint Patent Right, of which it becomes aware, including any nullity, revocation, reexamination or compulsory license proceeding or, in accordance with Section 8.6, any Paragraph IV Certification. ROCHE shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a ROCHE Patent Right, in its own name, and the costs of any such defense shall be at ROCHE’s expense. SYNTA shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a SYNTA Patent Right or Joint Patent Right, in its own name, and the costs of any such defense shall be at SYNTA’s expense. The non-initiating Party, upon request Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended. of the initiating Party, agrees to join in any such action and to cooperate reasonably with the initiating Party, provided that the initiating Party shall promptly reimburse all out-of-pocket expenses (including reasonable counsel fees and expenses) actually incurred by the non-initiating Party in connection with such cooperation. If the initiating Party does not defend against any such action, then the non-initiating Lead Party shall have the right, but not sole right to control the obligation, to defend such action defense and settlement of any such Invalidity Claim primarily involving any Agios Patent Right or Agios Collaboration Patent Right (including Joint Patents), in either case, relating to the Program for which such Party is the Lead Party, and Agios shall have the sole right to control the defense and settlement of any such Invalidity Claim primarily involving any other Agios Patent Right or Agios Collaboration Patent Rights; provided further that the Lead Party shall be at not settle or compromise any Invalidity Claim without the non-initiating consent of the other Party’s expense.

Patent Invalidity Claim. Each of the Parties shall promptly notify the other in the event of any legal or administrative action by any Third Party against a ROCHE Patent Right, SYNTA Ocuphire Patent Right or Joint Patent Right, Right of which it becomes aware, including any nullity, revocation, reexamination or compulsory license proceeding or, in accordance with Section 8.6, any Paragraph IV Certificationproceeding. ROCHE Ocuphire shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a ROCHE Ocuphire Patent Right, in its own name, and the costs of any such defense shall be at ROCHEOcuphire’s expense. SYNTA ; provided, however, that, in the case of any inter partes review or similar post-grant matter before the Patent Trial and Appeal Board or similar administrative body that is based on the same subject matter as any claim or counterclaim in any Infringement Claim, Processa shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a SYNTA Patent Right or Joint Ocuphire Patent Right, in its own name, and the costs of any such defense shall be at SYNTAProcessa’s expense; provided, further that in the case of any Paragraph IV Claim, Section 7.8 shall apply. Processa shall have the sole right, but not the obligation, to defend against any such action involving a Processa Patent Right and the first right, but not the obligation, to defend against any action involving a Joint Patent Right, and, in each case, the costs of any such defense shall be at Processa’s expense. The non-initiating If the Party that has the first right to defend against any such action involving such Ocuphire Patent Right or Joint Patent Right does not do so within sixty (60) days of notice thereof, then the other Party shall have the right, but not the obligation, to defend such action and any such defense shall be at such other Party, upon ’s expense. Upon request Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to Party that defends against any such action involving a Ocuphire Patent Right, Processa Patent Right or Joint Patent Right, the Company’s application requesting confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended. of the initiating Party, other Party agrees to join in any such action and to cooperate reasonably with the initiating defending Party, including providing full access to documents, information and witnesses as reasonably requested by the defending Party in connection with such action, provided that the initiating defending Party shall promptly reimburse all out-of-pocket expenses (including reasonable counsel fees and expenses) actually incurred by the non-initiating other Party in connection with such cooperation. If the initiating Party does not defend against any such action, then the non-initiating Party shall have the right, but not the obligation, to defend such action and any such defense shall be at the non-initiating Party’s expense.

Patent Invalidity Claim. Each of the Parties shall promptly notify the other If a Third Party at any time asserts a claim that any Novartis Patent is invalid or otherwise unenforceable (an “Invalidity Claim”), whether as a defense in an infringement action brought by a Party pursuant to Section 9.4, in a declaratory judgment action or any patent office proceeding anywhere in the event of any legal world (e.g., inter-partes review or administrative action by any Third Party against a ROCHE Patent RightEuropean opposition) or otherwise, SYNTA Patent Right or Joint Patent Right, of which it becomes aware, including any nullity, revocation, reexamination or compulsory license proceeding or, in accordance with Section 8.6, any Paragraph IV Certification. ROCHE resTORbio shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving Invalidity Claim and Novartis shall cooperate with resTORbio in preparing and formulating a ROCHE Patent Right, in its own name, and the costs of any response to such defense shall be at ROCHE’s expense. SYNTA shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a SYNTA Patent Right or Joint Patent Right, in its own name, and the costs of any such defense shall be at SYNTA’s expense. The non-initiating Party, upon request Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended. of the initiating Party, agrees to join in any such action and to cooperate reasonably with the initiating Party, provided that the initiating Party shall promptly reimburse all out-of-pocket expenses (including reasonable counsel fees and expenses) actually incurred by the non-initiating Party in connection with such cooperationInvalidity Claim. If the initiating Party resTORbio does not defend an Invalidity Claim brought against any such actiona Novartis Patent, then the non-initiating Party shall have the right, but not the obligation, to Novartis may defend such action Invalidity Claim and the coordination provisions of Section 9.4(c) will apply to such Invalidity Claim, mutatis mutandis as they apply to Third Party Infringement suits. Neither Party may, without the consent of the other Party, settle or compromise any Invalidity Claim in any manner which would (a) have an adverse effect on such defense shall be at the non-initiating other Party’s expenserights or obligations hereunder or (b) be an admission of liability on behalf of the other Party (provided, however, that the Party initiating such suit may settle such suit without such consent if such settlement involves only the receipt of money from, or the payment of money to, such Third Party and the Party settling such suit makes all such payments to such Third Party). To the extent such Invalidity Claim is raised as a defense in an infringement action brought by a Party pursuant to Section 9.4, the expense provisions of Section 9.4 will apply and counsel to the Party controlling the infringement action shall act as the ministerial liaison with the court.

Patent Invalidity Claim. Each of the Parties shall promptly notify the other in the event of any legal or administrative action by any If a Third Party against at any time asserts a ROCHE Patent Right, SYNTA claim that any Infinity Patent Right or Purdue Patent Right Covering a Royalty Bearing Product is invalid or otherwise unenforceable (an “Invalidity Claim”), whether as a defense in an infringement action brought by Infinity or Purdue pursuant to Section 7.3, in a declaratory judgment action or in a Third Party Infringement Claim brought against Infinity or Purdue, the Party Controlling such Patent Right (or Infinity with respect to any Joint Patent Right, of which it becomes aware, including any nullity, revocation, reexamination or compulsory license proceeding or, in accordance with Section 8.6, any Paragraph IV Certification. ROCHE ) shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a ROCHE Patent Right, in its own name, Invalidity Claim and the costs of any other Party shall cooperate with the Party Controlling such defense shall be at ROCHE’s expense. SYNTA shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a SYNTA Patent Right or Joint Patent Right, in its own name, preparing and the costs of any formulating a response to such defense shall be at SYNTA’s expense. The non-initiating Party, upon request Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended. of the initiating Party, agrees to join in any such action and to cooperate reasonably with the initiating Party, provided that the initiating Party shall promptly reimburse all out-of-pocket expenses (including reasonable counsel fees and expenses) actually incurred by the non-initiating Party in connection with such cooperationInvalidity Claim. If the initiating Party Infinity does not defend an Invalidity Claim brought against an Infinity Patent Right in the Territory or Purdue does not defend an Invalidity Claim brought against a Purdue Patent Right in the Territory, the other Party may defend such Invalidity Claim and the coordination provisions of Section 7.3(c) shall apply to such Invalidity Claim, mutatis mutandis as they apply to Licensed IP Infringement suits. Neither Party shall, without the consent of the other Party, settle or compromise any Invalidity Claim in any manner which would (a) have an adverse effect on such actionother Party’s Patent Rights or such other Party’s rights to Develop, then Manufacture or Commercialize a Royalty Bearing Product hereunder or (b) be an admission of liability on behalf of such other Party (provided, however, that the non-Party initiating such suit may settle such suit without such consent if such settlement involves only the receipt of money from, or the payment of money to, such Third Party and the Party initiating such suit makes all such payments to such Third Party). The Party defending such Invalidity Claim shall bear all expenses with respect thereto and such Party’s counsel shall act as the ministerial liaison with the court, except (i) to the extent such Invalidity Claim is raised as a defense in an infringement action brought by Infinity or Purdue pursuant to Section 7.3, in which case the expense provisions of Section 7.3 shall apply and the counsel to such Party shall have act as the rightministerial liaison with the court, but not and (ii) to the obligationextent such Invalidity Claim is raised in a Third Party Infringement Claim brought against Purdue, to defend such action in which case Purdue shall bear all expenses with respect thereto and any such defense shall be at act as the non-initiating Party’s expenseministerial liaison with the court.

Patent Invalidity Claim. Each of the Parties shall promptly notify the other in the event of any legal or administrative action by any If a Third Party against at any time asserts a ROCHE claim that any Agenus Patent Right, SYNTA Incyte Program Patent Right or Joint Patent RightRight Covering a Product is invalid or otherwise unenforceable (an “Invalidity Claim”), of which it becomes aware, including any nullity, revocation, reexamination whether as a defense in an infringement action brought by Agenus or compulsory license proceeding orIncyte pursuant to Section 6.3(b), in accordance a declaratory judgment action or in a Third Party Infringement Claim brought against Agenus or Incyte, the Party Controlling such Patent Right (or Incyte with Section 8.6, respect to any Paragraph IV Certification. ROCHE Joint Patent Right) shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a ROCHE Patent Right, in its own name, Invalidity Claim and the costs of any other Party shall cooperate with the Party Controlling such defense shall be at ROCHE’s expensePatent Right in preparing and formulating a response to such Invalidity Claim. SYNTA shall have the first right, but If Agenus does not the obligation, to defend an Invalidity Claim brought against any such action an Agenus Patent Right or Paragraph IV Certification involving a SYNTA Incyte does not defend an Invalidity Claim brought against an Incyte Program Patent Right or Joint Patent Right, in its own name, the other Party may defend such Invalidity Claim and the costs coordination provisions of any Section 6.3(b) shall apply to such defense shall be at SYNTA’s expenseInvalidity Claim, mutatis mutandis as they apply to Licensed IP Infringement suits. The non-initiating Neither Party shall, without the consent of the other Party, upon request Portions settle or compromise any Invalidity Claim in any manner which would (a) have an adverse effect on such other Party’s Patent Rights or such other Party’s Program Rights hereunder or (b) be an admission of this Exhibit were omitted liability on behalf of such other Party (provided, however, that the Party initiating such suit may settle such suit without such consent if such settlement involves only the receipt of money from, or the payment of money to, such Third Party and have been filed separately the Party initiating such suit makes all such payments to such Third Party). To the extent such Invalidity Claim is raised as a defense in an infringement action brought by Agenus or Incyte pursuant to Section 6.3(b), the expense provisions of Section 6.3 shall apply and counsel to the Party controlling the infringement action shall act as the ministerial liaison with the Secretary of court. To the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended. of the initiating extent such Invalidity Claim is raised in a Third Party Infringement Claim brought against a Party, agrees to join in any such action the expense provisions of Section 6.4 shall apply with respect thereto and to cooperate reasonably the Party against whom the Invalidity Claim is brought shall act as the ministerial liaison with the initiating Party, provided that the initiating Party shall promptly reimburse all out-of-pocket expenses (including reasonable counsel fees and expenses) actually incurred by the non-initiating Party in connection with such cooperation. If the initiating Party does not defend against any such action, then the non-initiating Party shall have the right, but not the obligation, to defend such action and any such defense shall be at the non-initiating Party’s expensecourt.

Patent Invalidity Claim. Each of the Parties shall promptly notify the other in the event of any legal or administrative action by any Third Party against a ROCHE an Elion Patent Right, SYNTA Processa Patent Right or Joint Patent Right, Right of which it becomes aware, including any nullity, revocation, reexamination or compulsory license proceeding or, in accordance with Section 8.6, any Paragraph IV Certificationproceeding. ROCHE Elion shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a ROCHE an Elion Patent Right, in its own name, and the costs of any such defense shall be at ROCHEElion’s expense. SYNTA ; provided, however, that, in the case of any inter partes review or similar post-grant matter before the Patent Trial and Appeal Board or similar administrative body that is based on the same subject matter as any claim or counterclaim in any Infringement Claim or Paragraph IV Claim, Processa shall have the first right, but not the obligation, to defend against any such action or Paragraph IV Certification involving a SYNTA Patent Right or Joint an Elion Patent Right, in its own name, and the costs of any such defense shall be at SYNTAProcessa’s expense. The non-initiating Processa shall have the first right, but not the obligation, to defend against any such action involving a Processa Patent Right or Joint Patent Right, and the costs of any such defense shall be at Processa’s expense. If the Party that has the first right to defend against any such action involving such Elion Patent Right, Processa Patent Right or Joint Patent Right does not do so, then the other Party shall have the right, but not the obligation, to defend such action and any such defense shall be at such other Party, upon ’s expense. Upon request Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to Party that defends against any such action involving an Elion Patent Rights, Processa Patent Right or Joint Patent Right, the Company’s application requesting confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended. of the initiating Party, other Party agrees to join in any such action and to cooperate reasonably with the initiating defending Party, including providing full access to documents, information and witnesses as reasonably requested by the defending Party in connection with such action, provided that the initiating defending Party shall promptly reimburse all out-of-pocket expenses (including reasonable counsel fees and expenses) actually incurred by the non-initiating other Party in connection with such cooperation. If the initiating Party does not defend against any such action, then the non-initiating Party shall have the right, but not the obligation, to defend such action and any such defense shall be at the non-initiating Party’s expense.