Common use of PATENT LICENSE AGREEMENT Clause in Contracts

PATENT LICENSE AGREEMENT. Patents only extends to the Field of Use. In the event that any such declaratory judgment action or such other action or proceeding is brought, Company shall have the first right to defend any such action at Company’s expense, including defending against any counterclaims or crossclaims brought by any party against Company or Penn regarding the Penn Patent Rights and defending against any claim that the Penn Patent Rights are invalid in the course of any infringement action or in a declaratory judgment action. With respect to the Assigned BMS Patents, Company shall have all the rights and obligations afforded “University” or “Licensee Entities” under Section 6.1(b) of the TDA (including the right to participate at Company’s own cost in any BMS-controlled litigation activities concerning the Assigned BMS Patents). Company must not settle or compromise any such litigation, action or proceeding in a manner that imposes any obligations or restrictions on Penn or grants any rights to the Penn Patent Rights without Penn’s prior written permission (unless any such grant by Company amounts to a permitted sublicense hereunder). If Penn chooses not to intervene voluntarily, but Penn is a necessary party to the action, then Company may join Penn in the litigation. If Company prosecutes any infringement claims with Penn involuntarily joined as a party, then Company will reimburse Penn for Penn’s reasonable litigation expenditures as a result of such involuntary joinder (but not for any active participation by Penn, which resulting expenditures shall be addressed as if Penn had intervened voluntarily as contemplated by Section 8.3), including any attorney’s fees, expenses, official fees and other charges incurred by Penn, even if there are no financial recoveries from the infringement action. Company will reimburse Penn for such reasonable expenditures within thirty (30) days after receiving each invoice from Penn. After reimbursing Penn for such reasonable expenditures, recoveries from any such litigation, action or proceeding will be: (a) first, applied to reimburse Company for its related expenditures; and (b) second, as to any remainder, retained by Company but treated (as appropriate by reference to the commercializing entity in the affected country(ies)) as either (i) Net Sales for the purpose of determining the royalties due to Penn under Section 3.3 or (ii) sublicense consideration for the purpose of determining the sublicense fees due to Penn under Section 3.5(i), provided that Company shall retain all damage recoveries for willful infringement.

PATENT LICENSE AGREEMENT. Patents only extends The Seller Parties are in the process of negotiating an amendment and restatement to the Field Patent License Agreement (the "Amended Patent License Agreement") pursuant to which the existing Patent License Agreement will be amended to provide, among other things (i) that the patents covered by the Patent License Agreement which are licensed to Seller may be assigned by Seller to Acquiror on a perpetual, non-exclusive and royalty-free basis and (ii) that the Licensee (and Acquiror, together with any permitted assignees) under the Amended Patent License Agreement will have no affirmative obligations under the License Agreement to use or make efforts to derive revenues from the use of Usethe patent licensed thereunder. The Seller Parties agree to use commercially reasonable efforts to execute the Amended Patent License Agreement prior to the Closing Date. The Seller Parties shall notify Acquiror if the Amended Patent License Agreement is entered into (whether the Amended Patent License Agreement is entered into prior to or after the Closing) and provide Acquiror with a copy thereof. Acquiror may elect to assume Seller's benefits and obligations under the Amended Patent License Agreement in its sole discretion and, if Acquiror elects to assume the Amended Patent License Agreement, such agreement will become an Assumed Contract. In the event that any the Amended Patent License Agreement has not been executed as of the Closing Date, then Seller Parties shall use commercially reasonable efforts, without the obligation to expend funds, to obtain consent from the licensor under the Patent License Agreement to sublicense the patent covered thereby to Acquiror on a perpetual, royalty-free basis (and if such declaratory judgment action or consent is obtained, Seller shall enter into such other action or proceeding is broughta sublicense in a form reasonably acceptable to Acquiror at the Closing). Notwithstanding anything in this Section to the contrary, Company Acquiror shall have the first right in its sole discretion, upon written notice to defend Seller and with the consent of licensor (if required), to assume Seller's rights under the existing Patent License Agreement at any time on or after the Closing Date and, if Acquiror exercises such action at Company’s expenseright, including defending against any counterclaims or crossclaims brought by any party against Company or Penn regarding the Penn Patent Rights and defending against any claim that the Penn Patent Rights are invalid in the course of any infringement action or in a declaratory judgment action. With respect to the Assigned BMS Patents, Company shall have all the Seller's rights and obligations afforded “University” or “Licensee Entities” under Section 6.1(b) of the TDA (including the right to participate at Company’s own cost in any BMS-controlled litigation activities concerning the Assigned BMS Patents). Company must not settle or compromise any such litigation, action or proceeding in a manner that imposes any obligations or restrictions on Penn or grants any rights to the Penn existing Patent Rights without Penn’s prior written permission (unless any such grant by Company amounts to a permitted sublicense hereunder). If Penn chooses not to intervene voluntarily, but Penn is a necessary party to the action, then Company may join Penn in the litigation. If Company prosecutes any infringement claims with Penn involuntarily joined as a party, then Company will reimburse Penn for Penn’s reasonable litigation expenditures as a result of such involuntary joinder (but not for any active participation by Penn, which resulting expenditures License Agreement shall be addressed as if Penn had intervened voluntarily as contemplated by Section 8.3), including any attorney’s fees, expenses, official fees and other charges incurred by Penn, even if there are no financial recoveries from the infringement actionconsidered an Assumed Contract. Company will reimburse Penn for such reasonable expenditures within thirty (30) days after receiving each invoice from Penn. After reimbursing Penn for such reasonable expenditures, recoveries from any such litigation, action or proceeding will be: (a) first, applied to reimburse Company for its related expenditures; and (b) second, as to any remainder, retained by Company but treated (as appropriate by reference to the commercializing entity in the affected country(ies)) as either (i) Net Sales for the purpose of determining the royalties due to Penn under Section 3.3 or (ii) sublicense consideration for the purpose of determining the sublicense fees due to Penn under Section 3.5(i), provided that Company shall retain all damage recoveries for willful infringementARTICLE VII.