Common use of Patent Matters Clause in Contracts

Patent Matters. (a) RTI shall be responsible for payment of maintenance fees for US Patent [*] that become due after the Effective Date. (b) If either party learns of any actual or threatened infringement or misappropriation or any attack on the validity or enforceability by a third party with respect to Licensor Patent Rights and the Licensor Intellectual Property in the Field, such party shall promptly notify the other party and shall provide such other party with available evidence of such events. (c) RTI shall have the first option to pursue any enforcement or defense of Licensor Patent Rights and the Licensor Intellectual Property against infringement or misappropriation, including defense against a declaratory judgment action alleging invalidity or non-infringement of any of the Licensor Patent Rights and the Licensor Intellectual Property in the Field; provided, that RTI pays all costs and expenses related to the same, keeps Licensor reasonably informed of its progress and provides Licensor with copies of any substantive documents related to such proceedings and reasonable notice of all such proceedings. RTI shall notify Licensor of its decision to exercise its right to enforce or defend Licensor Patent Rights or Licensor Intellectual Property not later than [*] following its discovery or receipt of notice of the alleged infringement or misappropriation. (d) If (i) RTI notifies Licensor that it will not enforce Licensor Patent Rights and the Licensor Intellectual Property in accordance with Section 1.2(c); (ii) RTI has exhausted all legal appeals with respect to causing the alleged infringement or misappropriation to cease or causing the person alleging the infringement or misappropriation to forebear, (iii) RTI fails to bring an infringement or misappropriation action within [*] following its discovery or receipt of notice of the alleged infringement or misappropriation or (iv) RTI is not diligently pursuing an infringement or misappropriation action or diligently defending the validity or enforceability of Licensor Patent Rights and the Licensor Intellectual Property at issue, then Licensor shall have the right to pursue the alleged infringer or party responsible for the alleged misappropriation or take control of any action initiated by, or being defended by, RTI at Licensor’s own expense. Notwithstanding the foregoing, if RTI has not initiated an infringement or misappropriation action as described under (iii) above, or ceased to pursue such action, on the advice of outside patent counsel, then Licensor agrees not to initiate such an action without RTI’s prior consent not to be unreasonably withheld or delayed (with the determination of reasonableness taking into account the costs of such litigation, its likelihood for success, the potential damages or settlement recovery, and the potential for exposure to counterclaims and defenses against RTI with respect to any RTI Patent Rights with respect to the applicable Licensed Product). In any such case, RTI will, wherever possible under applicable law, substitute Licensor as party plaintiff for purposes of pursuing any alleged infringer or party responsible for the alleged misappropriation, or as defendant for defending any Licensor Patent Rights or Licensor Intellectual Property. (e) Any recovery of damages or other sums recovered in a proceeding or action with regard to Licensor Patent Rights and the Licensor Intellectual Property Rights handled by a party pursuant to Section 1.2(c) or

Patent Matters. (a) RTI Sellers shall be responsible for payment of maintenance fees for US use their reasonable efforts to satisfy the Patent [*] Condition prior to Closing, including but not limited to providing Buyer with instruments and documents that become due will allow Sellers (or Buyer, as its successor in interest) to successfully withstand the Reexamination. From and after the Effective Datedate hereof until the Closing, Sellers shall use their reasonable efforts to take all actions and to do all things necessary, proper, or advisable in order to defend all lawsuits or other legal, regulatory or other proceedings to which either Seller is a party challenging or affecting the validity or enforceability of Sellers’ Registered Intellectual Property Rights and shall cooperate with Buyer following the Closing in Buyer’s efforts in doing the same. (b) If For the purposes of this Agreement, the “Patent Condition” shall be deemed to have been satisfied by Sellers if, prior to the Closing, Sellers have provided Buyers with (1) a letter from the PTO informing Sellers that it has elected to not pursue further the Reexamination regarding the Invention Patent or (2) appropriate affidavits sworn by either party learns of any actual or threatened infringement or misappropriation or any attack on the validity or enforceability by a third party with respect to Licensor Patent Rights and the Licensor Intellectual Property Inventors identified in the FieldInvention Patent or, such party shall promptly notify to the extent allowed by the PTO, by Sellers, in either case supported by documentary or other party and shall provide such other party evidence that Buyer has determined in its sole but reasonable discretion is sufficient to demonstrate with available evidence of such events. (c) RTI shall have reasonable certainty that the first option Invention was conceived by the inventors set forth in the Invention Patent prior to pursue any enforcement or defense of Licensor Patent Rights and the Licensor Intellectual Property against infringement or misappropriation, including defense against a declaratory judgment action alleging invalidity or non-infringement of any effective date of the Licensor Patent Rights and the Licensor Intellectual Property reference cited in the Field; providedOther Claim. To be useful in satisfying the Patent Condition, that RTI pays all costs the technical disclosure contained in any such evidence must make the showing of facts, in character and expenses related weight, to establish reduction to practice of the Invention as claimed in the Invention Patent prior to the same, keeps Licensor reasonably informed of its progress and provides Licensor with copies of any substantive documents related to such proceedings and reasonable notice of all such proceedings. RTI shall notify Licensor of its decision to exercise its right to enforce or defend Licensor Patent Rights or Licensor Intellectual Property not later than [*] following its discovery or receipt of notice effective date of the alleged infringement reference cited in the Other Claim, or misappropriation. (d) If (i) RTI notifies Licensor that it will not enforce Licensor Patent Rights and the Licensor Intellectual Property in accordance with Section 1.2(c); (ii) RTI has exhausted all legal appeals with respect to causing the alleged infringement or misappropriation to cease or causing the person alleging the infringement or misappropriation to forebear, (iii) RTI fails to bring an infringement or misappropriation action within [*] following its discovery or receipt of notice conception of the alleged infringement Invention as claimed in the Invention Patent prior to the effective date of the reference cited in the Other Claim coupled with due diligence from prior to said date to a subsequent reduction to practice or misappropriation or (iv) RTI is not diligently pursuing an infringement or misappropriation action or diligently defending to the validity or enforceability filing of Licensor Patent Rights and the Licensor Intellectual Property at issue, then Licensor shall have the right to pursue the alleged infringer or party responsible application for the alleged misappropriation Invention Patent. The documentary or take control of any action initiated byother evidence provided by the Sellers may include, or being defended bywithout limitation: (a) inventor notebooks, RTI at Licensor’s own expense. Notwithstanding the foregoing, if RTI has not initiated an infringement or misappropriation action as described under (iii) above, or ceased to pursue such action, on the advice of outside patent counsel, then Licensor agrees not to initiate such an action without RTI’s prior consent not to be unreasonably withheld or delayed (with the determination of reasonableness taking into account the costs of such litigation, its likelihood for success, the potential damages or settlement recoverynotes, and other electronic records maintained by the potential for exposure to counterclaims and defenses against RTI with respect to any RTI Patent Rights inventors with respect to the applicable Licensed Product). In any such caseInvention (b) internal discussions (e-mails, RTI willmemos, wherever possible under applicable lawetc.) regarding the Invention, substitute Licensor as party plaintiff for purposes (c) drafts of pursuing any alleged infringer patent applications with respect to the Invention or party responsible for the alleged misappropriationInvention Patent, (d) interview of a patent attorney (or as defendant for defending any Licensor Patent Rights a colleague or Licensor Intellectual Property. team member) regarding the Invention, (e) Any recovery any contemporaneous disclosures to a patent attorney or company’s legal department, (f) any drafts of damages presentations or articles for conferences, lectures, trade-shows or other sums recovered internal peer-review, (g) any disclosure materials given to investors, third-party collaborators, partners, manufacturers regarding the Invention, (h) any ▇▇▇▇-of-materials for prototype, manufacture, design of the Invention, (i) any internal funding or project proposals with respect to the Invention, (j) any milestones or project-progress reports with respect to the Invention and (k) minutes from team meetings (during relevant time period) discussing the Invention; provided, however, that the provision of any document or any other evidence shall not be deemed to have satisfied the Patent Condition unless and until Buyer has determined in a proceeding or action with regard to Licensor its sole but reasonable discretion that the Patent Rights and the Licensor Intellectual Property Rights handled by a party pursuant to Section 1.2(c) orCondition has been satisfied.

Patent Matters. (a) RTI shall be responsible for payment of maintenance fees for US Patent [*] that become due after the Effective Date. (b) If either party learns of any actual or threatened infringement or misappropriation or any attack on the validity or enforceability by a third party with respect to Licensor Patent Rights and the Licensor Intellectual Property in the Field, such party shall promptly notify the other party and shall provide such other party with available evidence of such events. (c) RTI shall have the first option to pursue any enforcement or defense of Licensor Patent Rights and the Licensor Intellectual Property against infringement or misappropriation, including defense against a declaratory judgment action alleging invalidity or non-infringement of any of the Licensor Patent Rights and the Licensor Intellectual Property in the Field; provided, that RTI pays all costs and expenses related to the same, keeps Licensor reasonably informed of its progress and provides Licensor with copies of any substantive documents related to such proceedings and reasonable notice of all such proceedings. RTI shall notify Licensor of its decision to exercise its right to enforce or defend Licensor Patent Rights or Licensor Intellectual Property not later than [*] following its discovery or receipt of notice of the alleged infringement or misappropriation. (d) If (i) RTI notifies Licensor that it will not enforce Licensor Patent Rights and the Licensor Intellectual Property in accordance with Section 1.2(c); (ii) RTI has exhausted all legal appeals with respect to causing the alleged infringement or misappropriation to cease or causing the person alleging the infringement or misappropriation to forebear, (iii) RTI fails to bring an infringement or misappropriation action within [*] following its discovery or receipt of notice of the alleged infringement or misappropriation or (iv) RTI is not diligently pursuing an infringement or misappropriation action or diligently defending the validity or enforceability of Licensor Patent Rights and the Licensor Intellectual Property at issue, then Licensor shall have the right to pursue the alleged infringer or party responsible for the alleged misappropriation or take control of any action initiated by, or being defended by, RTI at Licensor’s own expense. Notwithstanding the foregoing, if RTI has not initiated an infringement or misappropriation action as described under (iii) above, or ceased to pursue such action, on the advice of outside patent counsel, then Licensor agrees not to initiate such an action without RTI’s prior consent not to be unreasonably withheld or delayed (with the determination of reasonableness taking into account the costs of such litigation, its likelihood for success, the potential damages or settlement recovery, and the potential for exposure to counterclaims and defenses against RTI with respect to any RTI Patent Rights with respect to the applicable Licensed Product). In any such case, RTI will, wherever possible under applicable law, substitute Licensor as party plaintiff for purposes of pursuing any alleged infringer or party responsible for the alleged misappropriation, or as defendant for defending any Licensor Patent Rights or Licensor Intellectual Property. (e) Any recovery of damages or other sums recovered in a proceeding or action with regard to Licensor Patent Rights and the Licensor Intellectual Property Rights handled by a party pursuant to Section 1.2(c) oror Section 1.2(d) shall be applied first in satisfaction of any unreimbursed expenses and legal fees of the party bringing or defending the proceeding or action (the “Acting Party”) and next, if applicable, in satisfaction of the costs and expenses incurred by the other party in connection therewith, including reasonable attorneys’ fees involved in the prosecution and/or defense of any proceeding or action and, if after such reimbursement any funds shall remain from such damages or other sums recovered, the remaining recovery shall be retained one hundred percent (100%) by the Acting Party. No settlement, consent judgment or other voluntary final disposition of any suit regarding Licensor Patent Rights and the Licensor Intellectual Property may be entered into without the consent of the other party, which consent shall not be unreasonably withheld. (f) In any infringement or misappropriation suit that either party may institute to enforce Licensor Patent Rights and the Licensor Intellectual Property, or in any declaratory judgment action alleging invalidity, non‑infringement or non-misappropriation of any Licensor Patent Rights and the Licensor Intellectual Property brought against Licensor or RTI, the other party shall, at the request and expense of the party initiating or defending the suit or action, cooperate and assist in all reasonable respects, having its employees testify when requested and making available relevant records, papers, information, specimens and the like. In addition, upon the reasonable request of the party instituting an action under this Section 1.2, or if required by applicable law, the other party shall join such action and shall be represented using counsel of its own choice, at the requesting party’s expense; provided, that if RTI does not initiate an action hereunder on the advice of outside patent counsel, then Licensor may not require RTI to join such action but Licensor may have RTI join such action as an involuntary party, but RTI shall not be required to participate in such action.