Patent Prosecution and Enforcement. 7.1 Asubio shall retain ownership of the Asubio Patents, which Xxxxxx Patents cannot be assigned to a third party other than the Affiliate of Asubio without Xxxxxx’ advance [***] CERTAIN IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THE EXHIBIT BECAUSE IT BOTH (A) IS NOT MATERIAL AND (B) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. written consent (not to be unreasonably withheld); provided, however, that this provision shall not act to prohibit Asubio from granting other licenses under the Asubio Patents consistent with the provisions of Section 2 above. Xxxxxx shall also retain the sole right and the obligation to diligently use commercially reasonable efforts to file, prosecute and maintain the patent applications and patents included in the Asubio Patents that include claims encompassing the Compounds, including the filing of continuation applications, divisional applications, appeals, reissues and reexaminations where reasonably warranted. 7.2 Asubio shall keep Omeros timely informed of all actions reasonably considered to be important, including, without limitation, all application filings, search reports, examination reports, office actions, responses, amendments and appeal proceedings, that are taken in the filing, prosecution and maintenance of any patent or patent application included in the Asubio Patents that include claims encompassing the Compounds. Xxxxxx shall cooperate with Asubio in the course of the procedure for extension of the Asubio Patents, including any supplemental protection certificates. Should Asubio determine not to proceed with or to abandon the filing, prosecution or maintenance of any patent or patent application included in the Asubio Patents that claims any of the Compounds, Asubio shall provide Xxxxxx timely advance notice of its determination and Xxxxxx shall be entitled at its discretion and upon written notice to Xxxxxx to assume the right to file, prosecute and maintain such patent or patent application, at Xxxxxx’ sole expense, which such patent or patent application shall thereafter be excluded from the basis for payment of any Milestone Fee or Royalty to Asubio. 7.3 Xxxxxx shall own and retain ownership of the Compound Improvement Patents and the Field Improvement Patents, which Compound Improvement Patents and Field Improvement Patents cannot be assigned to a third party other than an Affiliate of Xxxxxx without Xxxxxx’s advance written consent (not to be unreasonably withheld). Xxxxxx shall also retain the sole right and the obligation to diligently use commercially reasonable efforts to file, prosecute and maintain the patent applications and patents included in the Compound Improvement Patents and the Field Improvement Patents, including the filing of continuation applications, divisional applications, appeals, reissues and reexaminations where reasonably warranted. 7.4 Should Omeros determine not to proceed with or to abandon the filing, prosecution or maintenance of any patent or patent application included in the Compound Improvement Patents or the Field Improvement Patents, Xxxxxx shall provide Asubio timely advance notice of its determination and Asubio shall be entitled at its discretion and upon written notice to Xxxxxx to assume the right to file, prosecute and maintain such patent or patent application, at Asubio’s sole expense. 7.5 Whenever either party becomes aware of the possible infringement of the Asubio Patents, the Compound Improvement Patents or the Field Improvement Patents by a third party, such party shall promptly notify the other party of any such infringement and provide such other party with any available evidence of such infringement. 7.6 Asubio shall have the first right, but not the obligation, to bring any suit or action for infringement of the Asubio Patents. Any infringement action brought by Xxxxxx shall be solely at Asubio’s expense and in such actions in which Xxxxxx has not elected to participate and share in the expenses, Asubio shall have no duty to account to Xxxxxx for any award, settlement or any other recovery resulting from such enforcement action. Xxxxxx shall provide reasonable assistance at Xxxxxx’s reasonable expense in the prosecution of such suit or action. Xxxxxx shall have the right, but not the obligation, at its cost to join as a party in any infringement action brought by Xxxxxx. In the event that monetary damages are awarded or obtained by Xxxxxx whether by judgment, award, decree, settlement or otherwise, as a result of such enforcement action brought by ASB in which Xxxxxx joins as a party, the money actually received shall be divided appropriately between Xxxxxx and Xxxxxx with reference to the relative monetary injury suffered by the party hereto by reason of the infringement, after first deducting the expenses incurred by Xxxxxx and Xxxxxx in filing, prosecuting, and maintaining such suit or action. Asubio shall not settle any such action in any manner that conflicts with Xxxxxx’ rights in the Asubio Patents, without the prior written consent of Xxxxxx (which shall not be unreasonably withheld). 7.7 In the event that Xxxxxx fails to or elects not to commence any infringement suit or action under Subsection 7.6, Xxxxxx shall have the sole right in its discretion to enforce, in its name or Xxxxxx’s name, the Asubio Patents against any third party that infringes one or more claims of the Asubio Patent by the use, manufacture, offering for sale or sale of a product that competes with a Product in the Field or that is a generic or reformulated version of a Product. Any such enforcement action in accordance with this Subsection 7.7 shall be undertaken at Omeros’ sole cost and Xxxxxx shall have no duty to account to Asubio for any award, settlement or any other recovery resulting from such enforcement action. Asubio shall provide reasonable assistance requested by Xxxxxx in connection with such enforcement action at Omeros’ reasonable expense. Asubio shall have the right, but not the obligation, at its cost to join as a party in any infringement action brought by Xxxxxx. Xxxxxx shall not settle such action in any manner that conflicts with Xxxxxx’s rights in the Asubio Patents without the prior written consent of Asubio (which shall not be unreasonably withheld). 7.8 Except as expressly set forth in Section 2 or elsewhere in this Agreement, neither party grants any license under its preexisting or independently created or obtained intellectual property rights to the other party. 7.9 Each party shall execute and cause its employees and agents to execute any assignment, declaration or other document required to effectuate the patent ownership, application, prosecution and enforcement provisions of this Section 7.
Appears in 1 contract
Samples: License Agreement (Omeros Corp)
Patent Prosecution and Enforcement. 7.1 Asubio shall retain ownership of the Asubio Patents, which Xxxxxx Asubio Patents cannot be assigned to a third party other than the Affiliate of Asubio without XxxxxxOmeros’ advance [***] CERTAIN IDENTIFIED INFORMATION HAS † DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN EXCLUDED FROM OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE EXHIBIT BECAUSE IT BOTH (A) IS NOT MATERIAL AND (B) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. COMMISSION written consent (not to be unreasonably withheld); provided, however, that this provision shall not act to prohibit Asubio from granting other licenses under the Asubio Patents consistent with the provisions of Section 2 above. Xxxxxx Asubio shall also retain the sole right and the obligation to diligently use commercially reasonable efforts to file, prosecute and maintain the patent applications and patents included in the Asubio Patents that include claims encompassing the Compounds, including the filing of continuation applications, divisional applications, appeals, reissues and reexaminations where reasonably warranted.
7.2 Asubio shall keep Omeros timely informed of all actions reasonably considered to be important, including, without limitation, all application filings, search reports, examination reports, office actions, responses, amendments and appeal proceedings, that are taken in the filing, prosecution and maintenance of any patent or patent application included in the Asubio Patents that include claims encompassing the Compounds. Xxxxxx Omeros shall cooperate with Asubio in the course of the procedure for extension of the Asubio Patents, including any supplemental protection certificates. Should Asubio determine not to proceed with or to abandon the filing, prosecution or maintenance of any patent or patent application included in the Asubio Patents that claims any of the Compounds, Asubio shall provide Xxxxxx Omeros timely advance notice of its determination and Xxxxxx Omeros shall be entitled at its discretion and upon written notice to Xxxxxx Asubio to assume the right to file, prosecute and maintain such patent or patent application, at XxxxxxOmeros’ sole expense, which such patent or patent application shall thereafter be excluded from the basis for payment of any Milestone Fee or Royalty to Asubio.
7.3 Xxxxxx Omeros shall own and retain ownership of the Compound Improvement Patents and the Field Improvement Patents, which Compound Improvement Patents and Field Improvement Patents cannot be assigned to a third party other than an Affiliate of Xxxxxx Omeros without XxxxxxAsubio’s advance written consent (not to be unreasonably withheld). Xxxxxx Omeros shall also retain the sole right and the obligation to diligently use commercially reasonable efforts to file, prosecute and maintain the patent applications and patents included in the Compound Improvement Patents and the Field Improvement Patents, including the filing of continuation applications, divisional applications, appeals, reissues and reexaminations where reasonably warranted.
7.4 Should Omeros determine not to proceed with or to abandon the filing, prosecution or maintenance of any patent or patent application included in the Compound Improvement Patents or the Field Improvement Patents, Xxxxxx Omeros shall provide Asubio timely advance notice of its determination and Asubio shall be entitled at its discretion and upon written notice to Xxxxxx Omeros to assume the right to file, prosecute and maintain such patent or patent application, at Asubio’s sole expense.
7.5 Whenever either party becomes aware of the possible infringement of the Asubio Patents, the Compound Improvement Patents or the Field Improvement Patents by a third party, such party shall promptly notify the other party of any such infringement and provide such other party with any available evidence of such infringement.
7.6 Asubio shall have the first right, but not the obligation, to bring any suit or action for † DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION infringement of the Asubio Patents. Any infringement action brought by Xxxxxx Asubio shall be solely at Asubio’s expense and in such actions in which Xxxxxx Omeros has not elected to participate and share in the expenses, Asubio shall have no duty to account to Xxxxxx Omeros for any award, settlement or any other recovery resulting from such enforcement action. Xxxxxx Omeros shall provide reasonable assistance at XxxxxxAsubio’s reasonable expense in the prosecution of such suit or action. Xxxxxx Omeros shall have the right, but not the obligation, at its cost to join as a party in any infringement action brought by XxxxxxAsubio. In the event that monetary damages are awarded or obtained by Xxxxxx Asubio whether by judgment, award, decree, settlement or otherwise, as a result of such enforcement action brought by ASB in which Xxxxxx Omeros joins as a party, the money actually received shall be divided appropriately between Xxxxxx Asubio and Xxxxxx Omeros with reference to the relative monetary injury suffered by the party hereto by reason of the infringement, after first deducting the expenses incurred by Xxxxxx Asubio and Xxxxxx Omeros in filing, prosecuting, and maintaining such suit or action. Asubio shall not settle any such action in any manner that conflicts with XxxxxxOmeros’ rights in the Asubio Patents, without the prior written consent of Xxxxxx Omeros (which shall not be unreasonably withheld).
7.7 In the event that Xxxxxx Asubio fails to or elects not to commence any infringement suit or action under Subsection 7.6, Xxxxxx Omeros shall have the sole right in its discretion to enforce, in its name or XxxxxxAsubio’s name, the Asubio Patents against any third party that infringes one or more claims of the Asubio Patent by the use, manufacture, offering for sale or sale of a product that competes with a Product in the Field or that is a generic or reformulated version of a Product. Any such enforcement action in accordance with this Subsection 7.7 shall be undertaken at Omeros’ sole cost and Xxxxxx Omeros shall have no duty to account to Asubio for any award, settlement or any other recovery resulting from such enforcement action. Asubio shall provide reasonable assistance requested by Xxxxxx Omeros in connection with such enforcement action at Omeros’ reasonable expense. Asubio shall have the right, but not the obligation, at its cost to join as a party in any infringement action brought by XxxxxxOmeros. Xxxxxx Omeros shall not settle such action in any manner that conflicts with XxxxxxAsubio’s rights in the Asubio Patents without the prior written consent of Asubio (which shall not be unreasonably withheld).
7.8 Except as expressly set forth in Section 2 or elsewhere in this Agreement, neither party grants any license under its preexisting or independently created or obtained intellectual property rights to the other party.
7.9 Each party shall execute and cause its employees and agents to execute any assignment, declaration or other document required to effectuate the patent ownership, application, prosecution and enforcement provisions of this Section 7.
Appears in 1 contract
Samples: License Agreement (Omeros Corp)
Patent Prosecution and Enforcement. 7.1 Asubio shall retain ownership of the Asubio Patents, which Xxxxxx Patents cannot be assigned to a third party other than the Affiliate of Asubio without Xxxxxx’ advance [***] CERTAIN IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THE EXHIBIT BECAUSE IT BOTH (A) IS NOT MATERIAL AND (B) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. written consent (not to be unreasonably withheld); provided, however, that this provision shall not act to prohibit Asubio from granting other licenses under the Asubio Patents consistent with the provisions of Section 2 above. Xxxxxx shall also retain the sole right 10.1 deCODE will promptly and the obligation to diligently use commercially reasonable efforts to vigorously file, prosecute and maintain the Licensed Patents at deCODE’s sole expense. deCODE will provide Celera with all substantive correspondence with each patent applications office and patents included all patent filings relating to Licensed Patents. deCODE will notify Celera if deCODE does not intend to file, prosecute or maintain any Licensed Patent at least thirty (30) days prior to any relevant deadline for filing or other action that would result in the Asubio Patents that include claims encompassing the Compoundsa loss of patent rights (a “Deadline”), including the filing of continuation applications, divisional applications, appeals, reissues and reexaminations where provide to Celera all information reasonably warranted.
7.2 Asubio shall keep Omeros timely informed of all actions related to such patent or patent application. If Celera receives such notice or if deCODE fails to take any action reasonably considered required with respect to be important, including, without limitation, all application filings, search reports, examination reports, office actions, responses, amendments and appeal proceedings, that are taken in the filing, prosecution and maintenance of any patent or patent application included in the Asubio Patents that include claims encompassing the Compounds. Xxxxxx shall cooperate with Asubio in the course of the procedure for extension of the Asubio PatentsLicensed Patent at least thirty (30) days prior to any Deadline, including any supplemental protection certificates. Should Asubio determine not to proceed with or to abandon the filing, prosecution or maintenance of any patent or patent application included in the Asubio Patents that claims any of the Compounds, Asubio shall provide Xxxxxx timely advance notice of its determination and Xxxxxx shall be entitled at its discretion and upon written notice to Xxxxxx to assume then Celera will have the right to file, prosecute and maintain such patent or patent applicationthe relevant Licensed Patent in the name, at Xxxxxx’ sole expenseand on behalf, of deCODE. In furtherance of the rights conferred by this Section 10.1, deCODE hereby delivers to Celera concurrently with the execution of this Agreement an irrevocable power of attorney in the form attached hereto as Attachment C, which such patent or patent application shall thereafter will be excluded from the basis for payment of any Milestone Fee or Royalty exercisable to Asubio.
7.3 Xxxxxx shall own and retain ownership of the Compound Improvement Patents and the Field Improvement Patents, which Compound Improvement Patents and Field Improvement Patents cannot be assigned to a third party other than an Affiliate of Xxxxxx without Xxxxxxeffectuate Celera’s advance written consent (not to be unreasonably withheld)rights under this Agreement. Xxxxxx shall also retain the sole right and the obligation to diligently use commercially reasonable efforts If Celera exercises its rights to file, prosecute and maintain the Licensed Patents under this Section 10.1, deCODE agrees to cooperate fully in the preparation, filing, and prosecution of any patent and patent applications and patents included in the Compound Improvement Patents Licensed Patents. Such cooperation includes, but is not limited to: (a) executing all papers and instruments, or requiring its employees or agents to execute such papers and instruments, so as to enable Celera to apply for and to prosecute patent applications in any country; and (b) promptly informing Celera of any matters coming to deCODE’s attention that may affect the Field Improvement Patentspreparation, including the filing of continuation applications, divisional applications, appeals, reissues and reexaminations where reasonably warranted.
7.4 Should Omeros determine not to proceed with or to abandon the filing, prosecution or maintenance of any patent or patent application included in the Compound Improvement Patents or the Field Improvement Patents, Xxxxxx shall provide Asubio timely advance notice of its determination and Asubio shall be entitled at its discretion and upon written notice to Xxxxxx to assume the right to file, prosecute and maintain such patent or patent application, at Asubio’s sole expenseapplications.
7.5 Whenever either party becomes 10.2 Celera will advise deCODE promptly upon becoming aware of the possible any infringement or suspected infringement of the Asubio Patents, the Compound Improvement Patents or the Field Improvement Licensed Patents by a third party, such party shall promptly notify the other party of any such infringement and provide such other party with any available evidence of such infringement.
7.6 Asubio shall have the first right, but not the obligation, to bring any suit or action for infringement of the Asubio Patents. Any infringement action brought by Xxxxxx shall be solely at Asubio’s expense and in such actions in which Xxxxxx has not elected to participate and share in the expenses, Asubio shall have no duty to account to Xxxxxx for any award, settlement or any other recovery resulting from such enforcement action. Xxxxxx shall provide reasonable assistance at Xxxxxx’s reasonable expense in the prosecution of such suit or action. Xxxxxx shall have the right, but not the obligation, at its cost to join as a party in any infringement action brought by XxxxxxLicensed Field. In the event that monetary damages are awarded or obtained of suspected infringement of any of Licensed Patents by Xxxxxx whether by a third party in the Licensed Field, deCODE will promptly, within its reasonable business judgment, awardtake all actions reasonably required to restrain such infringement. deCODE may investigate, decreeinstitute and prosecute reasonable legal proceedings or negotiations at its own expense and has the right to retain all damages and proceeds recovered through its efforts, in settlement or otherwisethrough a judgment, in all such proceedings or negotiations. Celera will continue to make all payments due to deCODE pursuant to this Agreement so long as deCODE is reasonably enforcing its legal rights with respect to any such infringer.
10.3 If deCODE has not initiated an action for infringement against a result third party identified in writing by Celera or otherwise abated the identified infringement within ninety (90) days after such notice, and if such alleged infringement is in competition with sales of Licensed Products by Celera or its Affiliates or distributors, then (i) Celera will have the right to file and control suit against such infringer, in the name of deCODE and at Celera’s expense and for Celera’s benefit, (ii) deCODE will consent to be a party and to cooperate with Celera in any such suit brought by Celera pursuant to this Section 10.3 (provided, however, that Celera shall not enter into any settlement that deprives deCODE of any rights or imposes on deCODE any obligations without deCODE’s prior written consent), and (iii) Celera will be permanently relieved of the payment of royalties that might accrue pursuant to Section 4.3, and of milestone payments that might otherwise become payable, during pendency of any such suit with respect to each patent in each country that is the subject of such enforcement action brought by ASB in which Xxxxxx joins as a party, the money actually received shall be divided appropriately between Xxxxxx and Xxxxxx with reference to the relative monetary injury suffered by the party hereto by reason of the infringement, after first deducting the expenses incurred by Xxxxxx and Xxxxxx in filing, prosecuting, and maintaining such suit or action. Asubio shall not settle any such action in any manner that conflicts with Xxxxxx’ rights in the Asubio Patents, without the prior written consent of Xxxxxx (which shall not be unreasonably withheld)suit.
7.7 In the event that Xxxxxx fails to or elects not to commence any infringement suit or action under Subsection 7.6, Xxxxxx shall have the sole right in its discretion to enforce, in its name or Xxxxxx’s name, the Asubio Patents against any third party that infringes one or more claims of the Asubio Patent by the use, manufacture, offering for sale or sale of a product that competes with a Product in the Field or that is a generic or reformulated version of a Product. Any such enforcement action in accordance with this Subsection 7.7 shall be undertaken at Omeros’ sole cost and Xxxxxx shall have no duty to account to Asubio for any award, settlement or any other recovery resulting from such enforcement action. Asubio shall provide reasonable assistance requested by Xxxxxx in connection with such enforcement action at Omeros’ reasonable expense. Asubio shall have the right, but not the obligation, at its cost to join as a party in any infringement action brought by Xxxxxx. Xxxxxx shall not settle such action in any manner that conflicts with Xxxxxx’s rights in the Asubio Patents without the prior written consent of Asubio (which shall not be unreasonably withheld).
7.8 Except as expressly set forth in Section 2 or elsewhere in this Agreement, neither party grants any license under its preexisting or independently created or obtained intellectual property rights to the other party.
7.9 Each party shall execute and cause its employees and agents to execute any assignment, declaration or other document required to effectuate the patent ownership, application, prosecution and enforcement provisions of this Section 7.
Appears in 1 contract
Patent Prosecution and Enforcement. 7.1 Asubio 4.1 As between Incyte and GHI only, Incyte shall retain ownership of the Asubio Patents, which Xxxxxx Patents cannot be assigned to a third party other than the Affiliate of Asubio without Xxxxxx’ advance [***] CERTAIN IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THE EXHIBIT BECAUSE IT BOTH (A) IS NOT MATERIAL AND (B) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. written consent (not to be unreasonably withheld); provided, however, that this provision shall not act to prohibit Asubio from granting other licenses under the Asubio Patents consistent with the provisions of Section 2 above. Xxxxxx shall also retain have the sole right and the obligation to diligently use commercially reasonable efforts to file, prosecute and maintain the patent applications and patents included (in the Asubio Patents that include claims encompassing the Compounds, including the filing of continuation applications, divisional applications, appeals, reissues and reexaminations where reasonably warranted.
7.2 Asubio shall keep Omeros timely informed of all actions reasonably considered to be important, including, without limitation, all application filings, search reports, examination reports, office actions, responses, amendments and appeal proceedings, that are taken in the filing, prosecution and maintenance of any patent or patent application included in the Asubio Patents that include claims encompassing the Compounds. Xxxxxx shall cooperate with Asubio in the course of the procedure for extension of the Asubio Patents, including any supplemental protection certificates. Should Asubio determine not to proceed with or to abandon the filing, prosecution or maintenance of any patent or patent application included in the Asubio Patents that claims any of the Compounds, Asubio shall provide Xxxxxx timely advance notice of its determination and Xxxxxx shall be entitled at its discretion and upon written notice to Xxxxxx to assume the right to file, prosecute and maintain such patent or patent application, at Xxxxxx’ sole expense, which such patent or patent application shall thereafter be excluded from the basis for payment of any Milestone Fee or Royalty to Asubio.
7.3 Xxxxxx shall own and retain ownership of the Compound Improvement Patents and the Field Improvement Patents, which Compound Improvement Patents and Field Improvement Patents cannot be assigned to a third party other than an Affiliate of Xxxxxx without Xxxxxx’s advance written consent (not to be unreasonably withhelddiscretion). Xxxxxx shall also retain the sole right and the obligation to diligently use commercially reasonable efforts to file, prosecute and maintain the patent applications and patents included in the Compound Improvement Patents and the Field Improvement Patents, including the filing of continuation applications, divisional applications, appeals, reissues and reexaminations where reasonably warranted.
7.4 Should Omeros determine not to proceed with or to abandon the filing, prosecution or maintenance of any patent or patent application included in the Compound Improvement Patents or the Field Improvement Patents, Xxxxxx shall provide Asubio timely advance notice of its determination and Asubio shall be entitled at its discretion and upon written notice to Xxxxxx to assume the right to file, prosecute and maintain such patent or patent application, at Asubio’s sole expense.
7.5 Whenever either party becomes aware of the possible infringement of the Asubio Patents, the Compound Improvement Patents or the Field Improvement Patents by a third party, such party shall promptly notify the other party of any such infringement and provide such other party with any available evidence of such infringement.
7.6 Asubio shall have the first right, but not the obligation, to bring control the preparation, filing, prosecution, maintenance and enforcement of the Patent Rights. Incyte shall consult with GHI no less than once in any suit calendar quarter regarding its filing and prosecution strategies with respect to the Cancer Marker Patent Rights, including with respect to all decisions regarding the filing of patent applications directed to the Cancer Marker Patent Rights in jurisdictions outside of the United States. Prior to abandoning any patent applications included in the Cancer Marker Patent Rights, or forefeiting potential patent claims directed to any nucleic acid or protein sequence included in the Cancer Marker Patent Rights, Incyte shall notify GHI and provide GHI with a reasonable opportunity to assume responsibility for the prosecution of any such application or patent claims, at GHI’s expense. Upon issuance of any patents included within the Cancer Marker Patent Rights, Incyte shall pay all maintenance fees required to maintain such patents. Incyte shall remain the owner of record for all such Cancer Marker Patent Rights. GHI shall execute such documents and take such additional steps as Incyte may reasonably request to enable Incyte to exercise its rights and to perform its obligations under this Section 4.1.
4.2 Incyte shall have no obligation to take any action for whether through the institution of legal proceedings or otherwise with respect to any infringement or suspected infringement of the Asubio PatentsPatent Rights. Any infringement Without prejudice to any separate agreement that may be or have been reached between the parties, if Incyte in its sole discretion decides to take any such action brought by Xxxxxx it shall be solely do so at Asubio’s expense its own cost, and in such actions in which Xxxxxx has not elected to participate and share in the expenses, Asubio GHI shall have no duty claim to account to Xxxxxx for any award, settlement or any other recovery resulting from such enforcement actionsums received by Incyte. Xxxxxx GHI shall provide reasonable assistance to Incyte at Xxxxxx’s reasonable no out-of-pocket expense in the prosecution of such suit or action. Xxxxxx shall have the right, but not the obligation, at its cost to join as a party in any infringement action brought by XxxxxxGHI. In the event Incyte declines to take any action with respect to any infringement or suspected infringement of the Montefiore Patent Rights or the Cancer Marker Patent Rights, and such infringement results in commercial loss in value of GHI’s rights under the applicable Patent Rights, Incyte shall take reasonable steps to enable GHI to sxx to terminate the infringement at GHI’s expense, provided that monetary damages are awarded GHI shall defend, indemnify Incyte and the owner of the Montefiore Patent Rights, if applicable, against any cross-claims or obtained counterclaims asserted by Xxxxxx whether by judgment, award, decree, settlement or otherwise, as a result of the defendant in any such enforcement action brought by ASB in which Xxxxxx joins GHI. If GHI recovers any amounts as a party, the money actually received shall be divided appropriately between Xxxxxx and Xxxxxx with reference to the relative monetary injury suffered by the party hereto by reason consequence of the infringementfiling of such infringement suits, after GHI shall first deducting be entitled to recover its fees for bringing the expenses incurred by Xxxxxx and Xxxxxx in filingaction or actions, prosecutingamounts owed to Incyte’s licensors, if any, shall then be deducted, and maintaining such suit or action. Asubio GHI shall not settle pay to Incyte *** percent (***%) of any such action in any manner that conflicts with Xxxxxx’ rights in the Asubio Patents, without the prior written consent of Xxxxxx (which shall not be unreasonably withheld)remaining recovery.
7.7 In the event that Xxxxxx fails to or elects not to commence any infringement suit or action under Subsection 7.6, Xxxxxx shall have the sole right in its discretion to enforce, in its name or Xxxxxx’s name, the Asubio Patents against any third party that infringes one or more claims of the Asubio Patent by the use, manufacture, offering for sale or sale of a product that competes with a Product in the Field or that is a generic or reformulated version of a Product. Any such enforcement action in accordance with this Subsection 7.7 shall be undertaken at Omeros’ sole cost and Xxxxxx shall have no duty to account to Asubio for any award, settlement or any other recovery resulting from such enforcement action. Asubio shall provide reasonable assistance requested by Xxxxxx in connection with such enforcement action at Omeros’ reasonable expense. Asubio shall have the right, but not the obligation, at its cost to join as a party in any infringement action brought by Xxxxxx. Xxxxxx shall not settle such action in any manner that conflicts with Xxxxxx’s rights in the Asubio Patents without the prior written consent of Asubio (which shall not be unreasonably withheld).
7.8 Except as expressly set forth in Section 2 or elsewhere in this Agreement, neither party grants any license under its preexisting or independently created or obtained intellectual property rights to the other party.
7.9 Each party shall execute and cause its employees and agents to execute any assignment, declaration or other document required to effectuate the patent ownership, application, prosecution and enforcement provisions of this Section 7.
Appears in 1 contract
Patent Prosecution and Enforcement. 7.1 Asubio 5.1 BURF and LICENSEE shall retain ownership cooperate fully in the preparation, filing, prosecution, maintenance and defense of the Asubio PatentsPATENT RIGHTS and of all patents and patent applications licensed to LICENSEE hereunder, which Xxxxxx Patents cannot be assigned executing all papers and instruments or requiring inventors to a third party other than the Affiliate of Asubio without Xxxxxx’ advance [***] CERTAIN IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THE EXHIBIT BECAUSE IT BOTH (A) IS NOT MATERIAL AND (B) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. written consent (not execute such papers and instruments so as to be unreasonably withheld); providedenable BURF to apply for, however, that this provision shall not act to prohibit Asubio from granting other licenses under the Asubio Patents consistent with the provisions of Section 2 above. Xxxxxx shall also retain the sole right and the obligation to diligently use commercially reasonable efforts to file, prosecute and to maintain the patent applications and patents included in BURF's name in any country, using counsel of LICENSEE's selection. Each party shall provide to the Asubio Patents that include claims encompassing other prompt notice as to all matters which come to its attention and which may affect the Compoundspreparation, including the filing filing, prosecution, maintenance or defense of continuation applications, divisional applications, appeals, reissues and reexaminations where reasonably warrantedany such patent applications or patents.
7.2 Asubio 5.2 LICENSEE shall keep Omeros timely informed of reimburse BURF for all actions reasonably considered to be importantreasonable expenses incurred by BURF for the preparation, including, without limitation, all application filings, search reports, examination reports, office actions, responses, amendments and appeal proceedings, that are taken in the filing, prosecution and maintenance of any patent PATENT RIGHTS except those previously reimbursed by LICENSEE or patent application included third parties. LICENSEE shall pay BURF within thirty (30) days of receipt of invoices from BURF. Late payment of these amounts shall be subject to interest charges at an annual rate of one and one-half percent (1 1/2%) in excess of [*] = Information redacted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. the prime rate published from time to time in the Asubio Patents that include claims encompassing Wall Street Journal. BURF shall take responsibility for the Compounds. Xxxxxx preparation, filing, prosecution and maintenance of such patent applications and patents and shall cooperate with Asubio in the course furnish to LICENSEE copies of the procedure for extension of the Asubio Patentsdocuments relevant to any such preparation, including any supplemental protection certificates. Should Asubio determine not to proceed with or to abandon the filing, prosecution or maintenance maintenance. If BURF fails promptly to take any action reasonably requested by LICENSEE and LICENSEE reasonably determines that such failure will materially and adversely affect the PATENT RIGHTS, LICENSEE, in the name and as the agent of any BURF, may take all such action.
5.3 If LICENSEE elects to no longer pay the expenses of a patent application or patent application included in the Asubio Patents that claims any of the Compoundswithin PATENT RIGHTS, Asubio LICENSEE shall provide Xxxxxx timely advance notice of notify BURF not less than sixty (60) days prior to such action and shall thereby surrender its determination and Xxxxxx shall be entitled at its discretion and upon written notice to Xxxxxx to assume the right to file, prosecute and maintain such patent or patent application, at Xxxxxx’ sole expense, which rights under such patent or patent application shall thereafter be excluded from the basis for payment of any Milestone Fee or Royalty to Asubioon a country by country basis.
7.3 Xxxxxx shall own and retain ownership of the Compound Improvement Patents and the Field Improvement Patents, which Compound Improvement Patents and Field Improvement Patents cannot be assigned to a third party other than an Affiliate of Xxxxxx without Xxxxxx’s advance written consent (not to be unreasonably withheld). Xxxxxx shall also retain the sole right and the obligation to diligently use commercially reasonable efforts to file, prosecute and maintain the patent applications and patents included in the Compound Improvement Patents and the Field Improvement Patents, including the filing of continuation applications, divisional applications, appeals, reissues and reexaminations where reasonably warranted.
7.4 Should Omeros determine not to proceed with or to abandon the filing, prosecution or maintenance of any patent or patent application included in the Compound Improvement Patents or the Field Improvement Patents, Xxxxxx shall provide Asubio timely advance notice of its determination and Asubio shall be entitled at its discretion and upon written notice to Xxxxxx to assume the right to file, prosecute and maintain such patent or patent application, at Asubio’s sole expense.
7.5 Whenever either party becomes aware of the possible infringement of the Asubio Patents, the Compound Improvement Patents or the Field Improvement Patents by a third party, such party shall promptly notify the other party of any such infringement and provide such other party with any available evidence of such infringement.
7.6 Asubio shall have the first right, but not the obligation, to bring any suit or action for infringement of the Asubio Patents. Any infringement action brought by Xxxxxx shall be solely at Asubio’s expense and in such actions in which Xxxxxx has not elected to participate and share in the expenses, Asubio shall have no duty to account to Xxxxxx for any award, settlement or any other recovery resulting from such enforcement action. Xxxxxx shall provide reasonable assistance at Xxxxxx’s reasonable expense in the prosecution of such suit or action. Xxxxxx shall have the right, but not the obligation, at its cost to join as a party in any infringement action brought by Xxxxxx. In the event that monetary damages are awarded or obtained by Xxxxxx whether by judgment, award, decree, settlement or otherwise, as a result of such enforcement action brought by ASB in which Xxxxxx joins as a party, the money actually received shall be divided appropriately between Xxxxxx and Xxxxxx with reference to the relative monetary injury suffered by the party hereto by reason of the infringement, after first deducting the expenses incurred by Xxxxxx and Xxxxxx in filing, prosecuting, and maintaining such suit or action. Asubio shall not settle any such action in any manner that conflicts with Xxxxxx’ rights in the Asubio Patents, without the prior written consent of Xxxxxx (which shall not be unreasonably withheld).
7.7 In the event that Xxxxxx fails to or elects not to commence any infringement suit or action under Subsection 7.6, Xxxxxx shall have the sole right in its discretion to enforce, in its name or Xxxxxx’s name, the Asubio Patents against any third party that infringes one or more claims of the Asubio Patent by the use, manufacture, offering for sale or sale of a product that competes with a Product in the Field or that is a generic or reformulated version of a Product. Any such enforcement action in accordance with this Subsection 7.7 shall be undertaken at Omeros’ sole cost and Xxxxxx shall have no duty to account to Asubio for any award, settlement or any other recovery resulting from such enforcement action. Asubio shall provide reasonable assistance requested by Xxxxxx in connection with such enforcement action at Omeros’ reasonable expense. Asubio shall have the right, but not the obligation, at its cost to join as a party in any infringement action brought by Xxxxxx. Xxxxxx shall not settle such action in any manner that conflicts with Xxxxxx’s rights in the Asubio Patents without the prior written consent of Asubio (which shall not be unreasonably withheld).
7.8 Except as expressly set forth in Section 2 or elsewhere in this Agreement, neither party grants any license under its preexisting or independently created or obtained intellectual property rights to the other party.
7.9 Each party shall execute and cause its employees and agents to execute any assignment, declaration or other document required to effectuate the patent ownership, application, prosecution and enforcement provisions of this Section 7.
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