PATENT PROSECUTION AND LITIGATION. 11.01. EXIGENT agrees to keep SBCL promptly and fully informed of the course of patent prosecution or other proceedings. SBCL shall hold all information disclosed to it under this section as confidential subject to the provisions of Sections 9.02 and 9.03. 11.02. Each party shall have and retain sole and exclusive title to all inventions, discoveries and know-how which are made, conceived, reduced to practice or generated by its respective employees, agents, or other persons acting under its authority in the course of or as a result of this Agreement. Ownership in all such inventions, discoveries and know-how made, conceived, reduced to practice or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of this Agreement will be negotiated on a case by case basis, and in the event there is no agreement from such negotiation, such ownership shall be divided equally. Except as expressly provided in this Agreement or as subsequently negotiated pursuant to the foregoing sentence, each joint owner may make, use, sell, keep, license, assign, or mortgage such jointly owned inventions, discoveries and know-how, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and know-how, without the consent of and without accounting to the other joint owner. Notwithstanding anything above in this paragraph, if (i) SBCL uses its invention or discovery to modify EXIGENT TECHNOLOGY or (ii) EXIGENT expresses an interest in an exclusive license to SBCL's interest in any joint invention (subject to preexisting rights in THIRD PARTIES), then SBCL and EXIGENT shall in good faith negotiate a license of SBCL's invention or discovery or SBCL's interest in such joint invention, as the case may be, to EXIGENT. 11.03. SBCL shall have the right to assume responsibility for any PATENT or any part of a PATENT which EXIGENT intends to abandon or otherwise cause or allow to be forfeited. EXIGENT shall give SBCL reasonable written notice prior to abandonment or other forfeiture of any PATENT or any part of a PATENT so as to permit SBCL to exercise its rights under this Section. 11.04. In the event of the institution of any suit by a THIRD PARTY against EXIGENT, SBCL or its sublicensees or distributors for patent infringement involving the manufacture, use, sale, distribution or marketing of PRODUCT anywhere in the TERRITORY, the party sued shall promptly notify the other party in writing. If named as a defendant in such suit, SBCL shall have the right but not the obligation to defend such suit at its own expense and shall allow EXIGENT to participate therein if it does assume such defense. If both parties are sued, EXIGENT shall have the right to control the defense thereof EXIGENT and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party. 11.05. In the event that EXIGENT or SBCL becomes aware of actual or threatened infringement of a PATENT anywhere in the TERRITORY, that party shall promptly notify the other party in writing. EXIGENT shall have the first right but not the obligation to bring, at its own expense, an infringement action against any THIRD PARTY and to use SBCL's name in connection therewith and to name SBCL as a party thereto. If EXIGENT does not commence a particular infringement action within ninety (90) days after receipt of the notice of infringement, then SBCL, after providing reasonable advance notice to EXIGENT in writing, shall be entitled to bring such infringement action at its own expense. The party conducting such action shall have full control over its conduct, including settlement thereof subject to Section 11.07. In any event, EXIGENT and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party. 11.06. In any action brought pursuant to Section 11.05 where the interests of SBCL and EXIGENT are adverse, the party bringing the action shall indemnify the other party, its officers, directors, shareholders, employees, agents, successors and assigns from any loss, damage or liability, including for attorney's fees and costs, which may result from defending against claims, counterclaims or crossclaims asserted by a defendant, except to the extent that such losses, damages or liabilities result from the negligence or willful misconduct of the other party. 11.07. In a joint action by EXIGENT and SBCL, each shall recover their respective actual out -of-pocket expenses, or equitable proportions thereof, associated with any litigation or settlement thereof from any recovery made by any party. 11.08. The parties shall keep one another informed of the status of and of their respective activities regarding any litigation or settlement thereof concerning PRODUCT, provided however that no settlement or consent judgment or other voluntary final disposition of any suit defended or action brought by a party pursuant to this Section 11 may be entered into without the consent of the other party if such settlement would require the other party to be subject to an injunction or to make a monetary payment or would otherwise adversely affect the other party's rights under this Agreement. No party withholding consent from a proposed settlement shall be indemnified for any amount above the amount at which it could have settled under the proposed settlement. 11.09. At SBCL's request, EXIGENT shall seek to obtain SPC's or authorize SBCL to obtain SPC's on EXIGENT's behalf. Where SBCL holds a relevant Marketing Authorization, SBCL shall at EXIGENT's request provide to EXIGENT a copy of said Marketing Authorization and any information necessary for the purpose of obtaining an SPC.
Appears in 2 contracts
Samples: Distribution and Supply Agreement (Careside Inc), Distribution and Supply Agreement (Careside Inc)
PATENT PROSECUTION AND LITIGATION. 11.01. EXIGENT agrees to keep SBCL promptly and fully informed of the course of patent prosecution or other proceedings. SBCL shall hold all information disclosed to it under this section as confidential subject to the provisions of Sections 9.02 and 9.03.
11.027.01. Each party shall have and retain sole and exclusive title to all inventions, inventions or discoveries conceived by and know-how which are madehow, conceivedincluding but not limited to any KNOW-HOW, reduced to practice made or generated by by, its respective employees, agents, or other persons acting under its authority in the course of or as a result of this AgreementAGREEMENT. Ownership Each party shall own a fifty percent (50%) undivided interest in all such inventions, discoveries and know-how made, conceived, reduced to practice or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of this Agreement will be negotiated on AGREEMENT. However, for inventions, discoveries and know-how jointly owned by the parties, ADOLOR shall have a case by case basis, and royalty-free exclusive license with the right to sublicense in the event there is no agreement from such negotiation, such ownership ADOLOR FIELD and SB shall be divided equallyhave a royalty-free exclusive license with the right to sublicense in the FIELD. Except as expressly provided in this Agreement or as subsequently negotiated pursuant AGREEMENT, and to the foregoing sentenceextent legally permitted, each joint owner may make, use, sell, keep, license, assign, or mortgage such jointly owned inventions, discoveries and know-how, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and know-how, without the consent of and without accounting to the other joint owner. Notwithstanding anything above in this paragraph, if (i) SBCL uses its invention or discovery to modify EXIGENT TECHNOLOGY or (ii) EXIGENT expresses an interest in an exclusive license to SBCL's interest in any joint invention (subject to preexisting rights in THIRD PARTIES), then SBCL and EXIGENT shall in good faith negotiate a license of SBCL's invention or discovery or SBCL's interest in such joint invention, as the case may be, to EXIGENT.
11.03. SBCL shall have (a) ADOLOR warrants and represents that it has disclosed to SB the right to assume responsibility for any PATENT or any part complete texts of a PATENT which EXIGENT intends to abandon all PATENTS filed by or otherwise cause or allow to be forfeited. EXIGENT shall give SBCL reasonable written notice prior to abandonment or other forfeiture of any PATENT or any part of a PATENT so controlled by ADOLOR as to permit SBCL to exercise its rights under this Section.
11.04. In the event of the EFFECTIVE DATE in the TERRITORY (including, but not limited to, method and use claims relating to PRODUCT) as well as all information received as of the EFFECTIVE DATE concerning the institution or possible institution of any suit by a THIRD PARTY against EXIGENTinterference, SBCL opposition, re-examination, reissue, revocation, nullification or its sublicensees or distributors for patent infringement any official proceeding involving the manufacture, use, sale, distribution or marketing of PRODUCT anywhere in the TERRITORY, the party sued shall promptly notify the other party in writing. If named as a defendant in such suit, SBCL shall have the right but not the obligation to defend such suit at its own expense and shall allow EXIGENT to participate therein if it does assume such defense. If both parties are sued, EXIGENT shall have the right to control the defense thereof EXIGENT and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party.
11.05. In the event that EXIGENT or SBCL becomes aware of actual or threatened infringement of a PATENT anywhere in the TERRITORY, ADOLOR further warrants and represents that party shall promptly notify it will disclose to SB the other party complete texts of all PATENTS filed by or otherwise controlled by ADOLOR after the EFFECTIVE DATE in writingthe TERRITORY as well as all information received after the EFFECTIVE DATE concerning the institution or possible institution any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT (the "Administrative Proceedings") anywhere in the TERRITORY. EXIGENT SB shall have the first right but not the obligation to bring, at its own expense, an infringement action against any THIRD PARTY review all such PATENTS and other proceedings relating thereto and make recommendations to use SBCL's name in connection therewith ADOLOR concerning them and their conduct. ADOLOR agrees to name SBCL as a party thereto. If EXIGENT does not commence a particular infringement action within ninety (90) days after receipt of the notice of infringement, then SBCL, after providing reasonable advance notice to EXIGENT in writing, shall be entitled to bring such infringement action at its own expense. The party conducting such action shall have full control over its conduct, including settlement thereof subject to Section 11.07. In any event, EXIGENT keep SB promptly and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party.
11.06. In any action brought pursuant to Section 11.05 where the interests of SBCL and EXIGENT are adverse, the party bringing the action shall indemnify the other party, its officers, directors, shareholders, employees, agents, successors and assigns from any loss, damage or liability, including for attorney's fees and costs, which may result from defending against claims, counterclaims or crossclaims asserted by a defendant, except to the extent that such losses, damages or liabilities result from the negligence or willful misconduct of the other party.
11.07. In a joint action by EXIGENT and SBCL, each shall recover their respective actual out -of-pocket expenses, or equitable proportions thereof, associated with any litigation or settlement thereof from any recovery made by any party.
11.08. The parties shall keep one another fully informed of the status course of patent prosecution or other proceedings including by providing SB with copies of substantive communications, search reports and THIRD PARTY observations submitted to or received from patent offices throughout the TERRITORY. SB shall provide such patent consultation to ADOLOR at no cost to ADOLOR. SB shall hold all information disclosed to it under this Paragraph 7.02 as the confidential information of their respective activities regarding any litigation ADOLOR subject to the provisions of Paragraphs 6.03 and 6.04.
(b) On or settlement thereof concerning PRODUCTafter the date the milestone referred to in Paragraph 3.01 (b)(2) (`**') has been achieved in accordance with the terms of Paragraph 3.01(3), SB shall assist in the defraying of out of pocket costs incurred thereafter by ADOLOR relating to the preparation, prosecution, Administrative Proceeding and maintenance of PATENTS ("Patent Costs") subject to, and in accordance with, the following terms:
(i) the Patent Costs must first be approved by SB (such approval not to be unreasonably withheld) prior to being incurred;
(ii) subject to Paragraph 7.02(b)(iii), if such Patent Costs are approved in accordance with Paragraph 7.02
(b) (i), then SB and ADOLOR shall each pay fifty percent (50%) of the total amount of such Patent Costs provided however that no settlement if PATENTS which are the subject matter of such Patent Costs are, or consent judgment have been, licensed to one or other voluntary final disposition of any suit defended or action brought by a party pursuant to this Section 11 may be entered into without the consent more THIRD PARTIES outside of the other party if such settlement would require the other party to be subject to an injunction or to make a monetary payment or would otherwise adversely affect the other partyFIELD, then SB's rights obligation under this Agreement. No party withholding consent from a proposed settlement Paragraph 7.02(b)(ii) to pay fifty percent (50%) of the total amount of such Patent Costs ("the SB Total Contribution") shall be indemnified for any reduced such that SB's amended contribution ("the SB Reduced Contribution") then equates to **=Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. an amount above equivalent to [the amount at which it could have settled under SB Total Contribution] divided by (the proposed settlementnumber of such THIRD PARTIES plus one].
11.09. At SBCL's request, EXIGENT shall seek to obtain SPC's or authorize SBCL to obtain SPC's on EXIGENT's behalf. Where SBCL holds a relevant Marketing Authorization, SBCL shall at EXIGENT's request provide to EXIGENT a copy of said Marketing Authorization and any information necessary for the purpose of obtaining an SPC.
Appears in 2 contracts
Samples: License Agreement (Adolor Corp), License Agreement (Adolor Corp)
PATENT PROSECUTION AND LITIGATION. 11.01. EXIGENT agrees to keep SBCL promptly and fully informed of the course of patent prosecution or other proceedings. SBCL shall hold all information disclosed to it under this section as confidential subject to the provisions of Sections 9.02 and 9.03.
11.02. 9.1 Each party shall have and retain sole and exclusive title to all inventions, discoveries and knowKNOW-how HOW which are made, conceived, reduced to practice or generated by its respective employees, agents, or other persons acting under its authority in the course of or as a result of this AgreementAGREEMENT. Ownership Each party shall own a fifty percent (50%) undivided interest in all such inventions, discoveries and knowKNOW-how HOW made, conceived, reduced to practice or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of this Agreement will be negotiated on a case by case basis, and in the event there is no agreement from such negotiation, such ownership shall be divided equallyAGREEMENT. Except as expressly provided in this Agreement or as subsequently negotiated pursuant to the foregoing sentenceAGREEMENT, each joint owner may make, use, sell, keep, license, assign, or mortgage such jointly owned inventions, discoveries and knowKNOW-howHOW, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and knowKNOW-howHOW, without the consent of and without accounting to the other joint owner. Notwithstanding anything above in this paragraph, if (i) SBCL uses its invention or discovery to modify EXIGENT TECHNOLOGY or (ii) EXIGENT expresses an interest in an exclusive license to SBCL's interest in any joint invention (subject to preexisting rights in THIRD PARTIES), then SBCL and EXIGENT shall in good faith negotiate a license of SBCL's invention or discovery or SBCL's interest in such joint invention, as the case may be, to EXIGENT.
11.03. SBCL shall 9.2 TBC shall, at its expense, have the right to assume responsibility for any PATENT filing, prosecution and maintenance of all PATENTS which it owns in the TERRITORY. TBC shall disclose to SB the complete texts of all PATENTS filed by TBC in the TERRITORY which relate to PRODUCT as well as all information received concerning the institution or any part of a PATENT which EXIGENT intends to abandon or otherwise cause or allow to be forfeited. EXIGENT shall give SBCL reasonable written notice prior to abandonment or other forfeiture of any PATENT or any part of a PATENT so as to permit SBCL to exercise its rights under this Section.
11.04. In the event of the possible institution of any suit by a THIRD PARTY against EXIGENTinterference, SBCL opposition, re-examination, reissue, revocation, nullification or its sublicensees or distributors for patent infringement any official proceeding involving the manufacture, use, sale, distribution or marketing of PRODUCT anywhere in the TERRITORY, the party sued shall promptly notify the other party in writing. If named as a defendant in such suit, SBCL shall have the right but not the obligation to defend such suit at its own expense and shall allow EXIGENT to participate therein if it does assume such defense. If both parties are sued, EXIGENT shall have the right to control the defense thereof EXIGENT and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party.
11.05. In the event that EXIGENT or SBCL becomes aware of actual or threatened infringement of a PATENT anywhere in the TERRITORY, that party shall promptly notify the other party in writing. EXIGENT SB shall have the first right but not the obligation to bring, at its own expense, an infringement action against any THIRD PARTY review all such pending applications and other proceedings and make recommendations to use SBCL's name in connection therewith TBC concerning them and their conduct. TBC agrees to name SBCL as a party thereto. If EXIGENT does not commence a particular infringement action within ninety (90) days after receipt of the notice of infringement, then SBCL, after providing reasonable advance notice to EXIGENT in writing, shall be entitled to bring such infringement action at its own expense. The party conducting such action shall have full control over its conduct, including settlement thereof subject to Section 11.07. In any event, EXIGENT keep SB promptly and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party.
11.06. In any action brought pursuant to Section 11.05 where the interests of SBCL and EXIGENT are adverse, the party bringing the action shall indemnify the other party, its officers, directors, shareholders, employees, agents, successors and assigns from any loss, damage or liability, including for attorney's fees and costs, which may result from defending against claims, counterclaims or crossclaims asserted by a defendant, except to the extent that such losses, damages or liabilities result from the negligence or willful misconduct of the other party.
11.07. In a joint action by EXIGENT and SBCL, each shall recover their respective actual out -of-pocket expenses, or equitable proportions thereof, associated with any litigation or settlement thereof from any recovery made by any party.
11.08. The parties shall keep one another fully informed of the status course of and of their respective activities regarding any litigation or settlement thereof concerning PRODUCT, provided however that no settlement or consent judgment patent prosecution or other voluntary final disposition proceedings including by providing SB with copies of any suit defended substantive communications, search reports and third party observations submitted to or action brought by a party pursuant received from patent offices throughout the TERRITORY. SB shall provide such patent consultation to TBC at no cost to TBC. SB shall hold all information disclosed to it under this Section 11 may be entered into without the consent of the other party if such settlement would require the other party to be section as confidential subject to an injunction or to make a monetary payment or would otherwise adversely affect the other party's rights under this Agreement. No party withholding consent from a proposed settlement shall be indemnified for any amount above the amount at which it could have settled under the proposed settlementprovisions of Paragraphs 9.03 and 9.04.
11.09. At SBCL's request, EXIGENT shall seek to obtain SPC's or authorize SBCL to obtain SPC's on EXIGENT's behalf. Where SBCL holds a relevant Marketing Authorization, SBCL shall at EXIGENT's request provide to EXIGENT a copy of said Marketing Authorization and any information necessary for the purpose of obtaining an SPC.
Appears in 1 contract
Samples: Product Development, License and Copromotion Agreement (Texas Biotechnology Corp /De/)
PATENT PROSECUTION AND LITIGATION. 11.01. EXIGENT agrees to keep SBCL promptly and fully informed of the course of patent prosecution or other proceedings. SBCL shall hold all information disclosed to it under this section as confidential subject to the provisions of Sections 9.02 and 9.03.
11.02. 7.01 Each party shall have and retain sole and exclusive title to all inventions, discoveries and know-how which are made, conceived, reduced to practice or generated solely by its respective employees, agents, or other persons acting under its authority in the course of or as a result of the performance of activities under this Agreement. Ownership Each party shall own a fifty percent (50%) undivided interest in all such inventions, discoveries and know-how made, conceived, reduced to practice or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of the performance of activities under this Agreement will be negotiated on a case by case basisAgreement. For the avoidance of doubt, it is understood and agreed that LICENSOR is not obligated to, and has no intent of being involved at all with LICENSEE in the event there is no agreement development or commercialization of PRODUCT under this Agreement, and that the responsibility for the development and commercialization of PRODUCT rests solely with LICENSEE, except as provided in Appendix E and in Section 4.04. LICENSOR shall have the right to file, prosecute and maintain patent applications and patents directed to inventions and discoveries that are owned in whole by LICENSOR in accordance with this Section 7.01. LICENSEE shall have the right to file, prosecute and maintain patent applications and patents directed to inventions and discoveries that are owned in whole by LICENSEE in accordance with this Section 7.01. Both parties shall have the right to file, prosecute and maintain patent applications and patents directed to inventions and discoveries that are jointly owned by LICENSEE and by LICENSOR in accordance with this Section 7.01 and the parties shall agree upon which of them shall take the lead in filing, prosecuting and maintaining such patent applications at the equal expense of both parties. If either party declines to exercise its rights to file, prosecute and maintain patent applications or patents hereunder, the other party shall have the right to file, prosecute and maintain such patent applications and patents at its own expense.
7.02 LICENSOR shall disclose to LICENSEE the complete texts of all patents and patent applications that are PATENTS as well as of all correspondence to or from the U.S. Patent and Trademark Office, and other patent offices around the world, relating to such negotiationpatents and patent applications, as well as all information received concerning the institution or possible institution of any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT anywhere in the TERRITORY. All such ownership disclosures shall be divided equally. Except as expressly provided in this Agreement or as subsequently negotiated pursuant subject to the foregoing sentenceprovisions of Section 6.03. LICENSEE shall have the right to comment upon all patent office communications concerning such patents and patent applications as well as on all proposed responses to such communications.
7.03 In addition, each joint owner may makeLICENSOR shall consult with patent attorneys appointed by LICENSEE prior to taking any action that would result in the narrowing of claims that cover the making, use, sell, keep, license, assignusing, or mortgage such jointly owned inventionsselling of a PRODUCT, discoveries or that would otherwise reduce the patent coverage for a PRODUCT, provided that the fees and know-how, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and know-how, without expenses of the consent of and without accounting to the other joint ownerappointed patent attorneys shall be paid by LICENSEE. Notwithstanding anything above in this paragraph, if (i) SBCL uses its invention or discovery to modify EXIGENT TECHNOLOGY or (ii) EXIGENT expresses an interest in an exclusive license to SBCL's interest in any joint invention (subject to preexisting rights in THIRD PARTIES), then SBCL and EXIGENT shall in good faith negotiate a license of SBCL's invention or discovery or SBCL's interest in such joint invention, as the case may be, to EXIGENT.
11.03. SBCL LICENSEE shall have the right to assume responsibility for any PATENT or any part of a PATENT which EXIGENT that covers the making, using or selling of a PRODUCT and that LICENSOR intends to abandon or otherwise cause or allow to be forfeited. EXIGENT shall give SBCL reasonable written notice prior to abandonment or other forfeiture of any PATENT or any part of a PATENT so as to permit SBCL to exercise its rights under this Section.
11.04. 7.04 In the event of the institution of any suit by a THIRD PARTY against EXIGENTLICENSOR, SBCL LICENSEE or its sublicensees or distributors for patent infringement involving the manufacture, use, sale, distribution or marketing of PRODUCT anywhere in the TERRITORY, the party sued shall promptly notify the other party in writing. If named as a defendant in such suit, SBCL LICENSEE shall have the right but not the obligation to defend such suit at its own expense expense. LICENSOR and shall allow EXIGENT to participate therein if it does assume such defense. If both parties are sued, EXIGENT shall have the right to control the defense thereof EXIGENT and SBCL LICENSEE shall assist one another and cooperate in any such litigation at the other's reasonable request without expense to the requesting party.
11.05. 7.05 In the event that EXIGENT LICENSOR or SBCL LICENSEE becomes aware of actual or threatened infringement of a PATENT patent claim in a PATENT, which claim covers the making, using, or selling of a product in the FIELD anywhere in the TERRITORY, that party shall promptly notify the other party in writing. EXIGENT LICENSEE shall have the first right but not the obligation to bring, at its own expense, an infringement action against any THIRD PARTY and and, if required in order to bring or maintain such action or to recover the full measure of damages, to use SBCLLICENSOR's name in connection therewith and to name SBCL include LICENSOR as a party thereto. If EXIGENT LICENSEE does not commence a particular infringement action within ninety (90) days after receipt of the notice of infringementdays, then SBCLLICENSOR, after providing reasonable advance notice to EXIGENT in writingif LICENSEE consents, shall be entitled to bring such infringement action at its own expense. The party conducting such action shall have full control over its conduct, including settlement thereof thereof, subject to Section 11.07. In any event, EXIGENT and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting partyParagraph 7.
11.06. In any action brought pursuant to Section 11.05 where the interests of SBCL and EXIGENT are adverse, the party bringing the action shall indemnify the other party, its officers, directors, shareholders, employees, agents, successors and assigns from any loss, damage or liability, including for attorney's fees and costs, which may result from defending against claims, counterclaims or crossclaims asserted by a defendant, except to the extent that such losses, damages or liabilities result from the negligence or willful misconduct of the other party.
11.07. In a joint action by EXIGENT and SBCL, each shall recover their respective actual out -of-pocket expenses, or equitable proportions thereof, associated with any litigation or settlement thereof from any recovery made by any party.
11.08. The parties shall keep one another informed of the status of and of their respective activities regarding any litigation or settlement thereof concerning PRODUCT, provided however that no settlement or consent judgment or other voluntary final disposition of any suit defended or action brought by a party pursuant to this Section 11 may be entered into without the consent of the other party if such settlement would require the other party to be subject to an injunction or to make a monetary payment or would otherwise adversely affect the other party's rights under this Agreement. No party withholding consent from a proposed settlement shall be indemnified for any amount above the amount at which it could have settled under the proposed settlement.
11.09. At SBCL's request, EXIGENT shall seek to obtain SPC's or authorize SBCL to obtain SPC's on EXIGENT's behalf. Where SBCL holds a relevant Marketing Authorization, SBCL shall at EXIGENT's request provide to EXIGENT a copy of said Marketing Authorization and any information necessary for the purpose of obtaining an SPC.
Appears in 1 contract
Samples: License Agreement (3 Dimensional Pharmaceuticals Inc)
PATENT PROSECUTION AND LITIGATION. 11.01. EXIGENT agrees to keep SBCL promptly 8.1 All right, title and fully informed of the course of patent prosecution or other proceedings. SBCL shall hold all information disclosed to it under this section as confidential subject interest to the provisions of Sections 9.02 VICAL TECHNOLOGY and 9.03.
11.02all patent rights and other intellectual property rights therein shall belong solely to VICAL. Each party shall have and retain sole and exclusive title to all inventions, discoveries and know-how which are made, conceived, reduced to practice or generated by its respective employees, agents, or other persons acting under its authority in the course of or as a result of this Agreement. Ownership in all such inventions, discoveries and know-how made, conceived, reduced to practice or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of this Agreement will be negotiated on a case by case basis, and in the event there is no agreement from such negotiation, such ownership shall be divided equally. Except as expressly provided in this Agreement or as subsequently negotiated pursuant to the foregoing sentence, each joint owner may make, use, sell, keep, license, assign, or mortgage such jointly owned inventions, discoveries and know-how, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and know-how, without the consent of and without accounting to the other joint owner. Notwithstanding anything above in this paragraph, if (i) SBCL uses its invention or discovery to modify EXIGENT TECHNOLOGY or (ii) EXIGENT expresses an interest in an exclusive license to SBCL's interest in any joint invention (subject to preexisting rights in THIRD PARTIES), then SBCL and EXIGENT shall in good faith negotiate a license of SBCL's invention or discovery or SBCL's interest in such joint invention, as the case may be, to EXIGENT.
11.03. SBCL VICAL shall have the sole right to assume and responsibility for any PATENT or any part the filing, prosecution and maintenance of a PATENT which EXIGENT intends to abandon or otherwise cause or allow to be forfeited. EXIGENT shall give SBCL reasonable written notice prior to abandonment or other forfeiture of any PATENT or any part of a PATENT so as to permit SBCL to exercise its rights under this Sectionpatents and patent applications directed thereto.
11.04. In the event of the institution of any suit by a THIRD PARTY against EXIGENT, SBCL or its sublicensees or distributors for patent infringement involving the manufacture, use, sale, distribution or marketing of PRODUCT anywhere in the TERRITORY, the party sued shall promptly notify the other party in writing. If named as a defendant in such suit, SBCL shall have the right but not the obligation to defend such suit at its own expense and shall allow EXIGENT to participate therein if it does assume such defense. If both parties are sued, EXIGENT shall have the right to control the defense thereof EXIGENT and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party.
11.05. 8.2 In the event that EXIGENT VGI or SBCL VICAL becomes aware of actual or threatened infringement of a VICAL PATENT anywhere in that claims a LICENSED PRODUCT or the TERRITORYuse thereof, that party shall promptly notify the other party in writing. EXIGENT VICAL shall have the first right but not the obligation to bring, at its own expense, an infringement action against any THIRD PARTY and to use SBCL's VGI’s name in connection therewith and to name SBCL as a party theretotherewith. If EXIGENT VICAL does not commence a particular infringement action within ninety (90) days after receipt of the notice of infringementdays, then SBCLVGI, after providing reasonable advance notice to EXIGENT notifying VICAL in writing, shall be entitled to bring such infringement action action, in its own name and/or in the name of VICAL, at its own expense. The party conducting such action shall have full control over its conduct, including settlement thereof subject to Section 11.07. In any event, EXIGENT and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party.
11.06. In any action brought pursuant to Section 11.05 where the interests of SBCL and EXIGENT are adverse, the party bringing the action shall indemnify the other party, its officers, directors, shareholders, employees, agents, successors and assigns from any loss, damage or liability, including for attorney's fees and costs, which may result from defending against claims, counterclaims or crossclaims asserted by a defendant, except to the extent that such lossesparty is licensed thereunder. The foregoing notwithstanding, damages or liabilities in the event that an alleged infringer certifies pursuant to
8.3 Any recovery made by a party as the result from of an action for patent infringement it has conducted under Section 8.2 shall be distributed as follows:
(a) The party conducting the negligence or willful misconduct of the other party.
11.07. In a joint action by EXIGENT and SBCL, each shall recover their respective its actual out -ofout-of-pocket expenses, or equitable proportions thereof, associated with and then shall reimburse the other party for any litigation or settlement thereof from any recovery made by any partyunreimbursed actual and out-of-pocket expenses.
11.08. (b) To the extent that the recovery exceeds the total of item (a), the excess shall be kept by the party conducting the action, provided, however, that to the extent that the recovery is based on an award of lost sales/profits, VICAL shall receive a proportion of the excess recovery corresponding to the royalty percentage it would have otherwise been due on those lost sales/profits and VICAL shall receive the proportion of the excess recovery corresponding to the lost sales/profits.
8.4 The parties shall periodically keep one another reasonably informed of the status of and of their respective activities regarding any such litigation or settlement thereof concerning PRODUCT, provided however that no settlement or consent judgment or other voluntary final disposition of any suit defended or action brought by a party pursuant to this Section 11 may be entered into without the consent of the other party if such settlement would require the other party to be subject to an injunction or to make a monetary payment or would otherwise adversely affect the other party's rights under this Agreement. No party withholding consent from a proposed settlement shall be indemnified for any amount above the amount at which it could have settled under the proposed settlementthereof.
11.09. At SBCL's request, EXIGENT shall seek to obtain SPC's or authorize SBCL to obtain SPC's on EXIGENT's behalf. Where SBCL holds a relevant Marketing Authorization, SBCL shall at EXIGENT's request provide to EXIGENT a copy of said Marketing Authorization and any information necessary for the purpose of obtaining an SPC.
Appears in 1 contract
PATENT PROSECUTION AND LITIGATION. 11.01. EXIGENT agrees to keep SBCL promptly and fully informed of the course of patent prosecution or other proceedings. SBCL shall hold all information disclosed to it under this section as confidential subject to the provisions of Sections 9.02 and 9.03.
11.02. 14.1 Each party PARTY shall have and retain sole and exclusive title to all inventions, discoveries and knowKNOW-how HOW which are made, conceived, reduced to practice or generated by [Confidential Treatment requested for redacted portions of document.] Page 40 44 its respective employees, agents, or other persons acting under its authority in the course of or as a result of this AgreementAGREEMENT. Ownership Each PARTY shall own a fifty percent (50%) undivided interest in all such inventions, discoveries and knowKNOW-how HOW made, conceived, reduced to practice or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of this Agreement will be negotiated on a case by case basis, and in the event there is no agreement from such negotiation, such ownership shall be divided equallyAGREEMENT. Except as expressly provided in this Agreement or as subsequently negotiated pursuant to the foregoing sentenceAGREEMENT, each joint owner may make, use, sell, keep, license, assign, or mortgage such jointly owned inventions, discoveries and knowKNOW-howHOW, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and knowKNOW-howHOW, without the consent of and without accounting to the other joint owner. Notwithstanding anything above in this paragraph, if (i) SBCL uses its invention or discovery to modify EXIGENT TECHNOLOGY or (ii) EXIGENT expresses an interest in an exclusive license to SBCL's interest in any joint invention (subject to preexisting rights in THIRD PARTIES), then SBCL and EXIGENT shall in good faith negotiate a license of SBCL's invention or discovery or SBCL's interest in such joint invention, as the case may be, to EXIGENT.
11.0314.2 MPI shall disclose to SB the complete texts of all PATENTS filed by MPI in the TERRITORY which relate to PRODUCT as well as all information received concerning the institution or possible institution of any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT anywhere in the TERRITORY. SBCL SB shall have the right to review all such pending applications and other proceedings and make recommendations to MPI concerning them and their conduct. MPI agrees to keep SB promptly and fully informed of the course of patent prosecution or other proceedings including by providing SB with copies of substantive communications, search reports and THIRD PARTY observations submitted to or received from patent offices throughout the TERRITORY. SB shall provide such patent consultation to MPI at no cost to MPI. SB shall hold all information disclosed to it under this section as confidential in accordance with the provisions of Article 13.
14.3 SB shall have the right to assume responsibility for any PATENT or any part of a PATENT which EXIGENT MPI intends to abandon or otherwise cause or allow to be forfeited. EXIGENT shall give SBCL reasonable written notice prior to abandonment or other forfeiture of any PATENT or any part of a PATENT so as to permit SBCL to exercise its rights under this Section.
11.04. 14.4 In the event of the institution of any suit by a THIRD PARTY against EXIGENTMPI, SBCL SB, its AFFILIATES or its sublicensees or distributors subdistributors for patent infringement involving the manufacture, use, sale, distribution or marketing of PRODUCT anywhere in the TERRITORY, the party PARTY sued shall promptly notify the other party PARTY in writing. If named as a defendant in such suit, SBCL SB shall have the right but not the obligation to defend such suit at its own expense expense, provided there is prior notification and shall allow EXIGENT to participate therein if it does assume such defense[Confidential Treatment requested for redacted portions of document.] Page 41 45 consultation with MPI. If both parties are sued, EXIGENT shall have the right to control the defense thereof EXIGENT MPI and SBCL SB shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting partyPARTY.
11.05. 14.5 In the event that EXIGENT MPI or SBCL SB becomes aware of actual or threatened infringement of a PATENT anywhere in the TERRITORY, that party PARTY shall promptly notify the other party PARTY in writing. EXIGENT SB shall have the first right but not the obligation to bring, at its own expense, an infringement action against any THIRD PARTY PARTY, provided there is prior notification to and consultation with MPI, and to use SBCLMPI's name in connection therewith and to name SBCL MPI as a party thereto. If EXIGENT SB does not commence a particular infringement action within ninety (90) days after of receipt of the notice of infringement, then SBCLMPI, after providing reasonable advance notice to EXIGENT notifying SB in writing, shall be entitled to bring such infringement action at its own expense. The party PARTY conducting such action shall have full control over its conduct, including settlement thereof subject to Section 11.07. In any event, EXIGENT and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting partyParagraph 14.
11.06. In any action brought pursuant to Section 11.05 where the interests of SBCL and EXIGENT are adverse, the party bringing the action shall indemnify the other party, its officers, directors, shareholders, employees, agents, successors and assigns from any loss, damage or liability, including for attorney's fees and costs, which may result from defending against claims, counterclaims or crossclaims asserted by a defendant, except to the extent that such losses, damages or liabilities result from the negligence or willful misconduct of the other party.
11.07. In a joint action by EXIGENT and SBCL, each shall recover their respective actual out -of-pocket expenses, or equitable proportions thereof, associated with any litigation or settlement thereof from any recovery made by any party.
11.08. The parties shall keep one another informed of the status of and of their respective activities regarding any litigation or settlement thereof concerning PRODUCT, provided however that no settlement or consent judgment or other voluntary final disposition of any suit defended or action brought by a party pursuant to this Section 11 may be entered into without the consent of the other party if such settlement would require the other party to be subject to an injunction or to make a monetary payment or would otherwise adversely affect the other party's rights under this Agreement. No party withholding consent from a proposed settlement shall be indemnified for any amount above the amount at which it could have settled under the proposed settlement.
11.09. At SBCL's request, EXIGENT shall seek to obtain SPC's or authorize SBCL to obtain SPC's on EXIGENT's behalf. Where SBCL holds a relevant Marketing Authorization, SBCL shall at EXIGENT's request provide to EXIGENT a copy of said Marketing Authorization and any information necessary for the purpose of obtaining an SPC.
Appears in 1 contract
Samples: Development, Supply and Distribution Agreement (Magainin Pharmaceuticals Inc)
