Common use of Patent Prosecution; Enforcement and Defense Clause in Contracts

Patent Prosecution; Enforcement and Defense. (a) The Seller shall, at the Seller’s expense take any and all actions, and prepare, execute, deliver and file any and all agreements, documents and instruments, that are reasonably necessary to diligently preserve and maintain the applicable Intellectual Property Rights, including payment of maintenance fees or annuities. In connection with any actions or decisions by the Seller not to act in respect of matters contemplated by the foregoing sentence, the Seller shall provide advance written notice of all such actions or decisions not to act in order to consult with the Purchasers, and the Seller shall, in good faith, give due consideration to any reasonable suggestions of, the Purchasers. (b) The Seller shall, at the Seller’s expense, (A) diligently defend and enforce the applicable Intellectual Property Rights against infringement or interference by any other Person, and against any claims of invalidity or unenforceability, in any jurisdiction (including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of any other Person for declaratory judgment of non-infringement or non-interference) and (B) when available and material in respect of any applicable Covered Product, use diligent efforts to obtain or cause to be obtained, as applicable: (i) patents and any corrections, substitutions, reissues and reexaminations thereof and patent term extensions and any other forms of patent term restoration and (ii) any other applicable forms of intellectual property protection. In connection with the Seller’s actions or decisions not to act in respect of matters contemplated by the foregoing sentence, the Seller shall provide advance written notice of all such actions or decisions not to act in order to consult with the Purchasers, if applicable, and, if applicable, allow the Purchasers sufficient time to issue instructions. The Seller shall promptly (but in any event within five Business Days) provide to the Purchasers a copy of any written notice or other documentation received or filed in connection with, or otherwise relating to, any such legal action, suit or other proceeding. (c) To the extent the Seller enters into any license agreements with respect to the Covered Products, the Seller shall, except to the extent prohibited by obligations of confidentiality contained in such license agreements, promptly (but in any event within five Business Days) after receipt thereof, provide to the Purchasers a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchasers with a copy of drafts of any written material proposed to be filed in response thereto. (d) The Seller shall promptly (but in any event within five Business Days) after receipt thereof, provide to the Purchasers a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchasers with a copy of drafts of any written material proposed to be filed in response thereto. (e) The Seller Parties shall not disclaim, cancel or abandon, or fail to take any Commercially Reasonable Action necessary or desirable to prevent the disclaimer, cancellation or abandonment of, any material Intellectual Property Rights. (f) The Parties shall bear their own costs and expenses in connection with the actions pursuant to this Section 5.4.

Patent Prosecution; Enforcement and Defense. (ai) The To the extent required or permitted by the applicable License Agreements and Counterparty Consents, the Seller shall, at the Seller’s expense shall take any and all actions, and prepare, execute, deliver and file any and all agreements, documents and instruments, that are reasonably necessary or desirable to diligently preserve and maintain the applicable Intellectual Property Rights, including payment of maintenance fees or annuities. In connection with any actions or decisions by the Seller not to act in respect of matters contemplated by the foregoing sentence, to the extent such action or decision would reasonably be expected to have a Material Adverse Effect, the Seller shall provide advance written notice of all such actions or decisions not to act in order to consult with the PurchasersPurchaser Representative , and the Seller shall, in good faith, give due consideration to any reasonable suggestions of, the PurchasersPurchaser Representative . (bii) The To the extent required or permitted by the applicable License Agreements and Counterparty Consents and as Mutually Agreed, the Seller shall, at the Seller’s expense, shall (A) diligently defend (and enforce enforce) the applicable Intellectual Property Rights against infringement or interference by any other Person, and against any claims of invalidity or unenforceability, in any jurisdiction (including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of any other Person for declaratory judgment of non-infringement or non-interference) and (B) when available and material in respect of any applicable Covered Licensed Product, use diligent efforts to obtain or cause to be obtained, as applicable: (i) patents and any corrections, substitutions, reissues and reexaminations thereof and obtain patent term extensions and any other forms of patent term restoration and (ii) in any other applicable forms of intellectual property protectioncountry. In connection with the Seller’s actions or decisions not to act in respect of matters contemplated by the foregoing sentence, the Seller shall provide advance written notice of all such actions or decisions not to act in order to consult with the PurchasersPurchaser Representative, if applicable, and, if applicable, allow the Purchasers Purchaser Representative sufficient time to issue instructions. The Seller shall promptly (but in any event within five Business Days) [***] provide to the Purchasers Purchaser Representative a copy of any written notice or other documentation received or filed in connection with, or otherwise relating to, with any such legal action, suit or other proceeding. (ciii) To the extent the Seller enters into any license agreements with respect to the Covered Products, the The Seller shall, except to the extent prohibited by obligations of confidentiality contained in such license agreementsthe License Agreements and Counterparty Consents, promptly (but in any event within five Business Days) [***] after receipt thereof, provide to the Purchasers Purchaser Representative a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchasers Purchaser Representative with a copy of drafts of any written material proposed to be filed in response thereto. (d) The Seller shall promptly (but in any event within five Business Days) after receipt thereof, provide to the Purchasers a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchasers with a copy of drafts of any written material proposed to be filed in response thereto. (e) The Seller Parties shall not disclaim, cancel or abandon, or fail to take any Commercially Reasonable Action necessary or desirable to prevent the disclaimer, cancellation or abandonment of, any material Intellectual Property Rights. (fiv) The Parties shall bear their own costs and expenses in connection with the actions pursuant to this Section 5.46.5; provided that the Purchaser Representative shall reimburse the Seller, promptly on demand, for [***] of all reasonable out of pocket costs and expenses (including the reasonable fees and expenses of the Seller’s counsel) incurred by the Seller in connection with any actions the Seller is instructed to take by the Purchaser Representative pursuant to Section 6.5(e)(ii). (v) The Seller shall not disclaim or abandon, or fail to take any Commercially Reasonable Action necessary or desirable to prevent the disclaimer or abandonment of, any Intellectual Property Rights.

Patent Prosecution; Enforcement and Defense. (ai) The To the extent required or permitted by the Commercialization Agreement and the MSK Agreement, the Seller shall, at the Seller’s expense shall take any and all actions, and prepare, execute, deliver and file any and all agreements, documents and instruments, that are reasonably necessary or desirable to diligently preserve and maintain the applicable Intellectual Property RightsLicensed Patents, including payment of maintenance fees or annuities. In connection with any actions or decisions by the Seller not to act in respect of matters contemplated by the foregoing sentence, to the extent such action or decision would reasonably be expected to have a Material Adverse Effect, the Seller shall provide advance written notice of all such actions or decisions not to act in order to consult with the PurchasersPurchaser, and the Seller shall, in good faith, give due consideration to any reasonable suggestions of, of the PurchasersPurchaser. (bii) The To the extent required or permitted by the Commercialization Agreement and the MSK Agreement [[***]], the Seller shall, at the Seller’s expense, shall (A) diligently defend (and enforce enforce) the applicable Intellectual Property Rights against infringement or interference by any other Person, and against any claims of invalidity or unenforceability, in any jurisdiction in the Territory (including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of any other Person for declaratory judgment of non-infringement or non-interference) and (B) when available and material in respect of any applicable Covered ProductLicensed Patent, use diligent efforts to obtain or cause to be obtained, as applicable: (i) issued patents and any corrections, substitutions, reissues and reexaminations thereof and obtain patent term extensions extensions, supplementary protection certificates and any other forms of patent term extension or restoration and (ii) in any other applicable forms of intellectual property protectioncountry in the Territory. In connection with the Seller’s actions or decisions not to act in respect of matters contemplated by the foregoing sentence, the Seller shall provide advance written notice of all such material actions or material decisions not to act in order to consult with the PurchasersPurchaser, if applicable, and, if applicable, allow the Purchasers Purchaser sufficient time to issue instructions. The Seller shall promptly (but in any event event, within five [[***]] Business Days) provide to the Purchasers Purchaser a copy of any written notice or other documentation received or filed in connection with, or otherwise relating to, with any such legal action, suit or other proceeding. (ciii) To the extent the Seller enters into any license agreements with respect to the Covered Products, the The Seller shall, except to the extent prohibited by obligations of confidentiality contained in such license agreementsthe Commercialization Agreement or the MSK Agreement, and except for routine prosecution correspondence and documentation, promptly (but in any event event, within five [[***]] Business Days) after receipt thereof, provide to the Purchasers Purchaser a copy of all substantive written notices or other material documentation relating to the patentability, enforceability, validity, scope or term of the Licensed Patents, and shall provide the Purchasers Purchaser with a copy of drafts of any written material proposed to be filed in response thereto. (div) The All proceeds resulting from any enforcement of Licensed Patents by the Seller shall promptly (but against infringement or interference by any other Person, and against any claims of invalidity or unenforceability, in any event within five Business Daysjurisdiction in the Territory shall be applied (i) after receipt thereoffirst, provide to the Purchasers a copy [[***]] and (ii) second, [[***]]. The remainder of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term such proceeds that are in respect of an unpaid portion of the Patents, and Purchased Royalties shall provide the Purchasers with a copy of drafts of any written material proposed be allocated to be filed in response thereto[[***]]. (e) The Seller Parties shall not disclaim, cancel or abandon, or fail to take any Commercially Reasonable Action necessary or desirable to prevent the disclaimer, cancellation or abandonment of, any material Intellectual Property Rights. (f) The Parties shall bear their own costs and expenses in connection with the actions pursuant to this Section 5.4.

Patent Prosecution; Enforcement and Defense. (ai) The To the extent required or permitted by the applicable Covered License Agreements, the Seller shallshall (and shall cause the Company to), at the Seller’s expense expense, take any and all actions, and prepare, execute, deliver and file any and all agreements, documents and instruments, that are reasonably necessary or desirable to diligently preserve and maintain the applicable Intellectual Property RightsRights in the Territory, including payment of maintenance fees or annuities. In connection with any actions or decisions by the Seller not to act (or to cause the Company not to act) in respect of matters contemplated by the foregoing sentence, to the extent such action or decision would reasonably be expected to have a Material Adverse Effect, the Seller shall provide advance written notice of all such actions or decisions not to act in order to consult with the PurchasersPurchaser, and the Seller shall, in good faith, give due consideration to any reasonable suggestions of, the PurchasersPurchaser. (bii) The To the extent required or permitted by the applicable Covered License Agreements, the Seller shallshall (and shall cause the Company to), at the Seller’s expense, (A) diligently defend and enforce the applicable Intellectual Property Rights in the Territory against infringement or interference by any other Person, and against any claims of invalidity or unenforceability, in any jurisdiction (including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of any other Person for declaratory judgment of non-infringement or non-interference) and (B) when available and material in respect of any applicable Covered ProductLicensed Product in the Territory, use diligent efforts to obtain or cause to be obtained, as applicable: (i) patents and any corrections, substitutions, reissues and reexaminations thereof and obtain patent term extensions and any other forms of patent term restoration and (ii) in any other applicable forms of intellectual property protectioncountry in the Territory. In connection with the Seller’s actions or decisions not to act in respect of matters ​ ​ ​ contemplated by the foregoing sentence, the Seller shall provide advance written notice of all such actions or decisions not to act in order to consult with the PurchasersPurchaser, if applicable, and, if applicable, allow the Purchasers Purchaser sufficient time to issue instructions. The Seller shall promptly (but in any event within five (5) Business Days) provide to the Purchasers Purchaser a copy of any written notice or other documentation received or filed in connection with, or otherwise relating to, with any such legal action, suit or other proceeding, regardless of whether such legal action, suit or other proceeding occurs inside or outside of the Territory. (ciii) To the extent the Seller enters into any license agreements with respect to the Covered Products, the The Seller shall, except to the extent prohibited by obligations of confidentiality contained in such license agreementsthe Covered License Agreements, promptly (but in any event within five (5) Business Days) after receipt thereof, provide to the Purchasers Purchaser a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchasers Purchaser with a copy of drafts of any written material proposed to be filed in response thereto. (div) The Seller shall promptly (but in any event within five Business Days) after receipt thereof, provide to the Purchasers a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchasers with a copy of drafts of any written material proposed to be filed in response thereto. (e) The Seller Parties shall not disclaim, cancel disclaim or abandon, or fail to take any Commercially Reasonable Action necessary or desirable to prevent the disclaimer, cancellation disclaimer or abandonment of, any material Intellectual Property RightsRights in the Territory (and the Seller shall provide written notice to the Purchaser if it disclaims or abandons or fails to take any Commercially Reasonable Action necessary or desirable to prevent the disclaimer or abandonment of any Intellectual Property Rights outside of the Territory). (f) The Parties shall bear their own costs and expenses in connection with the actions pursuant to this Section 5.4.

Patent Prosecution; Enforcement and Defense. (a) The Seller With respect to the Intellectual Property Rights relating to the Licensed Products, (i) to the extent required by the applicable Covered License Agreements, the Sellers shall, at the SellerSellers’ expense, take any and all actions, and prepare, execute, deliver and file any and all agreements, documents and instruments, that are reasonably necessary or desirable to diligently preserve and maintain the applicable Intellectual Property Rights, including payment of maintenance fees or annuities. In connection with any actions or decisions by the Sellers not to act in respect of matters contemplated by the foregoing sentence, to the extent such action or decision would reasonably be expected to have a Material Adverse Effect, the Sellers shall provide advance written notice of all such actions or decisions not to act in order to consult with the Purchaser, and the Sellers shall, in good faith, give due consideration to any reasonable suggestions of, the Purchaser. (ii) to the extent required by the applicable Covered License Agreements, the Sellers shall, at the Sellers’ expense, (A) diligently defend and enforce the applicable Intellectual Property Rights against infringement or interference by any other Person, and against any claims of invalidity or unenforceability, in any jurisdiction (including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of any other Person for declaratory judgment of non-infringement or non-interference) and (B) when available in respect of any applicable Licensed Product, obtain patents and any corrections, substitutions, reissues and reexaminations thereof and obtain patent term extensions and any other forms of patent term restoration in any country. In connection with the Sellers’ actions or decisions not to act in respect of matters contemplated by the foregoing sentence, the Sellers shall provide advance written notice of all such actions or decisions not to act in order to consult with the Purchaser, if applicable, and, if applicable, allow the Purchaser sufficient time to issue instructions. The Sellers shall promptly (but in any event within [***]) provide to the Purchaser a copy of any written notice or other documentation received in connection with any such legal action, suit or other proceeding. (iii) the Sellers shall, except to the extent prohibited by obligations of confidentiality contained in the Covered License Agreements, promptly (but in any event within [***]) after receipt thereof, provide to the Purchaser a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchaser with a copy of drafts of any written material proposed to be filed in response thereto. (b) With respect to the Intellectual Property Rights relating to the Company Products, (i) Product Sub shall, at Product Sub’s expense expense, take any and all actions, and prepare, execute, deliver and file any and all agreements, documents and instruments, that are reasonably necessary to diligently preserve and maintain the applicable Intellectual Property Rights, including payment of maintenance fees or annuities. In connection with any actions or decisions by the Seller Product Sub not to act in respect of matters contemplated by the foregoing sentence, to the Seller extent such action or decision would reasonably be expected to have a Material Adverse Effect, Product Sub shall provide advance written notice of all such actions or decisions not to act in order to consult with the PurchasersPurchaser, and the Seller Product Sub shall, in good faith, give due consideration to any reasonable suggestions of, the PurchasersPurchaser. (bii) The Seller Product Sub shall, at the SellerProduct Sub’s expense, (A) diligently defend and enforce the applicable Intellectual Property Rights against infringement or interference by any other Person, and against any claims of invalidity or unenforceability, in any jurisdiction (including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of any other Person for declaratory judgment of non-infringement or non-interference) and (B) when available and material in respect of any applicable Covered Company Product, use diligent efforts to obtain or cause to be obtained, as applicable: (i) patents and any corrections, substitutions, reissues and reexaminations thereof and obtain patent term extensions and any other forms of patent term restoration and (ii) any other applicable forms of intellectual property protectionrestoration. In connection with the SellerProduct Sub’s actions or decisions not to act in respect of matters contemplated by the foregoing sentence, the Seller Product Sub shall provide advance written notice of all such actions or decisions not to act in order to consult with the PurchasersPurchaser, if applicable, and, if applicable, allow the Purchasers Purchaser sufficient time to issue instructions. The Seller Product Sub shall promptly (but in any event within five Business Days[***]) provide to the Purchasers Purchaser a copy of any written notice or other documentation received or filed in connection with, or otherwise relating to, with any such legal action, suit or other proceeding. (ciii) To the extent the Seller enters into any license agreements with respect to the Covered Products, the Seller shall, except to the extent prohibited by obligations of confidentiality contained in such license agreements, Company shall promptly (but in any event within five Business Days[***]) after receipt thereof, provide to the Purchasers Purchaser a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchasers Purchaser with a copy of drafts of any written material proposed to be filed in response thereto. (d) The Seller shall promptly (but in any event within five Business Days) after receipt thereof, provide to the Purchasers a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchasers with a copy of drafts of any written material proposed to be filed in response thereto. (ec) The Seller Parties shall not disclaim, cancel disclaim or abandon, or fail to take any Commercially Reasonable Action necessary or desirable to prevent the disclaimer, cancellation disclaimer or abandonment of, any material Intellectual Property Rights. (fd) The Parties shall bear their own costs and expenses in connection with the actions pursuant to this Section 5.45.6.

Patent Prosecution; Enforcement and Defense. (a) The Seller With respect to the Intellectual Property Rights relating to the Licensed Products, (i) to the extent required by the applicable Covered License Agreements, the Sellers shall, at the SellerSellers’ expense, take any and all actions, and prepare, execute, deliver and file any and all agreements, documents and instruments, that are reasonably necessary or desirable to diligently preserve and maintain the applicable Intellectual Property Rights, including payment of maintenance fees or annuities. In connection with any actions or decisions by the Sellers not to act in respect of matters contemplated by the foregoing sentence, to the extent such action or decision would reasonably be expected to have a Material Adverse Effect, the Sellers shall provide advance written notice of all such actions or decisions not to act in order to consult with the Purchaser, and the Sellers shall, in good faith, give due consideration to any reasonable suggestions of, the Purchaser. (ii) to the extent required by the applicable Covered License Agreements, the Sellers shall, at the Sellers’ expense, (A) diligently defend and enforce the applicable Intellectual Property Rights against infringement or interference by any other Person, and against any claims of invalidity or unenforceability, in any jurisdiction (including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of any other Person for declaratory judgment of non-infringement or non-interference) and (B) when available in respect of any applicable Licensed Product, obtain patents and any corrections, substitutions, reissues and reexaminations thereof and obtain patent term extensions and any other forms of patent term restoration in any country. In connection with the Sellers’ actions or decisions not to act in respect of matters contemplated by the foregoing sentence, the Sellers shall provide advance written notice of all such actions or decisions not to act in order to consult with the Purchaser, if applicable, and, if applicable, allow the Purchaser sufficient time to issue instructions. The Sellers shall promptly [***] provide to the Purchaser a copy of any written notice or other documentation received in connection with any such legal action, suit or other proceeding. (iii) the Sellers shall, except to the extent prohibited by obligations of confidentiality contained in the Covered License Agreements, promptly [***] after receipt thereof, provide to the Purchaser a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchaser with a copy of drafts of any written material proposed to be filed in response thereto. (b) With respect to the Intellectual Property Rights relating to the Company Products, (i) Product Sub shall, at Product Sub’s expense expense, take any and all actions, and prepare, execute, deliver and file any and all agreements, documents and instruments, that are reasonably necessary to diligently preserve and maintain the applicable Intellectual Property Rights, including payment of maintenance fees or annuities. In connection with any actions or decisions by the Seller Product Sub not to act in respect of matters contemplated by the foregoing sentence, to the Seller extent such action or decision would reasonably be expected to have a Material Adverse Effect, Product Sub shall provide advance written notice of all such actions or decisions not to act in order to consult with the PurchasersPurchaser, and the Seller Product Sub shall, in good faith, give due consideration to any reasonable suggestions of, the PurchasersPurchaser. (bii) The Seller Product Sub shall, at the SellerProduct Sub’s expense, (A) diligently defend and enforce the applicable Intellectual Property Rights against infringement or interference by any other Person, and against any claims of invalidity or unenforceability, in any jurisdiction (including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of any other Person for declaratory judgment of non-infringement or non-interference) and (B) when available and material in respect of any applicable Covered Company Product, use diligent efforts to obtain or cause to be obtained, as applicable: (i) patents and any corrections, substitutions, reissues and reexaminations thereof and obtain patent term extensions and any other forms of patent term restoration and (ii) any other applicable forms of intellectual property protectionrestoration. In connection with the SellerProduct Sub’s actions or decisions not to act in respect of matters contemplated by the foregoing sentence, the Seller Product Sub shall provide advance written notice of all such actions or decisions not to act in order to consult with the PurchasersPurchaser, if applicable, and, if applicable, allow the Purchasers Purchaser sufficient time to issue instructions. The Seller Product Sub shall promptly (but in any event within five Business Days) [***] provide to the Purchasers Purchaser a copy of any written notice or other documentation received or filed in connection with, or otherwise relating to, with any such legal action, suit or other proceeding. (ciii) To the extent the Seller enters into any license agreements with respect to the Covered Products, the Seller shall, except to the extent prohibited by obligations of confidentiality contained in such license agreements, Company shall promptly (but in any event within five Business Days) [***] after receipt thereof, provide to the Purchasers Purchaser a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchasers Purchaser with a copy of drafts of any written material proposed to be filed in response thereto. (d) The Seller shall promptly (but in any event within five Business Days) after receipt thereof, provide to the Purchasers a copy of all substantive written notices or other documentation relating to the patentability, enforceability, validity, scope or term of the Patents, and shall provide the Purchasers with a copy of drafts of any written material proposed to be filed in response thereto. (ec) The Seller Parties shall not disclaim, cancel disclaim or abandon, or fail to take any Commercially Reasonable Action necessary or desirable to prevent the disclaimer, cancellation disclaimer or abandonment of, any material Intellectual Property Rights. (fd) The Parties shall bear their own costs and expenses in connection with the actions pursuant to this Section 5.45.6.