Common use of PATENT PROTECTION AND INFRINGEMENT Clause in Contracts

PATENT PROTECTION AND INFRINGEMENT. 7.01 The Licensee and the Licensor shall promptly advise each other of any infringement or suspected infringement of the Licensed Patents by a third party. Subject to any subsequent agreement as to the conduct of any such action: (a) the Licensee, or its sublicensees, or both, may institute a suit and, subject to the provisions hereinafter appearing, join the Licensor as a plaintiff in which case the Licensee and its sublicensees, as the case may be, shall bear the entire cost of such litigation and shall be entitled to retain the entire amount of any recovery whether by way of judgement, award, decree or settlement; or (b) if the Licensee and its sublicensees choose not to institute a suit as provided for in subclause (a) above, the Licensor may institute a suit in which case the Licensor shall bear the entire cost of such litigation and shall be entitled to retain the entire amount of any recovery whether by way of judgment, award, decree or settlement. If the Licensee and its sublicensees exercise their right to commence a suit, the Licensor need not consent to being nor shall it be added as a party until provided with an indemnity agreement from the Licensee and its sublicensees against all costs, expenses and damages which the Licensor may incur as a result of such cooperation. Such indemnity agreement shall be in a form satisfactory to the Licensor's solicitors and be supported by such reasonable assurances in support of such indemnity as the Licensor considers appropriate in the circumstances. 7.02 Should the Licensor or the Licensee (which includes for purposes of this clause the Licensee's sublicensees) commence a suit in accordance with clause 7.01 and subsequently elect to abandon such suit, the Licensor or the Licensee, as the case may be, shall first give timely notice to the other, who may, if it so desires, continue prosecution of such suit provided that an agreement as to the sharing of expenses and any recoveries is first arrived at. 7.03 If the Licensee institutes a suit in accordance with clause 7.01 it may deduct fifty (50%) percent of its out-of-pocket expenditures, including legal fees and disbursements, that are incurred in bringing and prosecuting such infringement action from Royalties not yet paid to a maximum amount of one-half of each payment on account of Royalties otherwise due, until such expenditures are paid in full. If the Licensee recovers profits or damages, or both, from the alleged infringer, the Licensee shall after reimbursing itself for such expenditures that it has had to bear, repay the Licensor all Royalties that have been deducted in accordance with this clause 7.03 and interest as provided for herein, up to, but not exceeding, the amount of the damages so recovered by the Licensee. However, if any such infringement suit results in an adverse judgment and all or some of the Licensed Patents are wholly or partially invalidated, Royalties shall be adjusted in accordance with clause 4.01. 7.04 Each party shall promptly notify the other in writing of any claim or action for infringement of the patent rights of any third party based on the production, use or sale of Products by the Licensee or its sublicensees. 7.05 The entitlements of the Licensee under this Article VII are limited to third party infringements of the applications subject of this Agreement.

PATENT PROTECTION AND INFRINGEMENT. 7.01 The Licensee and the Licensor shall promptly advise each other of any infringement or suspected infringement of the Licensed Patents by a third party. Subject to any subsequent agreement as to the conduct of any such action: (a) the Licensee, or its sublicensees, or both, may institute a suit and, subject to the provisions hereinafter appearing, join the Licensor as a plaintiff in which case the Licensee and its sublicensees, as the case may be, shall bear the entire cost of such litigation and shall be entitled to retain the entire amount of any recovery whether by way of judgement, award, decree or settlement; or (b) if the Licensee and its sublicensees choose not to institute a suit as provided for in subclause (a) above, the Licensor may institute a suit in which case the Licensor shall bear the entire cost of such litigation and shall be entitled to retain the entire amount of any recovery whether by way of judgment, award, decree or settlement. If the Licensee and its sublicensees exercise their right to commence a suit, the Licensor need not consent to being nor shall it be added as a party until provided with an indemnity agreement from the Licensee and its sublicensees against all costs, expenses and damages which the Licensor may incur as a result of such cooperation. Such indemnity agreement shall be in a form satisfactory to the Licensor's ’s solicitors and be supported by such reasonable assurances in support of such indemnity as the Licensor considers appropriate in the circumstances. 7.02 Should the Licensor or the Licensee (which includes for purposes of this clause the Licensee's ’s sublicensees) commence a suit in accordance with clause 7.01 and subsequently elect to abandon such suit, the Licensor or the Licensee, as the case may be, shall first give timely notice to the other, who may, if it so desires, continue prosecution of such suit provided that an agreement as to the sharing of expenses and any recoveries is first arrived at. 7.03 If the Licensee institutes a suit in accordance with clause 7.01 it may deduct fifty (50%) percent of its out-of-pocket expenditures, including legal fees and disbursements, that are incurred in bringing and prosecuting such infringement action from Royalties not yet paid to a maximum amount of one-half of each payment on account of Royalties otherwise due, until such expenditures are paid in full. If the Licensee recovers profits or damages, or both, from the alleged infringer, the Licensee shall after reimbursing itself for such expenditures that it has had to bear, repay the Licensor all Royalties that have been deducted in accordance with this clause 7.03 and interest as provided for herein, up to, but not exceeding, the amount of the damages so recovered by the Licensee. However, if any such infringement suit results in an adverse judgment and all or some of the Licensed Patents are wholly or partially invalidated, Royalties shall be adjusted in accordance with clause 4.01. 7.04 Each party shall promptly notify the other in writing of any claim or action for infringement of the patent rights of any third party based on the production, use or sale of Products by the Licensee or its sublicensees. 7.05 The entitlements of the Licensee under this Article VII are limited to third party infringements of the applications subject of this Agreement.

PATENT PROTECTION AND INFRINGEMENT. 7.01 The Licensee 9.1 York and the Licensor Biostar shall promptly advise each other of any infringement or suspected infringement of the Licensed Patents by a third party. Subject to any subsequent agreement as to the conduct of any such action: (a) the LicenseeYork, or its sublicenseesSub-licensees, or both, may institute a suit and, subject to the provisions hereinafter appearing, join the Licensor Biostar as a plaintiff in which case the Licensee York and its sublicenseesSub-licensees, as the case may be, shall bear the entire cost of such litigation and shall be entitled to retain the entire amount of any recovery whether by way of judgement, award, decree or settlement; or (b) if the Licensee York and its sublicensees Sub-licensees choose not to institute a suit as provided for in subclause (asubsection 9.1(a) above, the Licensor Biostar may institute a suit in which case the Licensor Biostar shall bear the entire cost of such litigation and shall be entitled to retain the entire amount of any recovery whether by way of judgment, award, decree or settlement. If the Licensee York and its sublicensees Sub-licensees exercise their right to commence a suit, the Licensor need Biostar shall not consent to being nor shall it be added as a party until its consent to being added as a party is obtained and until Biostar is provided with an indemnity agreement from the Licensee York and its sublicensees Sub- Licensees against all costs, expenses and damages which the Licensor Biostar may incur as a result of such cooperation. Such indemnity agreement shall be in a form satisfactory to the LicensorBiostar's solicitors and be supported by such reasonable assurances in support of such indemnity as the Licensor Biostar considers appropriate in the circumstances. 7.02 9.2 Should the Licensor Biostar or the Licensee York (which includes for purposes of this clause the Licenseesection York's sublicenseesSub-licensees) commence a suit in accordance with clause 7.01 section 9.1 and subsequently elect to abandon such suit, the Licensor Biostar or the LicenseeYork, as the case may be, shall first give timely notice to the other, who may, if it so desires, continue prosecution of such suit provided that an agreement as to the sharing of expenses and any recoveries is first arrived at. 7.03 9.3 If the Licensee institutes a suit in accordance with clause 7.01 it may deduct fifty (50%) percent of York or its outSub-of-pocket expenditures, including legal fees and disbursements, that are incurred in bringing and prosecuting such infringement action from Royalties not yet paid to a maximum amount of one-half of each payment on account of Royalties otherwise due, until such expenditures are paid in full. If the Licensee recovers licensees recover profits or damages, or both, from the alleged infringer, by settlement or otherwise, such profits or damages shall be applied for the Licensee shall after reimbursing itself for such expenditures that it has had following purposes and in the following order: (a) against legal and other expenses of the suit; (b) against liabilities of York or Biostar resulting from the suit; and (c) to bear, repay the Licensor all Royalties that have been deducted Biostar in accordance with this clause 7.03 and interest as provided for hereinsection 4.6, up to, but not exceeding, the amount of the damages so recovered by the Licenseewherein such money shall be considered Sub-Licensing Revenue. However, if any such infringement suit results in an adverse judgment and all or some of the Licensed Patents are wholly or partially invalidated, Royalties shall be adjusted in accordance with clause 4.01section 4.4(b) as and from the date of judgment. 7.04 9.4 If the royalties payable to Biostar and other third parties would exceed eight (8%) percent of Net Sales for a Licensed Product that infringes a Valid Claim or claims of the Patents (the "Patent Royalty Ceiling") then the Royalty rate provided for in clause 4.4(a) shall be reduced by one-half of the collective royalties in excess of the Patent Royalty Ceiling otherwise payable by York to Biostar and other third parties. York shall use reasonable efforts to ensure that any royalty reduction necessary under this clause is allocated between the Biostar and such third party in an equitable manner. However, notwithstanding the foregoing, under no circumstances shall the Royalty rates provided for under clause 4.4(a) be reduced to less than one-half (1/2) of the amount otherwise determinable under that clause. 9.5 Each party shall promptly notify the other in writing of any claim or action for infringement of the patent rights of any third party based on the production, use or sale of Licensed Products by the Licensee York or its sublicenseesSub-licensees. 7.05 9.6 The entitlements of the Licensee York under this Article VII section 9 are limited to third party infringements of the applications which are the subject of this Agreement.

PATENT PROTECTION AND INFRINGEMENT. 7.01 The Licensee and the Licensor shall promptly advise each other of any infringement or suspected infringement of the Licensed Patents by a third party. Subject to any subsequent agreement as to the conduct of any such action: (a) the Licensee, or its sublicensees, or both, may institute a suit and, subject to the provisions hereinafter appearing, join the Licensor as a plaintiff in which case the Licensee and its sublicensees, as the case may be, shall bear the entire cost of such litigation and shall be entitled to retain the entire amount of any recovery whether by way of judgement, award, decree or settlement; or (b) if the Licensee and its sublicensees choose not to institute a suit as provided for in subclause (a) above, the Licensor may institute a suit in which case the Licensor shall bear the entire cost of such litigation and shall be entitled to retain the entire amount of any recovery whether by way of judgment, award, decree or settlement. If the Licensee and its sublicensees exercise their right to commence a suit, the Licensor need not consent to being nor shall it be added as a party until provided with an indemnity agreement from the Licensee and its sublicensees against all costs, expenses and damages which the Licensor may incur as a result of such cooperation. Such indemnity agreement shall be in a form satisfactory to the Licensor's solicitors and be supported by such reasonable assurances in support of such indemnity as the Licensor considers appropriate in the circumstances. 7.02 Should the Licensor or the Licensee (which includes for purposes of this clause the Licensee's sublicensees) commence a suit in accordance with clause 7.01 and subsequently elect to abandon such suit, the Licensor or the Licensee, as the case may be, shall first give timely notice to the other, who may, if it so desires, continue prosecution of such suit provided that an agreement as to the sharing of expenses and any recoveries is first arrived at. 7.03 If the Licensee institutes a suit in accordance with clause 7.01 it may deduct fifty (50%) percent of its out-of-pocket expenditures, including legal fees and disbursements, that are incurred in bringing and prosecuting such infringement action from Royalties not yet paid to a maximum amount of one-half of each payment on account of Royalties otherwise due, until such expenditures are paid in full. If the Licensee recovers profits or damages, or both, from the alleged infringer, the Licensee shall after reimbursing itself for such expenditures that it has had to bear, repay the Licensor all Royalties that have been deducted in accordance with this clause 7.03 and interest as provided for herein, up to, but not exceeding, the amount of the damages so recovered by the Licensee. However, if any such infringement suit results in an adverse judgment and all or some of the Licensed Patents are wholly or partially invalidated, Royalties shall be adjusted in accordance with clause 4.01. 7.04 Each party shall promptly notify the other in writing of any claim or action for infringement of the patent rights of any third party based on the production, use or sale of Products by the Licensee or its sublicensees. 7.05 The entitlements of the Licensee under this Article VII are limited to third party infringements of the applications subject of this Agreement.