Common use of Precision Patents Clause in Contracts

Precision Patents. Gilead shall have the first right, but not the obligation, at [***] cost and expense, to defend and control the defense of the validity and enforceability of the Precision Patents where such defense is pursuant to Gilead’s indemnification obligations under Section 9.1, in response to a claim brought against Gilead or its Affiliates or Sublicensees by a Third Party, or where the other party to the action is engaging in Competitive Infringement. In all other cases of defense of Precision Patents, or if Gilead elects not to defend or control such defense, or otherwise fails to initiate and maintain the defense, Precision shall control such defense. Precision may participate in any such claim, suit, or proceeding defended by Gilead with counsel of its choice at [***] cost and expense; provided that, Gilead shall retain control of the defense in such claim, suit, or proceeding. With respect to any such action involving the validity or enforceability of the Precision Patents, if the defending Party finds it necessary or desirable for the other Party to join the defending Party as a party to [***] Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission. any such action, the other Party shall, at the defending Party’s request, join the defending Party as a party to such suit and participate with its own counsel at [***] cost and expense; provided that, the defending Party shall retain control of the defense in such claim, suit, or proceeding. If Precision elects not to defend or control the defense of the Precision Patents in a suit brought, or otherwise fails to initiate and maintain the defense of any such claim, suit, or proceeding, then, subject to Precision’s rights under Section 6.3.1, Gilead may conduct and control the defense of any such claim, suit, or proceeding at [***] cost and expense. With respect to any such action involving the validity or enforceability of the Precision Patents, if Gilead finds it necessary or desirable for Precision to join Gilead as a party to any such action, Precision shall, at Gilead’s request, join Gilead as a party to such suit and participate with its own counsel at [***] cost and expense.

Precision Patents. (a) Each Party shall promptly notify the other Party in writing of any alleged or threatened infringement of the Precision Patents by a Third Party of which such Party becomes aware (including alleged or threatened infringement based on the development or commercialization of, or an application to market, a Licensed Product), subject in each case to any confidentiality obligations of the applicable Party owed to the Third Party who made such Party aware of such infringement. Neither Party shall prosecute any Competitive Infringement of the Precision Patents prior to [***]. Thereafter, Gilead shall have the first right, but not the obligation, to prosecute any Competitive Infringement of the Precision Patents, at [***] cost and expense, to defend and Gilead shall retain control the defense of the validity and enforceability prosecution of such suit. At all times, Precision shall have the sole right, but not the obligation, to prosecute any Other Infringement of the Precision Patents where such defense is pursuant to Gilead’s indemnification obligations under Section 9.1, in response to a claim brought against Gilead or its Affiliates or Sublicensees by a Third Party, or where the other party to the action is engaging in Competitive Infringement. In all other cases of defense of Precision Patents, or if Gilead elects not to defend or control such defense, or otherwise fails to initiate and maintain the defense, Precision shall control such defense. Precision may participate in any such claim, suit, or proceeding defended by Gilead with counsel of its choice at [***] cost and expense; provided that, Gilead and Precision shall retain control of the defense in prosecution of such claim, suit, or proceeding. With respect to any such action involving the validity or enforceability of the Precision Patents, if the defending Party finds it necessary or desirable for the other Party to join the defending Party as a party to [***] Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission. . (b) In the event that Gilead decides not to prosecute any Competitive Infringement of the Precision Patents following [***], Gilead shall provide reasonable prior written notice to Precision of such actionintention (which notice shall, where reasonably practical, be given no later than [***] prior to the next deadline for any action that may be taken with respect to such Patent), and Precision shall thereupon have the option to assume the control and direction of the prosecution of the Competitive Infringement, at [***] cost and expense; provided that, in deciding whether to exercise its option, and in prosecuting such infringement, Precision shall take into consideration Gilead’s business reasons for deciding not to prosecute the infringement of such Precision Patent. (c) In the event a Party prosecutes infringement of a Precision Patent against Competitive Infringement pursuant to this Section 6.3.1, the other Non-Prosecuting Party shall, at shall have the defending Party’s request, right to join the defending Party as a party to such suit claim, suit, or proceeding and participate with its own counsel at [***] cost and expense; provided that, that the defending Prosecuting Party shall retain control of the defense in prosecution of such claim, suit, or proceeding. If Precision elects not to defend or control the defense of the Precision Patents in a suit brought, or otherwise fails to initiate and maintain the defense of During any such claim, suit, or proceeding, thenthe Prosecuting Party shall: (i) provide the Non-Prosecuting Party with drafts of all official papers and statements (whether written or oral) prior to their submission in such claim, subject suit, or proceeding, in sufficient time to Precisionallow the Non-Prosecuting Party to review, consider and substantively comment thereon; (ii) reasonably consider taking action to incorporate the Non-Prosecuting Party’s rights under Section 6.3.1comments on all such official papers and statements; (iii) allow the Non-Prosecuting Party the opportunity to participate in the preparation of witnesses and other participants in such claim, Gilead may conduct suit, or proceeding; and control the defense of (iv) not settle any such claim, suit, or proceeding at [***] cost except in a manner that it believes in good faith is in the best interests of the Licensed Products. (d) Gilead acknowledges and expense. With agrees that (i) Precision has no rights or responsibility for enforcing the Cellectis Patents, and therefore all references to Precision Patents in this Section 6.3.1 shall be deemed to exclude the Cellectis Patents for all purposes, (ii) prior to initiating enforcement actions against a Third Party with respect to any certain Precision Patents which were subject to the non-exclusive license granted by Precision to Cellectis S.A. pursuant to the Cellectis Agreement, Precision is required by the Cellectis Agreement to confirm that Cellectis S.A. has not granted a license to such action involving the validity or enforceability of the Third Party under such Precision Patents, if and Gilead finds it necessary or desirable for will cooperate with Precision in taking such actions as required by the Cellectis Agreement, and (iii) Duke retains discretion as to join Gilead as whether to become a party plaintiff and has certain rights with respect to any enforcement of Patents contained within the Duke IP in the event Precision does not enforce such action, Precision shall, at Gilead’s request, join Gilead as a party to such suit and participate with its own counsel at [***] cost and expensePatents.