Common use of Prosecution of Infringement Clause in Contracts

Prosecution of Infringement. (a) During the Term, each Party shall give prompt written notice to the other Party of any Third Party act in the Territory that (a) concerns any product(s) that contain fentanyl as the sole API but do not contain naloxone and (b) may infringe the Licensed Patents and/or the Licensed Marks in the Territory. BDSI shall, as between the Parties, have the sole and exclusive right with respect to Licensed Marks and Licensed Patents other than Fentanyl-Specific Patents, and the first right with respect to Fentanyl-Specific Patents, but not, in either case, the obligation, to bring and control any action or proceeding (i) concerning any potential or actual infringement of the Licensed Patents or Licensed Marks, (ii) any statutory act of infringement under the Xxxxx-Xxxxxx Act (including but not limited to on account of any certification provided thereunder (including but not limited to as set forth in Section 7.04)), or (iii) concerning any potential or actual misappropriation of any Licensed Know-How. If BDSI is unable to initiate or to prosecute such action solely in its own name or it is otherwise Commercially Reasonable and reasonably advisable to obtain an effective or interim remedy, Collegium shall, if and as requested by BDSI, join such action and take such other reasonable steps requested by BDSI as are necessary for BDSI to initiate litigation to prosecute and maintain such action, provided, that, under no circumstances will Collegium be obligated to, amend or alter any of the terms of this Agreement in a manner adverse to Collegium’s interests in order to enable BDSI to initiate litigation to prosecute and maintain such action. Collegium shall provide, at BDSI’s expense, such other assistance and cooperation to BDSI as may be necessary to prosecute any action against such Third Party. Any damages, monetary awards, or other amounts recovered or received in settlement by BDSI shall be ***.

Prosecution of Infringement. (a) During the Term, each Party shall (I) give prompt written notice to the other Party of any Third Party act in the Territory that (aX) concerns any product(s) (a) that contain fentanyl as the sole API but do not contain naloxone *** and (bY) may infringe the Licensed Patents Patent Rights and/or the Licensed Marks in the TerritoryTerritory and (II) cooperate with the other Party to terminate such infringement. BDSI If legal proceedings become necessary with respect to any such act, Meda shall, as between in each country in which Meda’s rights to the PartiesLicensed Patent Rights and Marks under this Agreement are exclusive, have the sole and exclusive right with respect to Licensed Marks and Licensed Patents other than Fentanyl-Specific Patents, and the first right with respect to Fentanyl-Specific Patents, but not, in either case, the obligation, to bring and control any such action or proceeding (i) concerning any the CONFIDENTIAL TREATMENT REQUESTED WITH RESPECT TO CERTAIN PORTIONS HEREOF DENOTED WITH “***” potential or actual infringement of infringement, using counsel reasonably acceptable to BDSI, and Meda shall solely bear the Licensed Patents or Licensed Marks, (ii) any statutory act of infringement under the Xxxxx-Xxxxxx Act (including but not limited to on account of any certification provided thereunder (including but not limited to as set forth in Section 7.04)), or (iii) concerning any potential or actual misappropriation of any Licensed Know-Howcost with respect thereto. If BDSI Meda is unable to initiate or to prosecute such action solely in its own name or it is otherwise Commercially Reasonable and reasonably advisable to obtain an effective or interim remedy, Collegium shall, if and as requested by BDSI, BDSI shall join such action and take such other reasonable steps requested by BDSI as are will execute, and cause its Affiliates to execute, all documents necessary for BDSI to initiate litigation to prosecute and maintain such action, provided, that, under no circumstances will Collegium be obligated to, amend or alter any of the terms of this Agreement in a manner adverse to Collegium’s interests in order to enable BDSI Meda to initiate litigation to prosecute and maintain such action. Collegium The above notwithstanding, Meda may only settle or enter into any form of voluntary disposition of any such claim with BDSI’s prior written consent, such consent not to be unreasonably withheld, provided that any such settlement or voluntary disposition which (i) admits fault or wrongdoing, or incurs liability, on the part of BDSI or (ii) adversely affects any of the Licensed Patent Rights, Licensed Know-How, or Marks shall require BDSI’s prior written consent, which BDSI may withhold in its sole discretion. BDSI shall provide, at BDSIMeda’s expense, such other assistance and cooperation to BDSI Meda as may be necessary to successfully prosecute any action against such Third Party. Any damages, monetary awards, or other amounts recovered or received in settlement by Meda shall be applied proportionately first to defray the unreimbursed costs and expenses (including reasonable attorneys’ fees) incurred by Meda and BDSI in the action. If any balance remains, Meda shall be entitled to retain an amount equal to *** percent (***%) of the portion of such balance with the remaining balance being paid to BDSI by Meda. Notwithstanding the foregoing, if Meda wishes BDSI to share the costs of pursuing any such actual, potential, or alleged infringer of the Licensed Patent Rights and/or Marks in the Territory, it shall provide written notice thereof to BDSI within *** of Meda’s becoming aware of the actual, potential, or alleged infringement. Upon written notice thereof, the Parties shall enter into good faith discussions for a period not to exceed *** concerning the possibility and terms of any such cost-sharing, provided that (i) neither Party shall have any obligation to enter into such an arrangement and (ii) any such arrangement will provide for the sharing of any damages, monetary awards, or other amounts recovered or received in settlement of such matter in a manner, based on the portion of such costs to be shared by BDSI, proportionately more favorable to BDSI than the sharing of any such damages, monetary awards, or other amounts recovered or received in settlement absent such cost-sharing, as contemplated under the first paragraph of this Section 7.03. In the event Meda fails to institute proceedings or undertake reasonable efforts to terminate any such Third Party infringement of the Licensed Patent Rights and/or Marks in the Territory within *** of the later of: (a) receiving notification from BDSI of any such infringement or (b) sending notice to BDSI of such action, or the Parties are unable to reach an agreement concerning the sharing of the costs of pursuing any actual, potential, or alleged infringer (and increased share of any proceeds from such action for the benefit of BDSI, as contemplated by the preceding paragraph) within *** of Meda’s notice indicating its desire to enter into such discussions, BDSI may take (but shall have no obligation to take) such action as it deems appropriate, including the filing of a lawsuit against such Third Party. In such event Meda will provide such assistance and cooperation to BDSI as may be necessary, at BDSI’s cost and expense, and BDSI shall be entitled to retain the entire balance of any recovery or settlement from any such action. CONFIDENTIAL TREATMENT REQUESTED WITH RESPECT TO CERTAIN PORTIONS HEREOF DENOTED WITH “***.”

Prosecution of Infringement. (a) During the Term, each Party shall give prompt written notice to the other Party of any Third Party act in the Territory that (a) concerns any product(s) that contain fentanyl buprenorphine as the sole API but do not contain naloxone and (b) may infringe the Licensed Patents and/or the Licensed Marks in the Territory. BDSI shall, as between the Parties, have the sole and exclusive right with respect to Licensed Marks and Licensed Patents other than Fentanyl-Specific Patents, and the first right with respect to Fentanyl-Specific Patents, but not, in either case, the obligation, to bring and control any action or proceeding (i) concerning any potential or actual infringement of the Licensed Patents or Licensed Marks, Marks or (ii) any statutory act of infringement under the Xxxxx-Xxxxxx Act (including but not limited to on account of any certification provided thereunder (including but not limited to as set forth in Section 7.04)), or (iii) concerning any potential or actual misappropriation of any Licensed Know-How. If BDSI is unable to initiate or to prosecute such action solely in its own name or it is otherwise Commercially Reasonable and reasonably advisable to obtain an effective or interim remedy, Collegium Purdue shall, if and as requested by BDSI and at BDSI’s sole expense (which shall be reasonable and documented), join such action and take such other reasonable steps requested by BDSI as are necessary for BDSI to initiate litigation to prosecute and maintain such action, provided, that, under no circumstances will Collegium Purdue be obligated to, amend or alter any of the terms of this Agreement in a manner adverse to CollegiumPurdue’s interests in order to enable BDSI to initiate litigation to prosecute and maintain such action. Collegium Purdue shall provide, at BDSI’s expensesole expense (which shall be reasonable and documented), such other assistance and cooperation to BDSI as may be necessary to prosecute any action against such Third Party. Any damages, monetary awards, or other Confidential Treatment Requested by BioDelivery Sciences International, Inc. Confidential treatment requested with respect to certain portions hereof denoted with “***” amounts recovered or received in settlement by BDSI shall be applied proportionately first to defray the unreimbursed reasonable, documented costs and expenses (including reasonable attorneys’ fees) incurred by Purdue and BDSI in the action, with the remaining balance thereof (A) to be retained by BDSI if and to the extent that the amounts recovered or received by BDSI pertain to Licensed Patents other than any Buprenorphine-Specific Patents or that pertain to Buprenorphine-Specific Patents but are recovered or received with respect to the manufacture, use, sale, or import of a product other than a Licensed Product or (B) to be split *** to Purdue and *** to BDSI if and to the extent that the amounts recovered or received by BDSI directly pertain to any Buprenorphine-Specific Patents and the manufacture, use, sale, or import of a Licensed Product.

Prosecution of Infringement. (a) During the Term, each Party shall give prompt written notice to the other Party of any Third Party act in the Territory that (a) concerns any product(s) that contain fentanyl buprenorphine as the sole API but do not contain naloxone and (b) may infringe the Licensed Patents and/or the Licensed Marks in the Territory. BDSI shall, as between the Parties, have the sole and exclusive right with respect to Licensed Marks and Licensed Patents other than Fentanyl-Specific Patents, and the first right with respect to Fentanyl-Specific Patents, but not, in either case, the obligation, to bring and control any action or proceeding (i) concerning any potential or actual infringement of the Licensed Patents or Licensed Marks, Marks or (ii) any statutory act of infringement under the Xxxxx-Xxxxxx Act (including but not limited to on account of any certification provided thereunder (including but not limited to as set forth in Section 7.04)), or (iii) concerning any potential or actual misappropriation of any Licensed Know-How. If BDSI is unable to initiate or to prosecute such action solely in its own name or it is otherwise Commercially Reasonable and reasonably advisable to obtain an effective or interim remedy, Collegium Purdue shall, if and as requested by BDSI and at BDSI’s sole expense (which shall be reasonable and documented), join such action and take such other reasonable steps requested by BDSI as are necessary for BDSI to initiate litigation to prosecute and maintain such action, provided, that, under no circumstances will Collegium Purdue be obligated to, amend or alter any of the terms of this Agreement in a manner adverse to CollegiumPurdue’s interests in order to enable BDSI to initiate litigation to prosecute and maintain such action. Collegium Purdue shall provide, at BDSI’s expensesole expense (which shall be reasonable and documented), such other assistance and cooperation to BDSI as may be necessary to prosecute any action against such Third Party. Any damages, monetary awards, or other amounts recovered or received in settlement by BDSI shall be applied proportionately first to defray the unreimbursed reasonable, documented costs and expenses (including reasonable attorneys’ fees) incurred by Purdue and BDSI in the action, with the remaining balance thereof (A) to be retained by BDSI if and to the extent that the amounts recovered or received by BDSI pertain to Licensed Patents other than any Buprenorphine-Specific Patents or that pertain to Buprenorphine-Specific Patents but are recovered or received with respect to the manufacture, use, sale, or import of a product other than a Licensed Product or (B) to be split *** to Purdue and *** to BDSI if and to the extent that the amounts recovered or received by BDSI directly pertain to any Buprenorphine-Specific Patents and the manufacture, use, sale, or import of a Licensed Product.