Common use of Prosecution of Infringement Clause in Contracts

Prosecution of Infringement. (a) The Parties shall promptly notify one another in writing of any and all actual or threatened infringements by Third Parties of any Patents within the Technology that relate to a Product in the Licensed Field that is known to them, and in any event within thirty (30) days of learning of such infringement. (b) With respect to actual or threatened infringements of Patents within the Technology with respect to the Products, Spectrum shall have the first right, but not the obligation, to file suit or take other action to prevent such infringements of any such Patents. To the extent Spectrum takes such action, Spectrum shall control any such action and may enter into settlements, stipulated judgments or other arrangements respecting such infringement, at its own expense; provided, however, that such proposed settlements, judgments or arrangements shall be subject to Indena’s consent, not to be unreasonably withheld. In the event that Spectrum takes such action, Spectrum shall indemnify, defend and hold Indena harmless from any costs, expenses and liabilities respecting the action for such claimed infringement. Indena shall permit an action to be brought by Spectrum in Indena’s name if required by law. Indena agrees to provide all assistance that Spectrum may reasonably require in any litigation, including providing written evidence, deposition and trial testimony, for which Spectrum shall pay to Indena a reasonable and customary hourly rate of compensation. Spectrum shall keep Indena informed of developments in any such action, including, to the extent permissible by law, the status of any settlement negotiations and the terms of any offer related thereto. Indena shall have the right at its own expense to be represented by counsel in any such action. Any damages or other recovery from an infringement action undertaken by Spectrum pursuant to this Section 4.3.1(b) shall [***]. (c) Spectrum shall promptly notify Indena in writing of its intention with regard to any such infringement. In the event that Spectrum elects not to take action against an actual or threatened infringement, Indena shall have the right to take action against such infringement, in which case Indena shall (i) pay any and all costs and expenses incurred in such action, (ii) indemnify, defend and hold Spectrum harmless from any costs, expenses or liability respecting all such action, and (iii) retain any and all recovery from such action. Spectrum agrees to provide all assistance that Indena may reasonably require in any litigation, including providing written evidence, deposition and trial testimony, for which Indena shall pay to Spectrum a reasonable hourly rate of compensation.

Prosecution of Infringement. During the Term, each Party shall (I) give prompt notice to the other Party of any Third Party act that (X) concerns any product(s) (a) The Parties shall promptly notify one another in writing of any that contain fentanyl as the sole API *** and all actual or threatened infringements by Third Parties of any Patents within (Y) may infringe the Technology that relate to a Product Licensed Patent Rights and/or the Marks in the Licensed Field that is known Territory and (II) cooperate with the other Party to them, and in any event within thirty (30) days of learning of terminate such infringement. (b) With respect to actual or threatened infringements of Patents within the Technology . If legal proceedings become necessary with respect to any such act, Meda shall, in each country in which Meda’s rights to the ProductsLicensed Patent Rights and Marks under this Agreement are exclusive, Spectrum shall have the first rightright to bring and control such action or proceeding concerning the potential or actual infringement, but not using counsel reasonably acceptable to BDSI, and Meda shall solely bear the obligationcost with respect thereto. If 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 remedy, BDSI shall join such action and will execute, and cause its Affiliates to file suit execute, all documents necessary for Meda to initiate litigation to prosecute and maintain such action. The above notwithstanding, Meda may only settle or take other action to prevent such infringements enter into any form of voluntary disposition of any such Patents. To the extent Spectrum takes such action, Spectrum shall control any such action and may enter into settlements, stipulated judgments or other arrangements respecting such infringement, at its own expense; provided, however, that such proposed settlements, judgments or arrangements shall be subject to Indenaclaim 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 Meda’s expense, such assistance and cooperation to 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 that Spectrum takes 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, Spectrum shall indemnifyor the Parties are unable to reach an agreement concerning the sharing of the costs of pursuing any actual, defend potential, or alleged infringer (and hold Indena harmless increased share of any proceeds from any costs, expenses and liabilities respecting the 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 claimed infringement. Indena discussions, BDSI may take (but shall permit an have no obligation to take) such action to be brought by Spectrum in Indena’s name if required by law. Indena agrees to provide all assistance that Spectrum may reasonably require in any litigationas it deems appropriate, including providing written evidencethe filing of a lawsuit against such Third Party. In such event Meda will provide such assistance and cooperation to BDSI as may be necessary, deposition at BDSI’s cost and trial testimonyexpense, for which Spectrum and BDSI shall pay be entitled to Indena a reasonable and customary hourly rate retain the entire balance of compensation. Spectrum shall keep Indena informed of developments in any recovery or settlement from any such action, including, to the extent permissible by law, the status of any settlement negotiations and the terms of any offer related thereto. Indena shall have the right at its own expense to be represented by counsel in any such action. Any damages or other recovery from an infringement action undertaken by Spectrum pursuant to this Section 4.3.1(b) shall [***]. (c) Spectrum shall promptly notify Indena in writing of its intention with regard to any such infringement. In the event that Spectrum elects not to take action against an actual or threatened infringement, Indena shall have the right to take action against such infringement, in which case Indena shall (i) pay any and all costs and expenses incurred in such action, (ii) indemnify, defend and hold Spectrum harmless from any costs, expenses or liability respecting all such action, and (iii) retain any and all recovery from such action. Spectrum agrees to provide all assistance that Indena may reasonably require in any litigation, including providing written evidence, deposition and trial testimony, for which Indena shall pay to Spectrum a reasonable hourly rate of compensation.

Prosecution of Infringement. (a) The Parties During the Term, each Party shall promptly notify one another in writing 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 all (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 threatened infringements by Third Parties Licensed Marks, (ii) any statutory act of infringement under the Xxxxx-Xxxxxx Act (including but not limited to on account of any Patents within 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 Technology that relate terms of this Agreement in a manner adverse to a Product Collegium’s interests in the Licensed Field that is known order to themenable 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 any event within thirty (30) days of learning of such infringementsettlement by BDSI shall be ***. (b) With respect In the event that BDSI decides not to actual enforce, or threatened infringements of Patents to abandon or discontinue the enforcement of, any Fentanyl-Specific Patent against any Third Party infringer thereof, BDSI will notify Collegium and the Parties will use Commercially Reasonable Efforts in good faith to agree within *** (or, in the Technology with respect to the Products, Spectrum shall have the first right, but not the obligation, to file suit or take other action to prevent such infringements case of any statutory act of infringement under the Xxxxx-Xxxxxx Act, within ***) after Collegium’s receipt of such Patents. To notice on an approach to address such infringement in a way that is designed to preserve both the extent Spectrum takes such actionvalidity and enforceability of the infringed Fentanyl-Specific Patent and the commercial value of the Licensed Products in the Territory, Spectrum shall control any which approach may include (without limitation) giving Collegium the right to initiate litigation to prosecute or maintain such action and may enter into settlements, stipulated judgments or other arrangements respecting such infringement, at its own expense; provided, however, that such proposed settlements, judgments or arrangements shall be subject to Indena’s consent, not to be unreasonably withheldagainst any Third Party infringer. In the event that Spectrum takes the Parties are unable to agree upon a reasonable course of action within such ***, as applicable, then BDSI shall authorize Collegium to enforce the applicable Fentanyl-Specific Patent against the Third Party infringer thereof. Without limiting the foregoing, if BDSI has authorized an infringement action by Collegium pursuant to this Section 7.03, but Collegium is not recognized by the applicable court or other relevant body as having the requisite standing to pursue such action, Spectrum then at Collegium’s written request, Collegium shall indemnifybe entitled to join BDSI as a necessary party to such action and BDSI shall reasonably *** Confidential Information has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to this omitted information. cooperate with Collegium, defend and hold Indena harmless from any costsat Collegium’s expense. Collegium shall not enter into a settlement, expenses and liabilities respecting the action for such claimed infringement. Indena shall permit an action to be brought by Spectrum in Indena’s name if required by law. Indena agrees to provide all assistance that Spectrum may reasonably require in any litigationconsent judgment, including providing written evidence, deposition and trial testimony, for which Spectrum shall pay to Indena a reasonable and customary hourly rate or other voluntary disposition of compensation. Spectrum shall keep Indena informed of developments in any such actioninfringement action by Collegium without BDSI’s prior written approval. Any damages, includingmonetary awards, to or other amounts recovered or received in settlement by Collegium shall be ***. Notwithstanding the extent permissible by lawforegoing, the status of any settlement negotiations and the terms of any offer related thereto. Indena BDSI, at its expense, shall have the right at its own expense to be represented by counsel of its choice in any such action. Any damages or other recovery from an infringement action undertaken proceeding governed by Spectrum pursuant to this Section 4.3.1(b) shall [***]7.03(b). (c) Spectrum shall promptly notify Indena in writing of its intention with regard to any such infringement. In the event that Spectrum elects not to take action against an actual or threatened infringement, Indena shall have the right to take action against such infringement, in which case Indena shall (i) pay any and all costs and expenses incurred in such action, (ii) indemnify, defend and hold Spectrum harmless from any costs, expenses or liability respecting all such action, and (iii) retain any and all recovery from such action. Spectrum agrees to provide all assistance that Indena may reasonably require in any litigation, including providing written evidence, deposition and trial testimony, for which Indena shall pay to Spectrum a reasonable hourly rate of compensation.

Prosecution of Infringement. (a) The Parties During the Term, each Party shall promptly notify one another in writing 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 all (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 threatened infringements by Third Parties Licensed Marks, (ii) any statutory act of infringement under the Xxxxx-Xxxxxx Act (including but not limited to on account of any Patents within 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 Technology that relate terms of this Agreement in a manner adverse to a Product Collegium’s interests in the Licensed Field that is known order to themenable 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 any event within thirty (30) days of learning of such infringementsettlement by BDSI shall be ***. (b) With respect In the event that BDSI decides not to actual enforce, or threatened infringements of Patents to abandon or discontinue the enforcement of, any Fentanyl-Specific Patent against any Third Party infringer thereof, BDSI will notify Collegium and the Parties will use Commercially Reasonable Efforts in good faith to agree within *** (or, in the Technology with respect to the Products, Spectrum shall have the first right, but not the obligation, to file suit or take other action to prevent such infringements case of any statutory act of infringement under the Xxxxx-Xxxxxx Act, within ***) after Collegium’s receipt of such Patents. To notice on an approach to address such infringement in a way that is designed to preserve both the extent Spectrum takes such actionvalidity and enforceability of the infringed Fentanyl-Specific Patent and the commercial value of the Licensed Products in the Territory, Spectrum shall control any which approach may include (without limitation) giving Collegium the right to initiate litigation to prosecute or maintain such action and may enter into settlements, stipulated judgments or other arrangements respecting such infringement, at its own expense; provided, however, that such proposed settlements, judgments or arrangements shall be subject to Indena’s consent, not to be unreasonably withheldagainst any Third Party infringer. In the event that Spectrum takes the Parties are unable to agree upon a reasonable course of action within such ***, as applicable, then BDSI shall authorize Collegium to enforce the applicable Fentanyl-Specific Patent against the Third Party infringer thereof. Without limiting the foregoing, if BDSI has authorized an infringement action by Collegium pursuant to this Section 7.03, but Collegium is not recognized by the applicable court or other relevant body as having the requisite standing to pursue such action, Spectrum then at Collegium’s written request, Collegium shall indemnifybe entitled to join BDSI as a necessary party to such action and BDSI shall reasonably cooperate with Collegium, defend and hold Indena harmless from any costsat Collegium’s expense. Collegium shall not enter into a settlement, expenses and liabilities respecting the action for such claimed infringement. Indena shall permit an action to be brought by Spectrum in Indena’s name if required by law. Indena agrees to provide all assistance that Spectrum may reasonably require in any litigationconsent judgment, including providing written evidence, deposition and trial testimony, for which Spectrum shall pay to Indena a reasonable and customary hourly rate or other voluntary disposition of compensation. Spectrum shall keep Indena informed of developments in any such actioninfringement action by Collegium without BDSI’s prior written approval. Any damages, includingmonetary awards, to or other amounts recovered or received in settlement by Collegium shall be ***. Notwithstanding the extent permissible by lawforegoing, the status of any settlement negotiations and the terms of any offer related thereto. Indena BDSI, at its expense, shall have the right at its own expense to be represented by counsel of its choice in any such action. Any damages or other recovery from an infringement action undertaken proceeding governed by Spectrum pursuant to this Section 4.3.1(b) shall [***]7.03(b). (c) Spectrum shall promptly notify Indena in writing of its intention with regard to any such infringement. In the event that Spectrum elects not to take action against an actual or threatened infringement, Indena shall have the right to take action against such infringement, in which case Indena shall (i) pay any and all costs and expenses incurred in such action, (ii) indemnify, defend and hold Spectrum harmless from any costs, expenses or liability respecting all such action, and (iii) retain any and all recovery from such action. Spectrum agrees to provide all assistance that Indena may reasonably require in any litigation, including providing written evidence, deposition and trial testimony, for which Indena shall pay to Spectrum a reasonable hourly rate of compensation.