Protection of Patent Rights. 12.01 Dainippon shall at its own expense and responsibility maintain the Patent Rights in the Territory, and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status and maintenance of the Patent Rights and the prosecution of any patent applications therein by updating Schedule 1.17, and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent. 12.02 Each party shall inform the other party promptly when it becomes aware that a third party is infringing or attempting to infringe the Patent Rights. 12.03 Dainippon is not obliged to indemnify Sunesis, its Affiliate(s) and the Sublicensee(s) for any damage or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate a suit with respect to a particular alleged infringement, Sunesis has failed by itself or through its designee to initiate an Enforcement Action to stop the infringement or use reasonable efforts to settle such infringement, then Dainippon shall be entitled, but have no obligation, to initiate an Enforcement Action at its expense against the infringing party. The party initiating an Enforcement Action (hereinafter [*] Certain information on this page has been redacted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. referred to as the “Enforcing Party”) shall control such action, provided that the other party (hereinafter referred to as the “Non-Enforcing Party”) shall have the right to participate therein with advisory counsel of its own choice at its own expense. All recoveries received from an action to enforce the Patent Rights shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Party. 12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties.
Appears in 2 contracts
Samples: License Agreement (Sunesis Pharmaceuticals Inc), License Agreement (Sunesis Pharmaceuticals Inc)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall at its own expense and responsibility maintain keep the Patent Rights other party currently informed of all steps to be taken in the Territorypreparation, and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status prosecution and maintenance of the Patent Rights all of its patents and the prosecution of any patent applications therein by updating Schedule 1.17, which claim an Invention and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform furnish the other party with copies of patents and applications, amendments thereto and other related correspondence relating to such Invention to and from patent offices and permit the other party to offer its comments thereon before the Inventor makes a submission to a patent office which could materially affect the scope or validity of the patent coverage that may result. The non-Inventor party shall offer its comments promptly. Onyx and Warner shall each promptly when it becomes aware that a third party is infringing or attempting notify the other of any infringement and/or unauthorized use of an Invention which comes to infringe the Patent Rightsits attention.
12.03 Dainippon is not obliged (b) The non-Inventor party may request in writing that the Inventor take specific, reasonable actions to indemnify Sunesis(i) prepare, its Affiliate(s) and the Sublicensee(s) for any damage file or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate prosecute a suit patent application with respect to an Invention, (ii) maintain any patents issued with respect to an Invention, (iii) protect against abandonment of a particular alleged infringement, Sunesis has failed by itself patent or through its designee to initiate application which claims an Enforcement Action to stop the Invention or (iv)
obtain a discontinuance of an infringement or unauthorized use of such patent or application. If such actions are not undertaken within thirty days of the Inventor’s receipt of such written request and timely pursued thereafter, the Inventor shall permit, and the non-Inventor party at its option and expense may undertake, such actions. The party not undertaking such actions shall fully cooperate with the other party and shall provide to the other party whatever assignments and other documents that may be needed in connection therewith. The party not undertaking such actions may require a suitable indemnity against all damages, costs and expenses and impose such other reasonable efforts conditions as such party’s advisors may require.
(c) If either party commences any actions or proceedings (legal or otherwise) pursuant to settle such infringementthis Section, then Dainippon it shall be entitled, but have no obligation, to initiate an Enforcement Action prosecute the same vigorously at its expense against the infringing party. The party initiating an Enforcement Action (hereinafter [*] Certain information on this page has been redacted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect shall not abandon or compromise them or fail to the omitted portions. referred to as the “Enforcing Party”) shall control such action, provided that exercise any rights of appeal without giving the other party (hereinafter referred to as the “Non-Enforcing Party”) shall have the right to participate therein with advisory counsel of its own choice take over their conduct at its own expense. All recoveries received from The party finally conducting legal actions or proceedings against an action to enforce the Patent Rights alleged infringer or other party shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Party.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect entitled to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a damages or costs awarded against such infringer or other party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties.
Appears in 2 contracts
Samples: Research and Development (Onyx Pharmaceuticals Inc), Research and Development (Onyx Pharmaceuticals Inc)
Protection of Patent Rights. 12.01 Dainippon 10.4.1 The Inventor shall at its own expense prepare, prosecute and responsibility maintain the Patent Rights in the Territory, (and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status and maintenance of the Patent Rights and the prosecution of any patent applications therein by updating Schedule 1.17, and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform the other party promptly when it becomes aware that a third party is infringing or attempting to infringe the Patent Rights.
12.03 Dainippon is not obliged to indemnify Sunesis, its Affiliate(s) and the Sublicensee(s) for any damage or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate a suit with respect to a particular alleged infringement, Sunesis has failed by itself or through its designee to initiate an Enforcement Action to stop the infringement or use reasonable efforts to settle keep the other Party currently informed of all steps to be taken in such infringementpreparation, then Dainippon prosecution and maintenance) all of its Patent Rights which claim an Invention and upon request shall be entitled, but have no obligation, furnish the other Party with copies of such Patent Rights and other related correspondence relating to initiate an Enforcement Action at such Invention to and from patent offices and permit the other Party to offer its expense against comments thereon before the infringing party. The party initiating an Enforcement Action (hereinafter [Inventor makes a submission to a patent office which *] Certain information on ** Portions of this page has have been redacted omitted pursuant to a request for Confidential Treatment and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to could materially affect the omitted portionsscope or validity of the patent coverage that may result. referred to as the “Enforcing Party”) The non-Inventor Party shall control such action, provided that offer its comments promptly. Ligand and BMS shall each promptly notify the other party of any infringement or unauthorized use of an Invention which comes to its attention.
10.4.2 If the Inventor fails to (hereinafter referred to as i) fulfill its obligations under this Article 10, or (ii) protect against abandonment of a Patent Right which claims an Invention, the “NonInventor shall permit the non-Enforcing Inventor Party”) shall have the right to participate therein with advisory counsel of its own choice , at its own option and expense. All recoveries received from an action , to enforce the undertake such obligations, and thereafter such Patent Rights shall be first applied deemed to reimburse the Enforcing be assigned to such non-Inventor Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing The Party and [*] percent ([*]%) to the Non-Enforcing Party.
12.04 The Non-Enforcing Party not undertaking such actions shall fully cooperate with the Enforcing other Party with respect to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a party-plaintiff in any such Enforcement Action provide to the extent such joinder is required by law to bring such action, provided other Party whatever assignments and other documents that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the partiesneeded in connection therewith.
Appears in 1 contract
Samples: Research, Development and License Agreement (Ligand Pharmaceuticals Inc)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall at prepare, prosecute, and maintain (and shall keep the other party currently informed of all steps to be taken in such preparation, prosecution and maintenance of) all of its own expense and responsibility maintain the Patent Rights in which claim an Invention and at the Territoryother party's request, and agrees to take any necessary steps to extend shall furnish the patent term other party with copies of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the such Patent Rights and at the request other related correspondence relating to such Invention to and expense of Dainippon, shall take any necessary steps to extend the from patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status offices and maintenance of the Patent Rights and the prosecution of any patent applications therein by updating Schedule 1.17, and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform permit the other party to offer its comments thereon before the Inventor makes a submission to a patent office which could materially affect the scope or validity of the patent coverage that may result. The non-Inventor party shall offer-its comments promptly. CoCensys and Warner shall each promptly when it becomes aware that a third party is infringing notify the other of any infringement or attempting unauthorized use of an Invention which comes to infringe the Patent Rightsits attention.
12.03 Dainippon is not obliged (b) If the Inventor fails to indemnify Sunesis(i) fulfill its obligations under this Section 4 or (ii) protect against abandonment of a Patent Right which claims an Invention, its Affiliate(s) and the Sublicensee(s) for any damage or loss caused from infringement by any third party of Inventor shall permit the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designeenon-Inventor party, at its option and expense, to undertake such actionobligations. The party not undertaking such actions shall fully cooperate with the other party and shall provide to the other party whatever assignments and other documents that may be needed in connection therewith. The party not undertaking such actions may require a suitable indemnity against all damages, suit or proceeding costs and expenses and impose such other reasonable conditions as Sunesis such party's advisors may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”)require. If within ninety (90) days after Dainippon has requested Sunesis to initiate a suit party undertakes the obligations of "Inventor" under this Section 4 with respect to a particular alleged infringement, Sunesis has failed by itself or through its designee to initiate an Enforcement Action to stop the infringement or use reasonable efforts to settle such infringement, then Dainippon shall be entitled, but have no obligation, to initiate an Enforcement Action at its expense against the infringing party. The party initiating an Enforcement Action (hereinafter [*] Certain information on this page has been redacted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. referred to as the “Enforcing Party”) shall control such action, provided that any Patent Rights of the other party (hereinafter referred to as under this Section 4.3(b), it shall prosecute and maintain the “Non-Enforcing Party”) shall have the right to participate therein with advisory counsel of its own choice same vigorously at its own expense. All recoveries received from an action to enforce the Patent Rights shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Party.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon not abandon or compromise them or fail to exercise any rights of appeal without giving the request of other party the Enforcing Partyright to take over the prosecuting party's conduct, join as a at such other party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties's own expense.
Appears in 1 contract
Samples: Research, Development and Marketing Collaboration Agreement (Cocensys Inc)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall keep the other party currently informed of all steps to be taken in the preparation, prosecution and maintenance of all of its patents and patent applications now or hereafter existing which claim such Invention and shall furnish the other party with copies of patents and applications, amendments thereto and other related correspondence relating to such Invention to and from patent offices and permit the other party to offer its comments thereon before the Inventor makes a submission to a patent office which could materially affect the scope or validity of the patent coverage that may result. The non-Inventor party shall offer its 18 18 comments promptly. LeukoSite and Warner shall each promptly notify the other of any infringement and/or unauthorized use of an Invention that comes to its attention.
(b) The non-Inventor party may request in writing that the Inventor take specific, reasonable actions to (i) prepare, file or prosecute patent applications in the United States of America and all other countries of the world with respect to an Invention, (ii) maintain any patents issued with respect to an Invention, (iii) protect against abandonment of a patent or application which claims an Invention or (iv) obtain a discontinuance of an infringement or unauthorized use of such patent or application. If such actions are not undertaken within thirty days of the Inventor's receipt of such written request and timely pursued thereafter, the Inventor shall permit, and the non-Inventor party at its own option and expense and responsibility maintain the Patent Rights may undertake, such actions in the Territory, name and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainipponthe Inventor. Additionally, Dainippon agrees to keep Sunesis informed regarding the status and maintenance of the Patent Rights and the prosecution of any patent applications therein by updating Schedule 1.17, and without limiting the foregoing The party not undertaking such actions shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform fully cooperate with the other party promptly when it becomes aware and shall provide to the other party whatever documents that may be needed in connection therewith. The party not undertaking such actions may require a third party is infringing or attempting to infringe the Patent Rightssuitable indemnity against all damages, costs and expenses and impose such other reasonable conditions as such party's advisors may require.
12.03 Dainippon is not obliged (c) If either party commences any actions or proceedings (legal or otherwise) pursuant to indemnify Sunesisthis Section, its Affiliate(s) and it shall prosecute the Sublicensee(s) for any damage or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate a suit with respect to a particular alleged infringement, Sunesis has failed by itself or through its designee to initiate an Enforcement Action to stop the infringement or use reasonable efforts to settle such infringement, then Dainippon shall be entitled, but have no obligation, to initiate an Enforcement Action same vigorously at its expense against the infringing party. The party initiating an Enforcement Action (hereinafter [*] Certain information on this page has been redacted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect shall not abandon or compromise them or fail to the omitted portions. referred to as the “Enforcing Party”) shall control such action, provided that exercise any rights of appeal without giving the other party (hereinafter referred to as the “Non-Enforcing Party”) shall have the right to participate therein with advisory counsel of its own choice take over their conduct at its own expense. All recoveries received from The party finally conducting legal actions or proceedings against an alleged infringer or other party shall be entitled to any damages or costs awarded against such infringer or other party, provided, however, that if Warner initiates such action to enforce protect a Warner Product or Warner-LeukoSite Product, then the Patent Rights amount of the award less applicable legal expenses incurred by Warner will be considered Net Sales of the applicable Warner or Warner-LeukoSite Product, and if LeukoSite initiates such action to protect a LeukoSite Product, the amount of the award less applicable legal expenses incurred by LeukoSite shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement considered Net Sales of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Party.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties.applicable LeukoSite Product
Appears in 1 contract
Samples: Research, Development and Marketing Agreement (Leukosite Inc)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall at its own expense and responsibility maintain keep the Patent Rights other party currently informed of all steps to be taken in the Territorypreparation, and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status prosecution and maintenance of the Patent Rights all of its patents and the prosecution of any patent applications therein by updating Schedule 1.17, now or hereafter existing which claim such Invention and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform furnish the other party promptly when it becomes aware that with copies of patents and applications, amendments thereto and other related correspondence relating to such Invention to and from patent offices and permit the other party to offer its comments thereon before the Inventor makes a third party is infringing submission to a patent office which could materially affect the scope or attempting to infringe the Patent Rights.
12.03 Dainippon is not obliged to indemnify Sunesis, its Affiliate(s) and the Sublicensee(s) for any damage or loss caused from infringement by any third party validity of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis patent coverage that may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate a suit with respect to a particular alleged infringement, Sunesis has failed by itself or through its designee to initiate an Enforcement Action to stop the infringement or use reasonable efforts to settle such infringement, then Dainippon shall be entitled, but have no obligation, to initiate an Enforcement Action at its expense against the infringing partyresult. The non-Inventor party initiating an Enforcement Action (hereinafter [*] Certain information on this page shall offer its * Confidential treatment requested: material has been redacted omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested 18 18 comments promptly. LeukoSite and Warner shall each promptly notify the other of any infringement and/or unauthorized use of an Invention that comes to its attention.
(b) The non-Inventor party may request in writing that the Inventor take specific, reasonable actions to (i) prepare, file or prosecute patent applications in the United States of America and all other countries of the world with respect to an Invention, (ii) maintain any patents issued with respect to an Invention, (iii) protect against abandonment of a patent or application which claims an Invention or (iv) obtain a discontinuance of an infringement or unauthorized use of such patent or application. If such actions are not undertaken within thirty days of the omitted portionsInventor's receipt of such written request and timely pursued thereafter, the Inventor shall permit, and the non-Inventor party at its option and expense may undertake, such actions in the name and on behalf of the Inventor. referred to as the “Enforcing Party”) The party not undertaking such actions shall control such action, provided that fully cooperate with the other party and shall provide to the other party whatever documents that may be needed in connection therewith. The party not undertaking such actions may require a suitable indemnity against all damages, costs and expenses and impose such other reasonable conditions as such party's advisors may require.
(hereinafter referred c) If either party commences any actions or proceedings (legal or otherwise) pursuant to as this Section, it shall prosecute the “Non-Enforcing Party”) same vigorously at its expense and shall have not abandon or compromise them or fail to exercise any rights of appeal without giving the other party the right to participate therein with advisory counsel of its own choice take over their conduct at its own expense. All recoveries received from The party finally conducting legal actions or proceedings against an alleged infringer or other party shall be entitled to any damages or costs awarded against such infringer or other party, provided, however, that if Warner initiates such action to enforce protect a Warner Product or Warner-LeukoSite Product, then the Patent Rights amount of the award less applicable legal expenses incurred by Warner will be considered Net Sales of the applicable Warner or Warner-LeukoSite Product, and if LeukoSite initiates such action to protect a LeukoSite Product, the amount of the award less applicable legal expenses incurred by LeukoSite shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement considered Net Sales of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Party.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties.applicable LeukoSite Product
Appears in 1 contract
Samples: Research, Development and Marketing Agreement (Leukosite Inc)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall at its own expense prepare, prosecute and responsibility maintain the Patent Rights in the Territory, (and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status and maintenance of the Patent Rights and the prosecution of any patent applications therein by updating Schedule 1.17, and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform the other party promptly when it becomes aware that a third party is infringing or attempting to infringe the Patent Rights.
12.03 Dainippon is not obliged to indemnify Sunesis, its Affiliate(s) and the Sublicensee(s) for any damage or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate a suit with respect to a particular alleged infringement, Sunesis has failed by itself or through its designee to initiate an Enforcement Action to stop the infringement or use reasonable efforts to settle keep the other Party currently informed of all steps to be taken in such infringementpreparation, then Dainippon prosecution and maintenance) all of its Patent Rights which claim an Invention and upon request shall be entitled, but have no obligation, furnish the other Party with copies of such Patent Rights and other related correspondence relating to initiate an Enforcement Action at such Invention to and from patent offices and permit the other Party to offer its expense against comments thereon before the infringing party. The party initiating an Enforcement Action (hereinafter [Inventor makes a submission to a patent office which could materially affect the scope or validity *] Certain information on ** Portions of this page has have been redacted omitted pursuant to a request for Confidential Treatment and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect Ligand Initial [/s/WR] Organon Initial [/s/JV] of the patent coverage that may result. The Inventor will inform the Non-Inventor of the countries in which it intends to the omitted portionsfile for Patent Rights. referred to as the “Enforcing Party”) The non-Inventor Party shall control such actionoffer its comments promptly, provided including any request that the Patent Rights be filed in additional countries. Ligand and Organon shall each promptly notify the other party of any infringement or unauthorized use of an Invention which comes to its attention.
(hereinafter referred b) If the Inventor fails to as (i) fulfill its obligations under this Section 10, (ii) protect against abandonment of a Patent Right which claims an Invention, or (iii) file for Patent Rights in a country requested by the “Non-Enforcing Inventor, the Inventor shall permit the non-Inventor Party”) shall have the right to participate therein with advisory counsel of its own choice , at its own option and expense. All recoveries received from an action , to enforce the undertake such obligations, and thereafter such Patent Rights shall be first applied deemed to reimburse be assigned to such non-Inventor Party in the Enforcing Party’s, affected countries. The Party not undertaking such actions shall fully cooperate with the other Party and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, shall provide to the extent the same pertains other Party whatever assignments and other documents that may be needed in connection therewith. The Party finally conducting legal actions or proceedings against an alleged infringer or other Party shall be entitled to an infringement of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing any damages or costs awarded against such infringer or other Party.
12.04 The Non-Enforcing (c) In the event Ligand or Organon becomes aware of any actual or threatened infringement of any Patent Right of either Party which claims an Invention, that Party shall cooperate promptly notify the other, and the Parties' representatives shall promptly discuss how to proceed in connection with such actual or threatened infringement. If both Parties participate in the Enforcing conduct of a legal action pursuant to this Section 10.4(c), (i) if one Party files, the actual costs and expenses of such action shall be reimbursed first to the filing Party and then to the participating Party out of any damages or other monetary awards recovered therein in favor of Organon or Ligand, or (ii) if both Parties file, the actual costs and expenses of such action shall be reimbursed proportionally between the Parties out of any damages or other monetary awards recovered therein in favor of Organon or Ligand, based on the actual costs and expenses incurred by each Party in connection with respect such action. Any remaining damages received by Organon shall then be treated as Net Sales of Product by Organon. If one Party alone conducts such legal action, ***percent (***%) of the actual costs and expenses of such action shall be reimbursed to such Party out of any Enforcement Actiondamages or other monetary awards; any remaining damages shall then be treated as Net Sales of Product. If either Party commences any actions or proceedings (legal or otherwise) pursuant to this Section 10.4(c), in all aspects it shall prosecute the same vigorously at its expense and shall make available not abandon or compromise them or fail to exercise any relevant personnel, records, documents, information, evidence, samples, papers, materials and rights of appeal without giving the like for other Party the action in its possession, and shall upon right to take over the request of the Enforcing prosecuting Party, join as a party-plaintiff in any 's conduct at such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the partiesother Party's own expense.
Appears in 1 contract
Samples: Research, Development and License Agreement (Ligand Pharmaceuticals Inc)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall at its own expense and responsibility maintain keep the Patent Rights other party currently informed of all steps to be taken in the Territorypreparation, and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status prosecution and maintenance of the Patent Rights all of its patents and the prosecution of any patent applications therein by updating Schedule 1.17, which claim an Invention and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform furnish the other party with copies of patents and applications, amendments thereto and other related correspondence relating to such Invention to and from patent offices and permit the other party to offer its comments thereon before the Inventor makes a submission to a patent office which could materially affect the scope or validity of the patent coverage that may result. The non-Inventor party shall offer its comments promptly. Onyx and Warner shall each promptly when it becomes aware that a third party is infringing or attempting notify the other of any infringement and/or unauthorized use of an Invention which comes to infringe the Patent Rightsits attention.
12.03 Dainippon is not obliged (b) The non-Inventor party may request in writing that the Inventor take specific, reasonable actions to indemnify Sunesis(i) prepare, its Affiliate(s) and the Sublicensee(s) for any damage file or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate prosecute a suit patent application with respect to an Invention, (ii) maintain any patents issued with respect to an Invention, (iii) protect against abandonment of a particular alleged infringement, Sunesis has failed by itself patent or through its designee to initiate application which claims an Enforcement Action to stop the Invention or (iv) obtain a discontinuance of an infringement or unauthorized use of such patent or application. If such actions are not undertaken within thirty days of the Inventor’s receipt of such written request and timely pursued thereafter, the Inventor shall permit, and the non-Inventor party at its option and expense may undertake, such actions. The party not undertaking such actions shall fully cooperate with the other party and shall provide to the other party whatever assignments and other documents that may be needed in connection therewith. The party not undertaking such actions may require a suitable indemnity against all damages, costs and expenses and impose such other reasonable efforts conditions as such party’s advisors may require.
(c) If either party commences any actions or proceedings (legal or otherwise) pursuant to settle such infringementthis Section, then Dainippon it shall be entitled, but have no obligation, to initiate an Enforcement Action prosecute the same vigorously at its expense against the infringing party. The party initiating an Enforcement Action (hereinafter [*] Certain information on this page has been redacted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect shall not abandon or compromise them or fail to the omitted portions. referred to as the “Enforcing Party”) shall control such action, provided that exercise any rights of appeal without giving the other party (hereinafter referred to as the “Non-Enforcing Party”) shall have the right to participate therein with advisory counsel of its own choice take over their conduct at its own expense. All recoveries received from The party finally conducting legal actions or proceedings against an action to enforce the Patent Rights alleged infringer or other party shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Party.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect entitled to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a damages or costs awarded against such infringer or other party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties.
Appears in 1 contract
Samples: Research and Development Collaboration Agreement (Onyx Pharmaceuticals Inc)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall keep the other party currently informed of all steps to be taken in the preparation, prosecution and maintenance of all of its patents and patent applications now or hereafter existing which claim such Invention and shall furnish the other party with copies of patents and applications, amendments thereto and other related correspondence relating to such Invention to and from patent offices and permit the other party to offer its comments thereon before the Inventor makes a submission to a patent office which could materially affect the scope or validity of the patent coverage that may result. The non-Inventor party shall offer its comments promptly. LeukoSite and Warner shall each promptly notify the other of any infringement and/or unauthorized use of an Invention that comes to its attention.
(b) The non-Inventor party may request in writing that the Inventor take specific, reasonable actions to (i) prepare, file or prosecute patent applications in the United States of America and all other countries of the world with respect to an Invention, (ii) maintain any patents issued with respect to an Invention, (iii) protect against abandonment of a patent or application which claims an Invention or (iv) obtain a discontinuance of an infringement or unauthorized use of such patent or application. If such actions are not undertaken within thirty days of the Inventor's receipt of such written request and timely pursued thereafter, the Inventor shall permit, and the non-Inventor party at its own option and expense and responsibility maintain the Patent Rights may undertake, such actions in the Territory, name and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainipponthe Inventor. Additionally, Dainippon agrees to keep Sunesis informed regarding the status and maintenance of the Patent Rights and the prosecution of any patent applications therein by updating Schedule 1.17, and without limiting the foregoing The party not undertaking such actions shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform fully 18 18 cooperate with the other party promptly when it becomes aware and shall provide to the other party whatever documents that may be needed in connection therewith. The party not undertaking such actions may require a third party is infringing or attempting to infringe the Patent Rightssuitable indemnity against all damages, costs and expenses and impose such other reasonable conditions as such party's advisors may require.
12.03 Dainippon is not obliged (c) If either party commences any actions or proceedings (legal or otherwise) pursuant to indemnify Sunesisthis Section, its Affiliate(s) and it shall prosecute the Sublicensee(s) for any damage or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate a suit with respect to a particular alleged infringement, Sunesis has failed by itself or through its designee to initiate an Enforcement Action to stop the infringement or use reasonable efforts to settle such infringement, then Dainippon shall be entitled, but have no obligation, to initiate an Enforcement Action same vigorously at its expense against the infringing party. The party initiating an Enforcement Action (hereinafter [*] Certain information on this page has been redacted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect shall not abandon or compromise them or fail to the omitted portions. referred to as the “Enforcing Party”) shall control such action, provided that exercise any rights of appeal without giving the other party (hereinafter referred to as the “Non-Enforcing Party”) shall have the right to participate therein with advisory counsel of its own choice take over their conduct at its own expense. All recoveries received from The party finally conducting legal actions or proceedings against an alleged infringer or other party shall be entitled to any damages or costs awarded against such infringer or other party, provided, however, that if Warner initiates such action to enforce protect a Warner Product or Warner-LeukoSite Product, then the Patent Rights amount of the award less applicable legal expenses incurred by Warner will be considered Net Sales of the applicable Warner or Warner-LeukoSite Product, and if LeukoSite initiates such action to protect a LeukoSite Product, the amount of the award less applicable legal expenses incurred by LeukoSite shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement considered Net Sales of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Partyapplicable LeukoSite Product.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties.
Appears in 1 contract
Samples: Research, Development and Marketing Agreement (Leukosite Inc)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall at its own expense and responsibility maintain keep the Patent Rights other party currently informed of all steps to be taken in the Territorypreparation, and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status prosecution and maintenance of the Patent Rights all of its patents and the prosecution of any patent applications therein by updating Schedule 1.17, which claim an Invention and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform furnish the other party with copies of patents and applications, amendments thereto and other related correspondence relating to such Invention to and from patent offices and permit the other party to offer its comments thereon before the Inventor makes a submission to a patent office which could materially affect the scope or validity of the patent coverage that may result. The non-Inventor party shall offer its comments promptly. Onyx and Warner shall each promptly when it becomes aware that a third party is infringing or attempting notify the other of any infringement and/or unauthorized use of an Invention which comes to infringe the Patent Rightsits attention.
12.03 Dainippon is not obliged (b) The non-Inventor party may request in writing that the Inventor take specific, reasonable actions to indemnify Sunesis(i) prepare, its Affiliate(s) and the Sublicensee(s) for any damage file or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate prosecute a suit patent application with respect to an Invention, (ii) maintain any patents issued with respect to an Invention, (iii) protect against abandonment of a particular alleged infringement, Sunesis has failed by itself patent or through its designee to initiate application which claims an Enforcement Action to stop the Invention or (iv) obtain a discontinuance of an infringement or unauthorized use of such patent or application. If such actions are not undertaken within thirty days of the Inventor's receipt of such written request and timely pursued thereafter, the Inventor shall permit, and the non-Inventor party at its option and expense may undertake, such actions. The party not undertaking such actions shall fully cooperate with the other party and shall provide to the other party whatever assignments and other documents that may be needed in connection therewith. The party not undertaking such actions may require a suitable indemnity against all damages, costs and expenses and impose such other reasonable efforts conditions as such party's advisors may require. [**] Confidential Treatment Requested
(c) If either party commences any actions or proceedings (legal or otherwise) pursuant to settle such infringementthis Section, then Dainippon it shall be entitled, but have no obligation, to initiate an Enforcement Action prosecute the same vigorously at its expense against the infringing party. The party initiating an Enforcement Action (hereinafter [*] Certain information on this page has been redacted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect shall not abandon or compromise them or fail to the omitted portions. referred to as the “Enforcing Party”) shall control such action, provided that exercise any rights of appeal without giving the other party (hereinafter referred to as the “Non-Enforcing Party”) shall have the right to participate therein with advisory counsel of its own choice take over their conduct at its own expense. All recoveries received from The party finally conducting legal actions or proceedings against an action to enforce the Patent Rights alleged infringer or other party shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Party.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect entitled to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a damages or costs awarded against such infringer or other party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties.
Appears in 1 contract
Samples: Research, Development and Marketing Collaboration Agreement (Onyx Pharmaceuticals Inc)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall at its own expense and responsibility maintain notify the Patent Rights other Party when it determines that an Invention has been made. With respect to any Inventions reasonably useful in the Territoryfield, and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperateParty responsible for preparation, and have the Sublicensee(s) cooperatefiling, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status prosecution and maintenance of Patents hereunder shall keep the Patent Rights other Party reasonably informed of all steps taken in the preparation, prosecution and maintenance of all of its Patents which claim such Invention, including furnishing the other Party with copies of Patents and other related correspondence relating to the prosecution of any such Patents to and from patent offices. Such Party will permit the other Party to offer its comments on such applications therein by updating Schedule 1.17and prosecution efforts relating to Inventions, and without limiting before such Party makes a submission to a patent office which could materially affect the foregoing scope or validity of the patent coverage that may result. The other Party shall not allow any patent or patent application within offer its comments, if any, promptly after receipt of the Patent Rights to lapse without Sunesis’ mutual consentapplicable document for review.
12.02 Each party shall inform the other party promptly when it becomes aware that a third party is infringing or attempting to infringe the Patent Rights.
12.03 Dainippon is not obliged to indemnify Sunesis, its Affiliate(s(b) and the Sublicensee(s) for any damage or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate a suit with With respect to a particular alleged infringementInventions that are potentially patentable, Sunesis has failed by itself or through its designee to initiate an Enforcement Action to stop the infringement or use reasonable efforts to settle such infringement, then Dainippon shall be entitled, but have no obligation, to initiate an Enforcement Action at its expense against the infringing party. The party initiating an Enforcement Action (hereinafter [*] Certain information on this page has been redacted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. referred to as the “Enforcing Party”) shall control such action, provided Party that the other party (hereinafter referred to as the “Non-Enforcing Party”) shall does not have the right to participate therein control the prosecution of Patents claiming such Invention may request in writing that the other Party take specific, reasonable actions to (i) prepare, file or prosecute Patents with advisory counsel respect to an Invention, in a particular country, (ii) maintain any Patents issued with respect to an Invention, and/or (iii) protect against abandonment of a Patent which claims an Invention. If such actions are not undertaken within sixty (60) days of the controlling Party's [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. receipt of such written request (or if soon, such time as applicable patent rights would be lost due to passage of time) and timely pursued thereafter, the controlling Party shall permit, and the requesting Party at its option and expense may undertake, such actions, and the applicable Patent shall thereafter be deemed to be owned by such Party that undertakes such actions, except as otherwise provided below. The Party not undertaking such actions shall fully cooperate with the other Party and shall provide to the other Party whatever assignments and other documents that may be needed in connection therewith. The Party not undertaking such actions may require a suitable indemnity against all damages, costs and expenses and impose such other reasonable conditions as such Party's advisor may require. The Party not undertaking such actions may later reassume control (and ownership, if applicable) of such Patent by paying the other Party [ * ] of its own choice actual out-of-pocket expenses in conducting such actions.
(c) If either Party commences any actions or proceedings (legal or otherwise) pursuant to this Section 10.3, it shall prosecute the same vigorously at its expense and shall not abandon or compromise them or fail to exercise any rights of appeal without giving the other Party the right to take over their conduct at its own expense. All recoveries received from an action to enforce the Patent Rights shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Party.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties.
Appears in 1 contract
Protection of Patent Rights. 12.01 Dainippon shall 6.1 STC, at its own expense expense, agrees to exercise reasonable diligence in seeking, obtaining and responsibility maintain the Patent Rights maintaining patent protection in the TerritoryUnited States and in those foreign countries deemed appropriate and by STC for LSO Technology, and agrees to take any necessary steps to extend the patent term as apart of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status and maintenance of the Patent Rights and the prosecution of any patent applications therein by updating Schedule 1.17, and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform the other party promptly when it becomes aware that a third party is infringing or attempting to infringe the Patent Rights.
12.03 Dainippon is not obliged to indemnify Sunesis, its Affiliate(s) and the Sublicensee(s) for any damage or loss caused from infringement by any third party of the LSO Patent Rights, but Dainippon shall grant Sunesis and to retain patent counsel for this purpose. In the first rightcase that STC does not seek patent protection, but not CTI will have the obligation, right to institute, by itself or through Sunesis’ designeepursue, at its expense, such actionprotection in the United States and those foreign countries deemed appropriate by CTI. Such patents shall be assigned to STC and shall be subject to all the terms and conditions of the Agreement.
6.2 Any inventions or improvements relating to LSO Technology made jointly by employees or consultants of STC and CTI and its Affiliates after the Effective Date of this Agreement shall be considered the joint property of STC and CTI and shall not be subject to the Royalty Payments set forth above.
6.3 Any inventions or improvements relating to the LSO Technology made separately by employees or consultants of STC or CTI and its Affiliates-during the term of this Agreement shall be considered the separate property of the Party whose employees or consultants made the invention or improvement. Any patent applications filed on such inventions or improvements made separately by STC shall be added to the list of the LSO Patent Rights as specified in Schedule A and shall thereafter be subject to all of the terms and conditions of this Agreement at no additional consideration. Any patent issued on such inventions or improvements made separately by CTI shall be subject to a grant to STC of a royalty-free, suit non-transferable right (without right to sub license other then to Affiliates) for STC to use any such inventions and improvements made by CTI in the business of STC. CTI has no obligation to grant licenses to inventions or proceeding as Sunesis may consider necessary improvements constituting its own property to stop any third party.
6.4 Any patents for inventions or improvements relating to LSO Technology made, separately by employees or consultants of STC and actually conceived prior to the infringement Effective Date of this Agreement and for which invention disclosures have been prepared and documented within thirty (hereinafter referred to as “Enforcement Action”). If within ninety (9030) days after Dainippon has requested Sunesis to initiate a suit with respect to a particular alleged infringement, Sunesis has failed by itself or through its designee to initiate an Enforcement Action to stop the infringement or use reasonable efforts to settle such infringement, then Dainippon Effective Date of this Agreement shall be entitled, but have no obligation, considered to initiate an Enforcement Action at its expense against be the infringing party. The party initiating an Enforcement Action (hereinafter [*] Certain information on this page has been redacted separate property of STC and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect shall be added to the omitted portions. referred list of LSO Patent Rights as specified in Schedule A and shall thereafter be subject to all of the terms and conditions of this Agreement at no additional consideration.
6.5 In those countries foreign to the United States which require working of patents to prevent lapsing of same, CTI shall prepare proofs of steps taken in or for commercial exploitation of the pertinent patents, as requested by STC, and shall forward the “Enforcing Party”) shall control such actionsame in timely manner to STC, provided that the other party (hereinafter referred STC agrees that any such information shall be treated as confidential information that is not to be provided to any real or potential competitor of CTI except as the “Non-Enforcing Party”) unavoidable result of filing and prosecuting the necessary patent documentation; and provided, further, that STC shall have the right to participate therein with advisory counsel of its own choice at its own expense. All recoveries received from an action to enforce the Patent Rights shall be first applied to reimburse the Enforcing Party’sCTI for any reasonable expense CTI incurs, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Party.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect to any Enforcement Actionprior approval of STC, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and connection with the like for the action in its possession, and shall upon the request preparation of the Enforcing Party, join as a party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the partiesproofs.
Appears in 1 contract
Samples: Exclusive Patent and Technology License Agreement (Cti Inc /Tn)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall keep the other party currently informed of all steps to be taken in the preparation, prosecution and maintenance of all of its patents and patent applications now or hereafter existing which claim such Invention and shall furnish the other party with copies of patents and applications, amendments thereto and other related correspondence relating to such Invention to and from patent offices and permit the other party to offer its comments thereon before the Inventor makes a submission to a patent office which could materially affect the scope or validity of the patent coverage that may result. The non-Inventor party shall offer its comments promptly. LeukoSite and Warner shall each promptly notify the other of any infringement and/or unauthorized use of an Invention that comes to its attention.
(b) The non-Inventor party may request in writing that the Inventor take specific, reasonable actions to (i) prepare, file or prosecute patent applications in the United States of America and all other countries of the world with respect to an Invention, (ii) maintain any patents issued with respect to an Invention, (iii) protect against abandonment of a patent or application which claims an Invention or (iv) obtain a discontinuance of an infringement or unauthorized use of such patent or application. If such actions are not undertaken within thirty days of the Inventor's receipt of such written request and timely pursued thereafter, the Inventor shall permit, and the non-Inventor party at its own option and expense and responsibility maintain the Patent Rights may undertake, such actions in the Territory, name and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status and maintenance of the Patent Rights and the prosecution of any patent applications therein by updating Schedule 1.17, and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform the other party promptly when it becomes aware that a third party is infringing or attempting to infringe the Patent Rights.
12.03 Dainippon is not obliged to indemnify Sunesis, its Affiliate(s) and the Sublicensee(s) for any damage or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate a suit with respect to a particular alleged infringement, Sunesis has failed by itself or through its designee to initiate an Enforcement Action to stop the infringement or use reasonable efforts to settle such infringement, then Dainippon shall be entitled, but have no obligation, to initiate an Enforcement Action at its expense against the infringing partyInventor. The party initiating an Enforcement Action (hereinafter [*] Certain information on this page not undertaking such actions shall fully * Confidential treatment requested: material has been redacted omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested 18 18 cooperate with respect to the omitted portions. referred to as the “Enforcing Party”) shall control such action, provided that the other party and shall provide to the other party whatever documents that may be needed in connection therewith. The party not undertaking such actions may require a suitable indemnity against all damages, costs and expenses and impose such other reasonable conditions as such party's advisors may require.
(hereinafter referred c) If either party commences any actions or proceedings (legal or otherwise) pursuant to as this Section, it shall prosecute the “Non-Enforcing Party”) same vigorously at its expense and shall have not abandon or compromise them or fail to exercise any rights of appeal without giving the other party the right to participate therein with advisory counsel of its own choice take over their conduct at its own expense. All recoveries received from The party finally conducting legal actions or proceedings against an alleged infringer or other party shall be entitled to any damages or costs awarded against such infringer or other party, provided, however, that if Warner initiates such action to enforce protect a Warner Product or Warner-LeukoSite Product, then the Patent Rights amount of the award less applicable legal expenses incurred by Warner will be considered Net Sales of the applicable Warner or Warner-LeukoSite Product, and if LeukoSite initiates such action to protect a LeukoSite Product, the amount of the award less applicable legal expenses incurred by LeukoSite shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement considered Net Sales of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Partyapplicable LeukoSite Product.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties.
Appears in 1 contract
Samples: Research, Development and Marketing Agreement (Leukosite Inc)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall at its own expense and responsibility maintain keep the Patent Rights other party currently informed of all steps to be taken in the Territorypreparation, and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status prosecution and maintenance of the Patent Rights all of its patents and the prosecution of any patent applications therein by updating Schedule 1.17, which claim an Invention and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform furnish the other party with copies of patents and application, amendments thereto and other related correspondence relating to such Invention to and from patent offices and permit the other party to offer its comments thereon before the Inventor makes a submission to a patent office which could materially affect [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED. the scope or validity of the patent coverage that may result. The non-Inventor party shall offer its comments promptly. Onyx and Warner shall each promptly when it becomes aware that a third party is infringing or attempting notify the other of any infringement and/or unauthorized use of an Invention which comes to infringe the Patent Rightsits attention.
12.03 Dainippon is not obliged (b) The non-Inventor party may request in writing that the Inventor take specific, reasonable actions to indemnify Sunesis(i) prepare, its Affiliate(s) and the Sublicensee(s) for any damage file or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate prosecute a suit patent application with respect to an Invention, (ii) maintain any patents issued with respect to an Invention, (iii) protect against abandonment of a particular alleged infringement, Sunesis has failed by itself patent or through its designee to initiate application which claims an Enforcement Action to stop the Invention or (iv) obtain a discontinuance of an infringement or unauthorized use of such patent or application. If such actions are not undertaken within thirty days of the Inventor’s receipt of such written request and timely pursued thereafter, the Inventor shall permit, and the non-Inventor party at its option and expense may undertake, such actions. The party not undertaking such actions shall fully cooperate with the other party and shall provide to the other party whatever assignments and other documents that may be needed in connection therewith. The party not undertaking such actions may require a suitable indemnity against all damages, costs and expenses and impose such other reasonable efforts conditions as such party’s advisors may require.
(c) If either party commences any actions or proceedings (legal or otherwise) pursuant to settle such infringementthis Section, then Dainippon it shall be entitled, but have no obligation, to initiate an Enforcement Action prosecute the same vigorously at its expense against the infringing party. The party initiating an Enforcement Action (hereinafter [*] Certain information on this page has been redacted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect shall not abandon or compromise them or fail to the omitted portions. referred to as the “Enforcing Party”) shall control such action, provided that exercise any rights of appeal without giving the other party (hereinafter referred to as the “Non-Enforcing Party”) shall have the right to participate therein with advisory counsel of its own choice take over their conduct at its own expense. All recoveries received from The party finally conducting legal actions or proceedings against an action to enforce the Patent Rights alleged infringer or other party shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Party.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect entitled to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a damages or costs awarded against such infringer or other party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties.
Appears in 1 contract
Samples: Research, Development and Marketing Collaboration Agreement (Onyx Pharmaceuticals Inc)
Protection of Patent Rights. 12.01 Dainippon (a) The Inventor shall at its own expense prepare, prosecute and responsibility maintain the Patent Rights in the Territory, (and agrees to take any necessary steps to extend the patent term of the Patent Rights as reasonably requested by Sunesis. Sunesis shall cooperate, and have the Sublicensee(s) cooperate, with Dainippon in extension of patent term of the Patent Rights and at the request and expense of Dainippon, shall take any necessary steps to extend the patent term of the Patent Rights on behalf of Dainippon. Additionally, Dainippon agrees to keep Sunesis informed regarding the status and maintenance of the Patent Rights and the prosecution of any patent applications therein by updating Schedule 1.17, and without limiting the foregoing shall not allow any patent or patent application within the Patent Rights to lapse without Sunesis’ mutual consent.
12.02 Each party shall inform the other party promptly when it becomes aware that a third party is infringing or attempting to infringe the Patent Rights.
12.03 Dainippon is not obliged to indemnify Sunesis, its Affiliate(s) and the Sublicensee(s) for any damage or loss caused from infringement by any third party of the Patent Rights, but Dainippon shall grant Sunesis the first right, but not the obligation, to institute, by itself or through Sunesis’ designee, at its expense, such action, suit or proceeding as Sunesis may consider necessary to stop the infringement (hereinafter referred to as “Enforcement Action”). If within ninety (90) days after Dainippon has requested Sunesis to initiate a suit with respect to a particular alleged infringement, Sunesis has failed by itself or through its designee to initiate an Enforcement Action to stop the infringement or use reasonable efforts to settle keep the other Party currently informed of all steps to be taken in such infringementpreparation, then Dainippon prosecution and maintenance) all of its Patent Rights which claim an Invention and upon request shall furnish the other Party with copies of such Patent Rights and other related correspondence relating to such Invention to and from patent offices and permit the other Party to offer its comments thereon before the Inventor makes a submission to a patent office which could materially affect the scope or validity of the patent coverage that may result. The non-Inventor Party shall offer its comments promptly. Ligand and Xxxxxx-Xxxxxxx shall each promptly notify the other of any infringement or unauthorized use of an Invention which comes to its attention.
(b) If the Inventor fails to (i) fulfill its obligations under this Section 10, or (ii) protect against abandonment of a Patent Right which claims an Invention, the Inventor shall permit the non-Inventor Party, at its option and expense, to undertake such obligations, and thereafter such Patent Rights shall be entitled, but have no obligation, deemed to initiate an Enforcement Action at its expense against the infringing partybe assigned to such non-Inventor Party. The party initiating Party not undertaking such actions shall fully cooperate with the other Party and shall provide to the other Party whatever assignments and other documents that may be needed in connection therewith. The Party finally conducting legal actions or proceedings against an Enforcement Action alleged infringer or other Party shall be entitled to any damages or costs awarded against such infringer or other Party.
(hereinafter [c) In the event Ligand or Xxxxxx-Xxxxxxx becomes aware of any actual or threatened infringement of any Patent Right of either Party which claims an Invention, that Party shall promptly notify the other, and the Parties' representatives shall promptly discuss how to proceed in connection with such actual or threatened infringement. If both Parties participate in the conduct of a legal action pursuant to this Section 10.4(c), (i) if one Party files, the actual costs and expenses of such action shall be reimbursed first to the filing Party and then to the participating Party out of any damages or other -------------- *] Certain information on ** Portions of this page has have been redacted omitted pursuant to a request for Confidential Treatment and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested monetary awards recovered therein in favor of Xxxxxx-Xxxxxxx or Ligand, or (ii) if both Parties file, the actual costs and expenses of such action shall be reimbursed proportionally between the Parties out of any damages or other monetary awards recovered therein in favor of Xxxxxx-Xxxxxxx or Ligand, based on the actual costs and expenses incurred by each Party in connection with respect to the omitted portions. referred to as the “Enforcing Party”) shall control such action. Any remaining damages received by Xxxxxx-Xxxxxxx shall then be treated as Net Sales of Product by Xxxxxx-Xxxxxxx. If one Party alone conducts such legal action, provided that *** of the actual costs and expenses of such action shall be reimbursed to such Party out of any damages or other monetary awards; any remaining damages shall then be treated as Net Sales of Product. If either Party commences any actions or proceedings (legal or otherwise) pursuant to this Section 10.4(c), it shall prosecute the same vigorously at its expense and shall not abandon or compromise them or fail to exercise any rights of appeal without giving the other party (hereinafter referred to as the “Non-Enforcing Party”) shall have Party the right to participate therein with advisory counsel of its own choice take over the prosecuting Party's conduct at its such other Party's own expense. All recoveries received from an action to enforce the Patent Rights shall be first applied to reimburse the Enforcing Party’s, and then the Non-Enforcing Party’s, unreimbursed expenses, including without limitation, reasonable attorney’s fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Patent Rights, be divided [*] percent ([*]%) to the Enforcing Party and [*] percent ([*]%) to the Non-Enforcing Party.
12.04 The Non-Enforcing Party shall cooperate with the Enforcing Party with respect to any Enforcement Action, in all aspects and shall make available any relevant personnel, records, documents, information, evidence, samples, papers, materials and the like for the action in its possession, and shall upon the request of the Enforcing Party, join as a party-plaintiff in any such Enforcement Action to the extent such joinder is required by law to bring such action, provided that for purposes of this Section 12.04, the Non-Enforcing Party shall not be required to dispatch more personnel and expend more resources hereunder than may be legally required or otherwise agreed upon by the parties.
Appears in 1 contract
Samples: Research, Development and License Agreement (Ligand Pharmaceuticals Inc)
