Common use of Right to Prosecute Infringements Clause in Contracts

Right to Prosecute Infringements. (a) During the term of this Agreement, the Company may commence and prosecute at its own expense and in its name alone all actions for past and future infringements of the Patent Rights and/or the Joint Patent Right in the License Field (“Infringement Actions by the Company”), provided that the Company obtains JSR’s prior written consent on each Infringement Action by the Company with respect to Patent Rights. JSR shall not withhold its consent on any Infringement Action by the Company without reasonable ground. For example, if participation of the University in an Infringement Action by the Company is required by the laws of the jurisdiction where such action is commenced, or requested by the Company, it shall be reasonable ground for JSR to withhold its consent on the Infringement Action by the Company. For clarity, Company will not be required to obtain JSR’s or University’s consent with respect to an Infringement Action by the Company relating to the Joint Patent Rights and shall have the sole right to commence such an Infringement Action by the Company. The total cost of any Infringement Action by the Company shall be borne by the Company and the Company shall keep any recovery or damages for past or future infringement obtained. (b) If required by the laws of the jurisdiction where an Infringement Action by the Company is commenced, and to the extent reasonably available under such laws, i) JSR and the University shall cooperate the Company in giving the Company the legal status to commence the Infringement Action by the Company or ii) JSR shall cooperate with the Company in participating in an Infringement Action by the Company as a licensor at the Company’s sole expense. The Company shall reimburse JSR and the University for all documented, out-of-pocket costs incurred by JSR and/or the University due to such cooperation. JSR or the University shall not have any obligation of cooperation in, or action relating to, any Infringement Action by the Company except as provided for in this Section 7.2(b) or in Section 7(a).

Right to Prosecute Infringements. (a) During COMPANY RIGHT TO PROSECUTE PATENT RIGHTS IN EXCLUSIVE FIELDS. So long as COMPANY remains the term exclusive licensee of PATENT RIGHTS HEPARIN in FIELD ALL BUT MACHINES, COMPANY, to the extent permitted by law, shall have the right, under its own control and at its own expense, to prosecute any third party infringement of PATENT RIGHTS HEPARIN in FIELD ALL BUT MACHINES, subject to Sections 7.4 and 7.5. In addition, so long as COMPANY remains the exclusive licensee of PATENT RIGHTS HEPARINASE in FIELD MANUFACTURING, COMPANY, to the extent permitted by law, shall have the right, under its own control and at its own expense, to prosecute any third party infringement of PATENT RIGHTS HEPARINASE in FIELD MANUFACTURING, subject to Sections 7.4 and 7.5. If required by law, M.I.T. shall permit any action under this AgreementSection to be brought in its name, including being joined as a party-plaintiff, provided that COMPANY shall hold M.I.T. harmless from, and indemnify M.I.T. against, any costs, expenses, or liability that M.I.T. incurs in connection with such action. Prior to commencing any such action, COMPANY shall consult with M.I.T. and shall consider the Company views of M.I.T. regarding the advisability of the proposed action and its effect on the public interest. COMPANY shall not enter into any settlement, consent judgment, or other voluntary final disposition of any infringement action under this Section without the prior written consent of M.I.T. (b) M.I.T. RIGHT TO PROSECUTE PATENT RIGHTS IN EXCLUSIVE FIELDS. In the event that COMPANY is unsuccessful in persuading the alleged infringer of PATENT RIGHTS HEPARIN in FIELD ALL BUT MACHINES or PATENT RIGHTS HEPARINASE in FIELD MANUFACTURING to desist or fails to have initiated an infringement action within a reasonable time after COMPANY first becomes aware of the basis for such action, M.I.T. shall have the right, to prosecute such infringement under its sole control and at its sole expense, and any recovery obtained shall belong to M.I.T. If required by law, COMPANY hereby agrees that M.I.T. may commence include COMPANY as a party-plaintiff in any such suit, without expense to COMPANY. Prior to commencing any such action, M.I.T. shall consult with COMPANY and shall consider the views of COMPANY regarding the advisability of the proposed action. Further, M.I.T. shall not enter into any settlement, consent judgment, or other voluntary final disposition of any infringement action under this Section without first consulting with and considering the views of COMPANY. Notwithstanding the forgoing, any action taken under this Section shall be at the sole discretion of M.I.T. (c) M.I.T. RIGHT TO PROSECUTE PATENT RIGHTS IN NON-EXCLUSIVE FIELDS. M.I.T. shall have the right, but shall not be obligated, to prosecute at its own sole control and sole expense and in its name alone all actions for past and future infringements of the Patent Rights and/or the Joint Patent Right PATENT RIGHTS other than PATENT RIGHTS HEPARIN in the License Field (“Infringement Actions by the Company”)FIELD ALL BUT MACHINES or PATENT RIGHTS HEPARINASE in FIELD MANUFACTURING, provided that the Company obtains JSR’s prior written consent on each Infringement Action by the Company with respect to Patent Rights. JSR shall not withhold its consent on any Infringement Action by the Company without reasonable ground. For example, if participation of the University in an Infringement Action by the Company is required by the laws of the jurisdiction where such action is commenced, or requested by the Company, it shall be reasonable ground for JSR to withhold its consent on the Infringement Action by the Company. For clarity, Company will not be required to obtain JSR’s or University’s consent with respect to an Infringement Action by the Company relating to the Joint Patent Rights and shall have the sole right to commence such an Infringement Action by the Company. The total cost of any Infringement Action by the Company shall be borne by the Company and the Company M.I.T. shall keep any recovery or damages derived therefrom, whether compensatory for past infringement or future infringement obtained. (b) punitive. If required by law, COMPANY hereby agrees that M.I.T. may include COMPANY as a party plaintiff in any such suit, without expense to COMPANY. Prior to commencing any such action, M.I.T. shall consult with COMPANY and shall consider the laws views of COMPANY regarding the advisability of the jurisdiction where proposed action. Further, M.I.T. shall not enter into any settlement, consent judgment, or other voluntary final disposition of any infringement action under this Section without first consulting with and considering the views of COMPANY. Lastly, in the event that COMPANY approaches M.I.T. and requests that M.I.T. commence the prosecution of an Infringement Action by infringement of any of the Company is commencedPATENT RIGHTS other than the PATENT RIGHTS HEPARIN in FIELD ALL BUT MACHINES and the PATENT RIGHTS HEPARINASE in FIELD MANUFACTURING, and M.I.T. agrees to give due consideration to the extent reasonably available views of the COMPANY. Notwithstanding the forgoing, any action taken under such laws, i) JSR and the University this Section shall cooperate the Company in giving the Company the legal status to commence the Infringement Action by the Company or ii) JSR shall cooperate with the Company in participating in an Infringement Action by the Company as a licensor be at the Company’s sole expense. The Company shall reimburse JSR and the University for all documented, out-of-pocket costs incurred by JSR and/or the University due to such cooperation. JSR or the University shall not have any obligation discretion of cooperation in, or action relating to, any Infringement Action by the Company except as provided for in this Section 7.2(b) or in Section 7(a).M.I.T.