Solazyme. As among the Parties, Solazyme, Inc. shall have the right, at its sole discretion and cost, to prepare, file, prosecute and maintain, all patent applications and patents with respect to the Solazyme Technology, and to conduct any interferences, re-examinations, reissues, oppositions or requests for patent term extension or governmental equivalents thereto.
Solazyme. Notwithstanding the License, the Parties agree that:
(i) Solazyme shall retain a right to conduct research with respect to the Licensed Intellectual Property in the Field for the purpose of improving and expanding such Licensed Intellectual Property; provided, however, that Solazyme shall not use Licensed Intellectual Property for the primary intended purpose of developing any Products or Services for use in the Field, on its own behalf or on behalf of any Third Party.
(ii) At all times during and after the Term of this Agreement, nothing herein shall restrict, or be construed to restrict, Solazyme’s right to practice and grant licenses to practice its Intellectual Property for any uses outside the Field.
Solazyme. (i) Solazyme shall have the right during the Term, at its own cost and expense, to prosecute, seek, obtain, maintain and update any registrations or similar protections for the Solazyme Platform Patents.
(ii) Solazyme will keep the Company informed of the progress with regard to all activities relating to the prosecution of the Solazyme Platform Patents. More specifically, Solazyme shall provide to the Company copies of all proposed filings and patent office responses and copies of all office actions and other material communications from patent offices relating to such prosecution efforts, a reasonable time in advance of any proposed filing or required response, and the Company will have the right to comment on any such filing or response, and Solazyme will consider in good faith the timely received requests and suggestions of the Company with respect to such filings or responses.
(iii) If Solazyme intends to abandon or not maintain a Solazyme Platform Patent in a particular jurisdiction (or chooses not to file and/or prosecute in a particular jurisdiction), and is not abandoning such Solazyme Platform Patent in favor of another Solazyme Platform Patent, Solazyme will provide reasonable prior written notice to the Company of such intention to abandon, not maintain or not file (which notice will, in any event, be given no later than forty-five (45) days prior to the next deadline for any action that may be taken with respect to such Patent with the U.S. Patent & Trademark Office or any foreign patent office). If the Company requests that Solazyme continue to prosecute a particular Solazyme Platform Patent, or requests that Solazyme prosecute a particular Solazyme Platform Patent in a particular jurisdiction, Solazyme shall do so unless Solazyme reasonably believes that such prosecution or filing will ultimately be uneconomical (i.e., the costs to Solazyme of continuing such activities will outweigh the detrimental effects on the Company if such activities are terminated) or such prosecution will detrimentally effect Solazyme’s other Intellectual Property.
(iv) The Company acknowledges that the Solazyme Platform Patents may be licensed outside the Field to Third Parties and that Solazyme has the responsibility and sole discretion to determine how to best maintain and prosecute the Solazyme Platform Patents for the benefit of all licensees, including Third Parties other than the Company. The Company further acknowledges that such responsibility may affect So...
Solazyme. As between the Parties, Solazyme shall have the sole right, but not the obligation, at its sole cost, to take legal action to enforce or defend any declaratory action or counterclaim with respect to any Patents contained in (i) the Solazyme Background Technology, (ii) the New Technology and (iii) the Operational Technology, and to settle any such action. Solazyme shall retain all recoveries or awards relating to such infringing activity or proceedings.
Solazyme. Solazyme represents and warrants that, as of the Effective Date:
(a) It has the right to enter into this Agreement, and the power and authority to execute and deliver this Agreement and to perform its obligations hereunder, and that the execution, delivery, and performance by Solazyme of this Agreement will not conflict with or result in any breach of, or constitute a material default under, any security agreement, commitment, contract, or other agreement, instrument or undertaking to which Solazyme is a party;
(b) On or before the Effective Date, no Intellectual Property within the License has been licensed to Solazyme pursuant to, or otherwise is subject to, the terms of a Third Party Agreement, and that the License granted to the Company with respect thereto is not subordinated to the terms of any such Third Party Agreement;
(c) During the Term of this Agreement, it will not grant any rights that conflict with or will be inconsistent with the rights and Licenses granted to the Company herein;
(d) It has all requisite right and title to grant the License and that it has not made any grant to any Third Party of any right or license that would conflict or be inconsistent with its grant of the License to the Company hereunder;
(e) It Controls the Licensed Intellectual Property existing as of the Effective Date;
(f) It has not received written notice from a Third Party alleging that the practice of the Licensed Intellectual Property would infringe any patent, copyright, or other Intellectual Property right of a Third Party;
(g) Solazyme has implemented such policies and procedures as are necessary to ensure proper vesting with Solazyme of Intellectual Property made by Solazyme’s employees, and Solazyme shall disclose such policies or procedures to the Company upon request. In addition, Solazyme represents and warrants that any individual conducting activities for Solazyme in connection with this Agreement, who is not an employee of Solazyme, has entered or shall enter into an agreement with Solazyme that requires the assignment to Solazyme, or as it may direct, of Intellectual Property made by such individual in the course of such activities; and
(h) To the best of its knowledge (limited for the purposes of this Section 5.1(h) to the actual knowledge of Solazyme’s Chief Technology Officer, General Counsel and Patent Counsel), the practice of the Licensed Intellectual Property in the Field may be performed in a manner that would not infringe the Intellectual ...
Solazyme. Solazyme shall indemnify, defend and hold harmless CTV and its Affiliates and their respective directors, officers, employees, consultants, agents and their respective successors, heirs and assigns (the “CTV Indemnitees”) from and against any Liabilities arising, directly or indirectly, out of or in connection with Third-Party claims, suits, actions, demands or judgments relating to (i) any breach by Solazyme of its representations and warranties in this Agreement, (ii) any negligence or willful misconduct of Solazyme, any of its Affiliates, or any of its sublicensees, except to the extent such Liabilities result from the gross negligence or intentional misconduct of CTV, any of its Affiliates, or any of its authorized sublicensees, or (iii) any alleged misappropriation by Solazyme or any of its Affiliates of the Intellectual Property rights (except for any Patent rights) of a Third Party based on the use or practice by CTV (or any of its Affiliates or sublicensees) of the licenses provided by Solazyme in this Agreement.
