Common use of Termination for Patent Challenge Clause in Contracts

Termination for Patent Challenge. Each Party shall have the right to terminate this Agreement upon written notice to the other effective upon receipt, if a Party or any of its wholly-owned Affiliates formally challenges the validity of any Patents that are licensed to it under this Agreement (subject to the exceptions described in this Section 14.2(e), a “Challenge”) (other than as may be necessary or reasonably required to assert a defense, cross-claim or a counter-claim in an action or proceeding asserted by a Party or any of its wholly-owned Affiliates under this Agreement against the other Party or any of its Affiliates or to respond to a court request or order or administrative law, request or order); it being understood and agreed that a Party’s right to terminate this Agreement under this Section 14.2(e) shall not apply to any actions undertaken by an Affiliate of such Party that first becomes such an Affiliate as a result of a Change of Control involving such Party, where such new Affiliate was undertaking any of the activities described in the foregoing clause prior to such Change of Control if such new Affiliate terminates or otherwise ceases participating in such action, proceeding, challenge or opposition within thirty (30) days after the effective date of such Change of Control. If a sublicensee of a Party initiates a Challenge of the intellectual property described in this Section 14.2(e), then such Party shall, upon written notice from the other Party, terminate such sublicense. Neither Party shall, and each Party shall ensure that its Affiliates and sublicensees do not, use or disclose any Confidential Information of the other Party or any nonpublic information regarding the Prosecution or enforcement of any Patents to which a Party or any of its Affiliates or sublicensees are or become privy as a consequence of the rights granted to such Party pursuant to this Agreement, in initiating, requesting, making, filing or maintaining, or in funding or otherwise assisting any other Person with respect to, any Challenge.

Termination for Patent Challenge. Each Either Party shall have the right to terminate this Agreement solely on a Licensed Product-by-Licensed Product basis upon written notice to if the other effective upon receipt, if a Party or any of its wholly-owned Affiliates formally challenges the validity validity, scope or enforceability of or otherwise opposes any Patents Patent (i) included in the Vividion Intellectual Property and that are is licensed to it Celgene under this Agreement in any action or proceeding, or (ii) included in the Celgene Patents or Celgene License Collaboration Patents under this Agreement in any action or proceeding (subject to the exceptions described in this Section 14.2(e14.3(d), a “Challenge”) (other than as may be necessary or reasonably required to assert a defense, cross-claim or a counter-claim in an action or proceeding asserted by a either Party or any of its wholly-owned Affiliates under this Agreement or Licensee Partners against the other Party or any of its Affiliates or to respond to a court request or order or administrative law, request or order); , it being understood and agreed that a either Party’s right to terminate this Agreement under this Section 14.2(e14.3(d) shall not apply to any actions undertaken by an Affiliate of such the other Party (the “Challenging Party”) that first becomes such an Affiliate as a result of a Change of Control involving such the Challenging Party, where such new Affiliate was undertaking any of the activities described in the foregoing clause prior to such Change of Control if Control; provided that, a Party’s right to terminate this Agreement under this Section 14.3(d) shall apply to actions undertaken by such new Affiliate terminates if the Challenging Party is the acquiror in such Change of Control and such new Affiliate does not terminate or otherwise ceases cease participating in such action, proceeding, challenge or opposition within thirty (30) days after the effective date of such Change of Control. If a sublicensee Licensee Partner of a Party initiates a Challenge Celgene challenges the validity, scope or enforceability of or otherwise opposes any Patent included in any of the intellectual property described in this Section 14.2(e)14.3(d) under which such Licensee Partner is sublicensed in any action or proceeding, then such Party Celgene shall, upon written notice from the other PartyVividion, terminate such sublicense. For the avoidance of doubt, an action by a Party or any of its Affiliates (collectively the “Pursuing Party”) in accordance with this Agreement or the Master Agreement to amend claims within a pending patent application of the other Party during the course of the Pursuing Party’s Prosecution of such pending patent application or in defense of a Third Party proceeding, or to make a negative determination of patentability of claims of a patent application of the other Party or to abandon a patent application of the other Party during the course of the Pursuing Party’s Prosecution of such pending patent application, shall not constitute a challenge under this Section 14.3(d). Neither Party shall, and each Party shall ensure that its Affiliates and sublicensees Licensee Partners do not, use or disclose any Confidential Information of the other Party or any nonpublic information regarding the Prosecution or enforcement of any Vividion Patents, Celgene License Collaboration Patents or Joint Patents to which a Party or any of its Affiliates or sublicensees Licensee Partners are or become privy as a consequence of the rights granted to such Party Celgene pursuant to this AgreementArticle X, in initiating, requesting, making, filing or maintaining, or in funding or otherwise assisting any other Person with respect to, any Challenge.

Termination for Patent Challenge. Each Either Party shall have the right to terminate this Agreement solely on a Shared Product-by-Shared Product basis upon written notice to if the other effective upon receipt, if a Party or any of its wholly-owned Affiliates formally challenges the validity validity, scope or enforceability of or otherwise opposes any Patents Patent (i) included in the Vividion Intellectual Property or Vividion Co-Co Collaboration Intellectual Property and that are is licensed to it Celgene under this Agreement in any action or proceeding, or (ii) included in the Celgene Intellectual Property or Celgene Co-Co Collaboration Intellectual Property that is licensed to Vividion under this Agreement in any action or proceeding (subject to the exceptions described in this Section 14.2(e14.2(d), a “Challenge”) (other than as may be necessary or reasonably required to assert a defense, cross-claim or a counter-claim counter¬claim in an action or proceeding asserted by a either Party or any of its wholly-owned Affiliates under this Agreement or Licensee Partners against the other Party or any of its Affiliates or to respond to a court request or order or administrative law, request or order); ) it being understood and agreed that a either Party’s right to terminate this Agreement under this Section 14.2(e14.2(d) shall not apply to any actions undertaken by an Affiliate of such the other Party (the “Challenging Party”) that first becomes such an Affiliate as a result of a Change of Control involving such the Challenging Party, where such new Affiliate was undertaking any of the activities described in the foregoing clause prior to such Change of Control if Control; provided that a Party’s right to terminate this Agreement under this Section 14.2(d) shall apply to actions undertaken by such new Affiliate terminates if the Challenging Party is the acquiror in such Change of Control and such new Affiliate does not terminate or otherwise ceases cease participating in such action, proceeding, challenge or opposition within thirty (30) days after the effective date of such Change of Control. If a sublicensee Licensee Partner of a either Party initiates a Challenge challenges the validity, scope or enforceability of or otherwise opposes any Patent included in any of the intellectual property described in this Section 14.2(e)14.2(d) under which such Licensee Partner is sublicensed in any action or proceeding, then the Party that granted such Party sublicense shall, upon written notice from the other Party, terminate such sublicense. For the avoidance of doubt, an action by a Party or any of its Affiliates (collectively the “Pursuing Party”) in accordance with this Agreement and the Master Agreement to amend claims within a pending patent application of the other Party during the course of the Pursuing Party’s Prosecution of such pending patent application or in defense of a Third Party proceeding, or to make a negative determination of patentability of claims of a patent application of the other Party or to abandon a patent application of the other Party during the course of the Pursuing Party’s Prosecution of such pending patent application, shall not constitute a challenge under this Section 14.2(d). Neither Party shall, and each Party shall ensure that its Affiliates and sublicensees Licensee Partners do not, use or disclose any Confidential Information of the other Party or any nonpublic information regarding the Prosecution or enforcement of any Vividion Patent, Celgene Co-Co Collaboration Patent or Vividion Co-Co Collaboration Patent (including Joint Co-Co Patents and Joint Patents) to which a Party or any of its Affiliates or sublicensees (sub)licensees are or become privy as a consequence of the rights granted to such Party pursuant to this AgreementArticle X, in initiating, requesting, making, filing or maintaining, or in funding or otherwise assisting any other Person with respect to, any Challenge.

Termination for Patent Challenge. Each Either Party shall have the right to terminate this Agreement solely on a Licensed Product-by-Licensed Product basis upon written notice to if the other effective upon receipt, if a Party or any of its wholly-owned Affiliates formally challenges the validity validity, scope or enforceability of or otherwise opposes any Patents Patent (i) included in the Agios Intellectual Property and that are is licensed to it Celgene under this Agreement in any action or proceeding, or (ii) included in the Celgene Patents or Celgene Collaboration Patents that is licensed to Agios under this Agreement in any action or proceeding (subject to the exceptions described in this Section 14.2(e14.3(d), a “Challenge”) (other than as may be necessary or reasonably required to assert a defense, cross-claim or a counter-claim in an action or proceeding asserted by a such Party or any of its wholly-owned Affiliates under this Agreement or Licensee Partners against the other Party or any of its Affiliates or Licensee Partners or to respond to a court request or order or administrative law, request or order); , it being understood and agreed that a either Party’s right to terminate this Agreement under this Section 14.2(e14.3(d) shall not apply to any actions undertaken by an Affiliate of such the other Party (the “Challenging Party”) that first becomes such an Affiliate as a result of a Change of Control involving such the Challenging Party, where such new Affiliate was undertaking any of the activities described in the foregoing clause prior to such Change of Control if Control; provided that, a Party’s right to terminate this Agreement under this Section 14.3(d) shall apply to actions undertaken by such new Affiliate terminates if the Challenging Party is the acquiror in such Change of Control and such new Affiliate does not terminate or otherwise ceases cease participating in such action, proceeding, challenge or opposition within thirty (30) days [**] after the effective date of such Change of Control. If a sublicensee Licensee Partner of a Party initiates a Challenge Celgene challenges the validity, scope or enforceability of or otherwise opposes any Patent included in any of the intellectual property described in this Section 14.2(e)14.3(d) under which such Licensee Partner is sublicensed in any action or proceeding, then such Party Celgene shall, upon written notice from the other PartyLicensor, terminate such sublicense. For the avoidance of doubt, an action by a Party or any Affiliate (collectively the “Pursuing Party”) in accordance with this Agreement and the Master Agreement to amend claims within a pending patent application of the other Party during the course of the Pursuing Party’s Prosecution of such pending patent application or in defense of a Third Party proceeding, or to make a negative determination of patentability of claims of a patent application of the other Party or to abandon a patent application of the other Party during the course of the Pursuing Party’s Prosecution of such pending patent application, shall not constitute a challenge under this Section 14.3(d). Neither Party shall, and each Party shall ensure that its Affiliates and sublicensees Licensee Partners do not, use or disclose any Confidential Information of the other Party or any nonpublic information regarding the Prosecution or enforcement of any Agios Patents, Celgene Collaboration Patents or Joint Patents to which a Party or any of its Affiliates or sublicensees Licensee Partners are or become privy as a consequence of the rights granted to such Party Celgene pursuant to this AgreementArticle X, in initiating, requesting, making, filing or maintaining, or in funding or otherwise assisting any other Person with respect to, any Challenge.

Termination for Patent Challenge. Each Either Party shall have the right to terminate this Agreement solely on a Licensed Product-by-Licensed Product basis upon written notice to if the other effective upon receipt, if a Party or any of its wholly-owned Affiliates formally challenges the validity validity, scope or enforceability of or otherwise opposes any Patents Patent (i) included in the Agios Intellectual Property or Agios Co-Co Collaboration Intellectual Property and that are is licensed to it Celgene under this Agreement in any action or proceeding, or (ii) included in the Celgene Intellectual Property or Celgene Collaboration Intellectual Property that is licensed to Agios under this Agreement in any action or proceeding (subject to the exceptions described in this Section 14.2(e14.3(d), a “Challenge”) (other than as may be necessary or reasonably required to assert a defense, cross-claim or a counter-claim in an action or proceeding asserted by a either Party or any of its wholly-owned Affiliates under this Agreement or Licensee Partners against the other Party or any of its Affiliates or to respond to a court request or order or administrative law, request or order); ) it being understood and agreed that a either Party’s right to terminate this Agreement under this Section 14.2(e14.3(d) shall not apply to any actions undertaken by an Affiliate of such the other Party (the “Challenging Party”) that first becomes such an Affiliate as a result of a Change of Control involving such the Challenging Party, where such new Affiliate was undertaking any of the activities described in the foregoing clause prior to such Change of Control if Control; provided that a Party’s right to terminate this Agreement under this Section 14.3(d) shall apply to actions undertaken by such new Affiliate terminates if the Challenging Party is the acquiror in such Change of Control and such new Affiliate does not terminate or otherwise ceases cease participating in such action, proceeding, challenge or opposition within thirty (30) days [**] after the effective date of such Change of Control. If a sublicensee Licensee Partner of a either Party initiates a Challenge challenges the validity, scope or enforceability of or otherwise opposes any Patent included in any of the intellectual property described in this Section 14.2(e)14.3(d) under which such Sublicensee is sublicensed in any action or proceeding, then the Party that granted such Party sublicense shall, upon written notice from the other Party, terminate such sublicense. For the avoidance of doubt, an action by a Party or any of its Affiliates (collectively the “Pursuing Party”) in accordance with this Agreement and the Master Agreement to amend claims within a pending patent application of the other Party during the course of the Pursuing Party’s Prosecution of such pending patent application or in defense of a Third Party proceeding, or to make a negative determination of patentability of claims of a patent application of the other Party or to abandon a patent application of the other Party during the course of the Pursuing Party’s Prosecution of such pending patent application, shall not constitute a challenge under this Section 14.3(d). Neither Party shall, and each Party shall ensure that its Affiliates and sublicensees Licensee Partners do not, use or disclose any Confidential Information of the other Party or any nonpublic information regarding the Prosecution or enforcement of any Patents Agios Patent, Celgene Collaboration Patent or Agios Co-Co Collaboration Patent (including Joint Collaboration Patents) to which a Party or any of its Affiliates or sublicensees are or become privy as a consequence of the rights granted to such Party pursuant to this AgreementArticle X, in initiating, requesting, making, filing or maintaining, or in funding or otherwise assisting any other Person with respect to, any Challenge.

Termination for Patent Challenge. Each Party shall have the right to terminate this Agreement upon written notice to the other effective upon receipt, if a Party or any of its wholly-owned Affiliates formally challenges the validity of any Patents that are licensed to it under this Agreement (subject to the exceptions described in this Section 14.2(e), a “Challenge”) (other than as may be necessary or reasonably required to assert a defense, cross-claim or a counter-claim in an action or proceeding asserted by a Party or any of its wholly-owned Affiliates under this Agreement against the other Party or any of its Affiliates or to respond to a court request or order or administrative law, request or order); it being understood and agreed that a Party’s right to terminate this Agreement under this Section 14.2(e) shall not apply to any actions undertaken by an Affiliate of such Party that first becomes such an Affiliate as a result of a Change of Control involving such Party, where such new Affiliate was undertaking any of the activities described in the foregoing clause prior to such Change of Control if such new Affiliate terminates or otherwise ceases participating in such action, proceeding, challenge or opposition within thirty (30) [***] days after the effective date of such Change of Control. If a sublicensee of a Party initiates a Challenge of the intellectual property described in this Section 14.2(e), then such Party shall, upon written notice from the other Party, terminate such sublicense. Neither Party shall, and each Party shall ensure that its Affiliates and sublicensees do not, use or disclose any Confidential Information of the other Party or any nonpublic information regarding the Prosecution or enforcement of any Patents to which a Party or any of its Affiliates or sublicensees are or become privy as a consequence of the rights granted to such Party pursuant to this Agreement, in initiating, requesting, making, filing or maintaining, or in funding or otherwise assisting any other Person with respect to, any Challenge.

Termination for Patent Challenge. Each Either Party shall have the right to terminate this Agreement upon written notice to if the other effective upon receipt, if a Party or any of its wholly-owned Affiliates formally challenges the validity validity, scope or enforceability of or otherwise opposes any Patents Patent (i) included in the BioAtla Intellectual Property or BioAtla Collaboration Intellectual Property and that are is licensed to it BeiGene under this Agreement in any action or proceeding, or (ii) included in the BeiGene Intellectual Property or BeiGene Collaboration Intellectual Property that is licensed to BioAtla under this Agreement in any action or proceeding (subject to the exceptions described in this Section 14.2(e14.3(d), a “Challenge”) (other than as may be necessary or reasonably required to assert a defense, cross-claim or a counter-claim in an action or proceeding asserted by a either Party or any of its wholly-owned Affiliates under this Agreement or Selling Parties against the other Party or any of its Affiliates or to respond to a court request or order or administrative law, request or order); ) it being understood and agreed that a either Party’s right to terminate this Agreement under this Section 14.2(e14.3(e) shall not apply to any actions undertaken by an Affiliate of such the other Party (the “Challenging Party”) that first becomes such an Affiliate as a result of a Change of Control involving such the Challenging Party, where such new Affiliate was undertaking any of the activities described in the foregoing clause prior to such Change of Control if Control; provided that a Party’s right to terminate this Agreement under this Section 14.3(e) shall apply to actions undertaken by such new Affiliate terminates if the Challenging Party is the acquiror in such Change of Control and such new Affiliate does not terminate or otherwise ceases cease participating in such action, proceeding, challenge or opposition within thirty (30) days after the effective date of such Change of Control. If a sublicensee Selling Party of a either Party initiates a Challenge challenges the validity, scope or enforceability of or otherwise opposes any Patent included in any of the intellectual property described in this Section 14.2(e)14.3(e) under which such Selling Party is sublicensed in any action or proceeding, then the Party that granted such Party sublicense shall, upon written notice from the other Party, terminate such sublicense. For the avoidance of doubt, an action by a Party or any of its Affiliates (collectively the “Pursuing Party”) in accordance with this Agreement to amend claims within a pending patent application of the other Party during the course of the Pursuing Party’s Prosecution of such pending patent application or in defense of a Third Party proceeding, or to make a negative determination of patentability of claims of a patent application of the other Party or to abandon a patent application of the other Party during the course of the Pursuing Party’s Prosecution of such pending patent application, shall not constitute a challenge under this Section 14.3(e). Neither Party shall, and each Party shall ensure that its Affiliates and sublicensees Selling Parties do not, use or disclose any Confidential Information of the other Party or any nonpublic information regarding the Prosecution or enforcement of any Patents BioAtla Patent, BeiGene Collaboration Patent or BioAtla Collaboration Patent (including Joint Patents) to which a Party or any of its Affiliates or sublicensees (sub)licensees are or become privy as a consequence of the rights granted to such Party pursuant to this AgreementArticle X, in initiating, requesting, making, filing or maintaining, or in funding or otherwise assisting any other Person with respect to, any Challenge.

Termination for Patent Challenge. Each Either Party shall have the right to terminate this Agreement solely on a Program-by-Program basis upon written notice to if the other effective upon receipt, if a Party or any of its wholly-owned Affiliates formally Affiliate (as defined in Section 1.2(a)) challenges the validity validity, scope or enforceability of or otherwise opposes any Patents Patent (a) included in the [***] and that are is licensed to it Celgene under this Agreement, or (b) included in the [***] and that is licensed to Juno under this Agreement (subject to the exceptions described in this Section 14.2(e), a “Challenge”) (other than in either case as may be necessary or reasonably required to assert a defense, cross-claim or a counter-claim in an action or proceeding asserted by a Party or any of its wholly-owned Affiliates under this Agreement against the other Party or any of its Affiliates or to respond to a court request or order or administrative law, request or order); ) it being understood and agreed that a either Party’s right to terminate this Agreement under this Section 14.2(e) 11.5 shall not apply to any [***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. actions undertaken by an Affiliate (as defined in Section 1.2(a)) of such the other Party (the “Challenging Party”) that first becomes such an Affiliate as a result of or after the effective date of a Change of Control Business Combination involving such the Challenging Party, where such new Affiliate was undertaking any of the activities described in the foregoing clause prior to such Change of Control if Business Combination; provided that a Party’s right to terminate this Agreement under this Section 11.5 shall apply to actions undertaken by such new Affiliate terminates if the Challenging Party is the acquiror in such Business Combination and such new Affiliate does not terminate or otherwise ceases participating in cease such action, proceeding, challenge or opposition within thirty (30) days [***] after the effective date of such Change of ControlBusiness Combination. If a sublicensee Sublicensee of a Party initiates challenges the validity, scope or enforceability of or otherwise opposes any Patent (i) included in the [***] (in the case of a Challenge Sublicensee of Celgene), or (ii) included in the intellectual property described [***] (in this Section 14.2(ethe case of a Sublicensee of Juno), in each case under which such Sublicensee is sublicensed, then such Party shall, upon written notice from the other Party[***], terminate such sublicense. Neither For the avoidance of doubt, an action by a Party shallor any Affiliate (as defined in Section 1.2(a)) (collectively the “Prosecuting Party”) in accordance with Article 7 to amend claims within a pending patent application of the other Party during the course of the Prosecuting Party’s Prosecution and Maintenance of such pending patent application or in defense of a Third Party proceeding, and each Party shall ensure that its Affiliates and sublicensees do not, use or disclose any Confidential Information to make a negative determination of patentability of claims of a patent application of the other Party or any nonpublic information regarding the Prosecution or enforcement of any Patents to which abandon a Party or any of its Affiliates or sublicensees are or become privy as a consequence patent application of the rights granted to other Party during the course of the Prosecuting Party’s Prosecution and Maintenance of such Party pursuant to pending patent application, shall not constitute a challenge under this Agreement, in initiating, requesting, making, filing or maintaining, or in funding or otherwise assisting any other Person with respect to, any ChallengeSection 11.5.