Common use of Termination for Patent Challenge Clause in Contracts

Termination for Patent Challenge. If a Party (the “Challenging Party”) (A) commences or actively and voluntarily participates in any action or proceeding (including any Patent opposition or re-examination proceeding), or otherwise asserts any claim, challenging or denying the validity or enforceability of any claim of any Patent that is licensed to the Challenging Party under this Agreement or (B) actively and voluntarily assists any other Person in bringing or prosecuting any action or proceeding (including any Patent opposition or re-examination proceeding) challenging or denying the validity or enforceability of any claim of any Patent that is licensed to the Challenging Party under this Agreement by the other Party (the “Non-Challenging Party”) (each of (A) and (B), a “Patent Challenge”), then, to the extent permitted by Applicable Law, the Non-Challenging Party shall have the right, in its sole discretion, to give notice to the Challenging Party that the Non-Challenging Party may terminate the license(s) granted under such Patent to the Challenging Party [***] days following such notice, and, unless the Challenging Party withdraws or causes to be withdrawn all such challenge(s), or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges that the Challenging Party does not have the power to unilaterally withdraw or cause to be withdrawn, the Challenging Party ceases assisting any other party to such Patent Challenge and, to the extent the Challenging Party is a party to such Patent Challenge, it withdraws from such Patent Challenge within such [***]-day period, the Non-Challenging Party shall have the right to deem the Challenging Party to have exercised an Opt-Out with respect to any Shared Product(s) Covered by a Patent that is the subject of such Patent Challenge, by providing written notice thereof to the Challenging Party, in which case the provisions of Section 14.3 shall apply; provided, however, [***]. The foregoing right of the Non-Challenging Party shall not apply with respect to any Patent Challenge where the Patent Challenge is made in defense of an assertion of the relevant Patent that is first brought by the Non-Challenging Party against the Challenging Party. For the avoidance of doubt, any participation by the Challenging Party or its employees in any claim, challenge or proceeding in response to a subpoena or as required under a pre-existing agreement between the Challenging Party’s employee(s) or consultant(s) and their prior employer(s) shall not constitute active and voluntary participation or assistance and shall not give rise to the Non-Challenging Party’s right to deem the Challenging Party as having exercised an Opt-Out with respect to any Shared Product hereunder.

Termination for Patent Challenge. If a Party (the “Challenging Party”) (Aa) commences or actively and voluntarily participates in any action or proceeding (including any Patent opposition or re-examination proceeding), or otherwise asserts any claim, challenging or denying the validity or enforceability of any claim of any Patent that is licensed to the Challenging Party under this Agreement or (Bb) actively and voluntarily assists any other Person in bringing or prosecuting any action or proceeding (including any Patent opposition or re-examination proceeding) challenging or denying the validity or enforceability of any claim of any Patent that is licensed to the Challenging Party under this Agreement by the other Party (the “Non-Challenging Party”) (each of (Aa) and (Bb), a “Patent Challenge”), then, to the extent permitted by Applicable Law, the Non-Challenging Party shall have the right, in its sole discretion, to give notice to the Challenging Party that the Non-Challenging Party may terminate the license(s) granted under such Patent to the Challenging Party [***] days following such notice, and, unless the Challenging Party withdraws or causes to be withdrawn all such challenge(s), or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges that the Challenging Party does not have the power to unilaterally withdraw or cause to be withdrawn, the Challenging Party ceases assisting any other party to such Patent Challenge and, to the extent the Challenging Party is a party to such Patent Challenge, it withdraws from such Patent Challenge within such [***]-day period, the Non-Challenging Party shall have the right to deem the Challenging Party to have exercised an Opt-Out with respect to any Shared Product(s) Covered by a Patent that is the subject of such Patent Challenge, by providing written notice thereof to the Challenging Party, in which case the provisions of Section 14.3 17.3 shall apply; provided, however, [***]. The foregoing right of the Non-Challenging Party shall not apply with respect to any Patent Challenge where the Patent Challenge is made in defense of an assertion of the relevant Patent that is first brought by the Non-Challenging Party against the Challenging Party. For the avoidance of doubt, any participation by the Challenging Party or its employees in any claim, challenge or proceeding in response to a subpoena or as required under a pre-existing agreement between the Challenging Party’s employee(s) or consultant(s) and their prior employer(s) shall not constitute active and voluntary participation or assistance and shall not give rise to the Non-Challenging Party’s right to deem the Challenging Party as having exercised an Opt-Out with respect to any Shared Product hereunder.

Termination for Patent Challenge. If a If, during the Term, either Party (the “Challenging Party”) (Aa) commences or actively and voluntarily participates in any action or proceeding (including any Patent patent opposition or re-examination proceeding), or otherwise asserts any claim, challenging or denying the validity or enforceability of any claim of any the other Party’s Patent Rights that is are licensed to the Challenging such challenging Party under this Agreement or (Bb) actively and voluntarily assists any other Person in bringing or prosecuting any action or proceeding (including any Patent patent opposition or re-examination proceeding) challenging or denying the validity or enforceability of any claim of any the other Party’s Patent Rights that is are licensed to the Challenging such challenging Party under this Agreement by the other Party (the “Non-Challenging Party”) (each of (Aa) and (Bb), a “Patent Challenge”), then, to the extent permitted by Applicable Lawthe applicable Laws, the Non-Challenging other Party shall have the right, exercisable within [***] following receipt of notice regarding such Patent Challenge, in its sole discretion, to give notice to the Challenging such challenging Party that the Non-Challenging other Party may terminate the license(s) granted under such Patent Right(s) to the Challenging such challenging Party pursuant to this Agreement [***] days following such notice (or such longer period as the other Party may designate in such notice), and, unless the Challenging such challenging Party withdraws or causes to be withdrawn all such challenge(s), ) (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges that the Challenging such challenging Party does not have the power to unilaterally withdraw or cause to be withdrawn, the Challenging such challenging Party ceases actively assisting any other party to such Patent Challenge and, to the extent the Challenging such challenging Party is a party to such Patent Challenge, it withdraws from such Patent Challenge Challenge) within such [***]-day ] period, the Non-Challenging other Party shall have the right to deem terminate the Challenging Party to have exercised an Opt-Out with respect to any Shared Product(slicense(s) Covered by a Patent that is the subject of granted under such Patent Challenge, Right(s) to such challenging Party pursuant to the Agreement by providing written notice thereof to the Challenging such challenging Party, in which case the provisions of Section 14.3 shall apply; provided, however, [***]. The foregoing right of the Non-Challenging Party sentence shall not apply (i) with respect to any claim of the other Party’s Patent Challenge Rights that is licensed to such challenging Party under this Agreement that the other Party first asserts against such challenging Party or any of its Affiliates where the Patent Challenge is made in defense of an assertion of the relevant Patent that is first brought by the Non-Challenging Party against the Challenging Party. For the avoidance of doubtsuch assertion, any participation by the Challenging Party or its employees in any claim, challenge or proceeding in response to a subpoena or as required under a pre-existing agreement between the Challenging Party’s employee(s(ii) or consultant(s) and their prior employer(s) shall not constitute active and voluntary participation or assistance and shall not give rise to the Non-Challenging Party’s right to deem the Challenging Party as having exercised an Opt-Out with respect to any Shared Product hereunderPatent Challenge commenced by a Third Party that after the Effective Date acquires or is acquired by a Party or its Affiliates or its or their business or assets, whether by stock purchase, merger, asset purchase or otherwise, but only with respect to Patent Challenges commenced prior to the closing of such acquisition.

Termination for Patent Challenge. If a Party (the “Challenging Party”) (A) commences or actively and voluntarily participates in any action or proceeding (including any Patent opposition or re-examination proceeding), or otherwise asserts any claim, challenging or denying the validity or enforceability of any claim of any Patent that is licensed to the Challenging Party under this Agreement or (B) actively and voluntarily [***] = Certain confidential information contained in this document, marked by brackets, has been omitted because it is both (i) not material and (ii) would cause competitive harm if publicly disclosed. assists any other Person in bringing or prosecuting any action or proceeding (including any Patent opposition or re-examination proceeding) challenging or denying the validity or enforceability of any claim of any Patent that is licensed to the Challenging Party under this Agreement by the other Party (the “Non-Challenging Party”) (each of (A) and (B), a “Patent Challenge”), then, to the extent permitted by Applicable Law, the Non-Challenging Party shall have the right, in its sole discretion, to give notice to the Challenging Party that the Non-Challenging Party may terminate the license(s) granted under such Patent to the Challenging Party [***] days following such notice, and, unless the Challenging Party withdraws or causes to be withdrawn all such challenge(s), or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges that the Challenging Party does not have the power to unilaterally withdraw or cause to be withdrawn, the Challenging Party ceases assisting any other party to such Patent Challenge and, to the extent the Challenging Party is a party to such Patent Challenge, it withdraws from such Patent Challenge within such [***]-day period, the Non-Challenging Party shall have the right to deem the Challenging Party to have exercised an Opt-Out with respect to any Shared Product(s) Covered by a Patent that is the subject of such Patent Challenge, by providing written notice thereof to the Challenging Party, in which case the provisions of Section 14.3 shall apply; provided, however, [***]. The foregoing right of the Non-Challenging Party shall not apply with respect to any Patent Challenge where the Patent Challenge is made in defense of an assertion of the relevant Patent that is first brought by the Non-Challenging Party against the Challenging Party. For the avoidance of doubt, any participation by the Challenging Party or its employees in any claim, challenge or proceeding in response to a subpoena or as required under a pre-existing agreement between the Challenging Party’s employee(s) or consultant(s) and their prior employer(s) shall not constitute active and voluntary participation or assistance and shall not give rise to the Non-Challenging Party’s right to deem the Challenging Party as having exercised an Opt-Out with respect to any Shared Product hereunder.

Termination for Patent Challenge. If Either Party has the right to terminate this Agreement on a Collaboration Target‑by‑Collaboration Target basis upon written notice to the other Party if a Party or any of its Related Parties directly or indirectly challenges in a legal or administrative proceeding the patentability, enforceability or validity of any Patents within the Wave Technology (with respect to a challenge brought by Takeda or any of its Related Parties), any Patents within the “Challenging Party”) Takeda Technology (A) commences with respect to a challenge brought by Wave or actively and voluntarily participates in any action or proceeding (including any Patent opposition or re-examination proceedingof its Related Parties), or otherwise asserts any claimPatents within the Joint Collaboration Patents (with respect to a challenge brought by either Party or such Party’s related Parties), challenging or denying as the validity or enforceability of any claim of any Patent that is licensed to the Challenging Party under this Agreement or case may be (B) actively and voluntarily assists any other Person in bringing or prosecuting any action or proceeding (including any Patent opposition or re-examination proceeding) challenging or denying the validity or enforceability of any claim of any Patent that is licensed to the Challenging Party under this Agreement by the other Party (the “Non-Challenging Party”) (each of (A) and (B)each, a “Patent Challenge”), thenthat Cover any Collaboration Compound, Collaboration Product, or Companion Diagnostic directed to a Collaboration Target, then the extent permitted by Applicable Lawother Party may terminate this Agreement with respect to such Collaboration Target to which the Patent Challenge related, the Non-Challenging Party shall have the right, in its sole discretion, to give upon written notice to the Challenging challenging Party; provided that (a) this Section 16.3 (Termination for Patent Challenge) will not apply to any such Patent Challenge that is first made by a Party or one of its Related Parties in defense of a claim of patent infringement brought by the other Party under the applicable Patent, (b) with respect to any Third Party that becomes an Affiliate of a Party during the Non-Challenging Term as a result of a Change of Control of such Party may terminate the license(sor acquisition by such Party, this Section 16.3 (Termination for Patent Challenge) granted under will not apply to any Patent Challenge involving such Third Party (i) if such Patent to Challenge was initiated at least three (3) months before the Challenging signing of the definitive document(s) whereby such Third Party [***] days following becomes such noticean Affiliate, andor (ii) if such Patent Challenge was initiated within any such three (3) month period, unless the Challenging if such Party withdraws or causes such Patent Challenge to be withdrawn all such challenge(s), terminated or dismissed (or in the case of ex-parte ex‑parte proceedings, multi-party multi‑party proceedings, or other Patent Challenges that to be withdrawn, causes such Third Party to withdraw as a party from such Patent Challenge and to cease actively assisting any other party to such Patent Challenge), and (c) with respect to any non‑Affiliate Sublicensee, a Party will not have the Challenging right to terminate this Agreement under this Section 16.3 (Termination for Patent Challenge) with respect to any Collaboration Target if the other Party (i) causes such Patent Challenge to be terminated or dismissed (or in the case of ex‑parte proceedings, multi‑party proceedings, or other Patent Challenges in which the challenging party does not have the power to unilaterally withdraw or cause the Patent Challenge to be withdrawn, the Challenging Party ceases causes such Sublicensee to withdraw as a party from such Patent Challenge and to cease actively assisting any other party to such Patent Challenge and, Challenge) or (ii) terminates such Sublicensee’s sublicense to the extent Patents being challenged by the Challenging Sublicensee, in each case, within ninety (90) days of the terminating Party’s notice to the other Party is a party to such under this Section 16.3 (Termination for Patent Challenge, it withdraws from such Patent Challenge within such [***]-day period, the Non-Challenging Party shall have the right to deem the Challenging Party to have exercised an Opt-Out with respect to any Shared Product(s) Covered by a Patent that is the subject of such Patent Challenge, by providing written notice thereof to the Challenging Party, in which case the provisions of Section 14.3 shall apply; provided, however, [***]. The foregoing right of the Non-Challenging Party shall not apply with respect to any Patent Challenge where the Patent Challenge is made in defense of an assertion of the relevant Patent that is first brought by the Non-Challenging Party against the Challenging Party. For the avoidance of doubt, any participation by the Challenging Party or its employees in any claim, challenge or proceeding in response to a subpoena or as required under a pre-existing agreement between the Challenging Party’s employee(s) or consultant(s) and their prior employer(s) shall not constitute active and voluntary participation or assistance and shall not give rise to the Non-Challenging Party’s right to deem the Challenging Party as having exercised an Opt-Out with respect to any Shared Product hereunder).

Termination for Patent Challenge. If a Either Party may terminate this Agreement if the other Party (the “Challenging Party”) (Aa) commences or actively and otherwise voluntarily participates determines to participate in any action or proceeding (including any Patent opposition or re-examination proceeding), or otherwise asserts any claim, challenging or denying the enforceability or validity or enforceability of any claim of within an issued patent or patent application (excluding any Patent that dispute over inventorship, which disputes will be resolved in accordance with Section 7.1.3(g)) within (i) the Licensed Patents (if Biogen is licensed to the Challenging Party under this Agreement challenging Party) or (Bii) the Biogen Program Technology or Biogen Product-Specific Patents (if Ionis is the challenging Party) or (b) directs, supports or actively and voluntarily assists any other Person in bringing or prosecuting any action or proceeding (including any Patent opposition or re-examination proceeding) challenging or denying the validity or enforceability of any claim of any within an issued patent or patent application within such Patent that is licensed to the Challenging Party under this Agreement by the other Party Rights and, in each case (the “Non-Challenging Party”(a) or (each of (A) and (Bb)), a “Patent Challenge”), then, to the extent permitted by Applicable Law, the Non-Challenging Party shall have the right, in its sole discretion, to give notice to the Challenging Party that the Non-Challenging Party may terminate the license(s) granted under such Patent to the Challenging Party within [***] days following days’ written notice from such noticeParty, andthe challenging Party fails to rescind any and all of such actions, unless provided however that, nothing in this clause prevents the Challenging challenging Party withdraws or causes from taking any of the actions referred to be withdrawn all such challenge(s), or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges this clause and provided further that the Challenging notifying Party does will not have the power to unilaterally withdraw or cause to be withdrawn, the Challenging Party ceases assisting any other party to such Patent Challenge and, to the extent the Challenging Party is a party to such Patent Challenge, it withdraws from such Patent Challenge within such [***]-day period, the Non-Challenging Party shall have the right to deem terminate under this Section 10.3.9 if the Challenging challenging Party: (a) takes any such action as described in clause (a) or (b) above as may be necessary or reasonably required to assert a cross-claim or a counter-claim or to respond to a court request or order or administrative law request or order, including asserting invalidity as a defense in any court proceeding brought by the notifying Party to have exercised an Opt-Out with respect to any Shared Product(s) Covered by a Patent that is the subject asserting infringement of such Patent ChallengeRights; or (b) Acquires a Third Party that has an existing challenge, by providing written notice thereof to whether in a court or administrative proceeding, against such Patent Rights; or (c) licenses a product for which the Challenging Partynotifying Party has an existing challenge, whether in which case the provisions of Section 14.3 shall apply; provideda court or administrative proceeding, however, [***]. The foregoing right of the Non-Challenging Party shall not apply with respect to any against such Patent Challenge where the Patent Challenge is made in defense of an assertion of the relevant Patent that is first brought by the Non-Challenging Party against the Challenging Party. For the avoidance of doubt, any participation by the Challenging Party or its employees in any claim, challenge or proceeding in response to a subpoena or as required under a pre-existing agreement between the Challenging Party’s employee(s) or consultant(s) and their prior employer(s) shall not constitute active and voluntary participation or assistance and shall not give rise to the Non-Challenging Party’s right to deem the Challenging Party as having exercised an Opt-Out with respect to any Shared Product hereunderRights.