Common use of Termination for Patent Challenges Clause in Contracts

Termination for Patent Challenges. Either Party shall have the right to terminate this Jounce Lead Co-Co Agreement solely on a Co-Co Product-by-Co-Co Product basis upon written notice in accordance with Section 12.2 of the Master Collaboration Agreement if the other Party or any Affiliate challenges the validity, scope or enforceability of or otherwise opposes any Patent (a) included in the Jounce Co-Co IP and that is licensed to Celgene CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. under this Jounce Lead Co-Co Agreement, or (b) included in the Celgene Patents that is licensed to Jounce under this Jounce Lead Co-Co Agreement (other than in either case 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) it being understood and agreed that either Party’s right to terminate this Jounce Lead Co-Co Agreement under this Section 8.5 shall not apply to any actions undertaken by an Affiliate of the other Party (the “Challenging Party”) that first becomes such an Affiliate as a result of a Business Combination involving the Challenging Party, where such new Affiliate was undertaking any of the activities described in the foregoing clause prior to such Business Combination; provided that a Party’s right to terminate this Jounce Lead Co-Co Agreement under this Section 8.5 shall apply to actions undertaken by such new Affiliate if the Challenging Party is the acquiror in such Business Combination and such new Affiliate does not terminate or otherwise cease such challenge or opposition within [***] after the effective date of such Business Combination. For the avoidance of doubt, an action by a Party or any Affiliate (collectively the “Prosecuting Party”) in accordance with this Jounce Lead Co-Co Agreement and the Master Collaboration Agreement 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, 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 Prosecuting Party’s Prosecution and Maintenance of such pending patent application in accordance with Section 6.3, shall not constitute a challenge under this Section 8.5.

Termination for Patent Challenges. Either Party shall have the right to terminate this Jounce Lead Co-Co PD-1 License Agreement solely on a Co-Co Product-by-Co-Co Product basis upon written notice in accordance with Section 12.2 of the Master Collaboration Agreement if the other Party or any Affiliate challenges the validity, scope or enforceability of or otherwise opposes any Patent (a) included in the Jounce Co-Co Licensed IP and that is licensed to Celgene under this PD-1 License Agreement, or (b) included in the Celgene Patents that is licensed to Jounce under this PD-1 License Agreement (other than in either case 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) it being understood and agreed that either Party’s right to terminate this PD-1 License Agreement under this Section 6.5 shall not apply to any actions undertaken by an Affiliate of the other Party (the “Challenging Party”) that first becomes such an Affiliate as a result of a Business Combination CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. under this Jounce Lead Co-Co Agreement, or (b) included in the Celgene Patents that is licensed to Jounce under this Jounce Lead Co-Co Agreement (other than in either case 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) it being understood and agreed that either Party’s right to terminate this Jounce Lead Co-Co Agreement under this Section 8.5 shall not apply to any actions undertaken by an Affiliate of the other Party (the “Challenging Party”) that first becomes such an Affiliate as a result of a Business Combination involving the Challenging Party, where such new Affiliate was undertaking any of the activities described in the foregoing clause prior to such Business Combination; provided that a Party’s right to terminate this Jounce Lead Co-Co PD-1 License Agreement under this Section 8.5 6.5 shall apply to actions undertaken by such new Affiliate if the Challenging Party is the acquiror in such Business Combination and such new Affiliate does not terminate or otherwise cease such challenge or opposition within [***] after the effective date of such Business Combination. For the avoidance of doubt, an action by a Party or any Affiliate (collectively the “Prosecuting Party”) in accordance with this Jounce Lead Co-Co PD-1 License Agreement and the Master Collaboration Agreement 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, 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 Prosecuting Party’s Prosecution and Maintenance of such pending patent application in accordance with Section 6.34.3, shall not constitute a challenge under this Section 8.56.5.

Termination for Patent Challenges. Either Party shall have the right to terminate this Jounce Celgene Lead Co-Co Agreement solely on a Co-Co Product-by-Co-Co Product basis upon written notice in accordance with Section 12.2 of the Master Collaboration Agreement if the other Party or any Affiliate challenges the validity, scope or enforceability of or otherwise opposes any Patent (a) included in the Jounce Celgene Co-Co IP and that is licensed to Celgene CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. under this Jounce Celgene Lead Co-Co Agreement, or (b) included in the Celgene Patents that is licensed to Jounce under this Jounce Celgene Lead Co-Co Agreement (other than in either case 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) it being understood and agreed that either Party’s right to terminate this Jounce Celgene Lead Co-Co Agreement under this Section 8.5 shall not apply to any actions undertaken by an Affiliate of the other Party (the “Challenging Party”) that first becomes such an Affiliate as a result of a Business Combination involving the Challenging Party, where such new Affiliate was undertaking any of the activities described in the foregoing clause prior to such Business Combination; provided that a Party’s right to terminate this Jounce Celgene Lead Co-Co Agreement under this Section 8.5 shall apply to actions undertaken by such new Affiliate if the Challenging Party is the acquiror in such Business Combination and such new Affiliate does not terminate or otherwise cease such challenge or opposition within [***] after the effective date of such Business Combination. For the avoidance of doubt, an action by a Party or any Affiliate (collectively the “Prosecuting Party”) in accordance with this Jounce Celgene Lead Co-Co Agreement and the Master Collaboration Agreement 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, 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 Prosecuting Party’s Prosecution and Maintenance of such pending patent application in accordance with Section 6.3, shall not constitute a challenge under this CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. Section 8.5.