Common use of Third Party Patents Clause in Contracts

Third Party Patents. (a) If either Party becomes aware of any patent or other appropriate intellectual property belonging to a third party which the Party reasonably believes that without a license thereto GENENTECH would infringe by virtue of its obligations under Article IV to manufacture and supply both clinical and commercial needs for Bulk Product or Vialed Product in the Roche Territory, the Party shall notify the other Party of such. The Parties shall thereafter discuss a means of resolving such potential infringement including taking a license to such patent or other intellectual property. If as a result of an agreement between the parties, GENENTECH acquires a license to such patent or other intellectual property, the associated intellectual property acquisition and licensing costs shall be deemed to be part of the GENENTECH's Fully Burdened Manufacturing Cost. (b) If GENENTECH insists that such a license is necessary but ROCHE does not agree, or if ROCHE is not willing to agree to terms for such a license that are acceptable to the third party patent or intellectual property owner, then ROCHE shall defend, indemnify and hold harmless GENENTECH from and against all third party costs, claims, suits, expenses (including reasonable attorney's fees) and damages arising out of or resulting from any infringement by GENENTECH of such patent or intellectual property which covers the manufacture of the Product. (c) If ROCHE insists that such a license is necessary but GENENTECH does not agree, or if GENENTECH is not willing to agree to terms for such a license that are acceptable to the third party patent or intellectual property owner, then GENENTECH shall defend, indemnify and hold harmless ROCHE from and against all third party costs, claims, suits, expenses (including reasonable attorney's fees) and damages arising out of or resulting from any infringement by ROCHE of such patent or intellectual property which covers the manufacture of the Product.

Third Party Patents. (a) If either Party becomes aware of any a patent or other appropriate intellectual property belonging patents should issue to a third party Third Party in any country of the Territory during the term of this Agreement, which OMP believes, in its reasonable judgment, would be infringed by the use or sale of a Collaboration Compound in such country, and if OMP believes, in its reasonable judgment, that it would be impractical or impossible to commercialize a Collaboration Product containing such Collaboration Product without obtaining a royalty-bearing license from such Third Party reasonably believes under such patent or patents in said country, then OMP shall promptly notify ADDEX in writing to that without a license thereto GENENTECH would infringe by virtue of its obligations under Article IV to manufacture and supply both clinical and commercial needs for Bulk Product or Vialed Product in the Roche Territory, the Party shall notify the other Party of sucheffect with legal opinions. The Parties shall thereafter meet to discuss a means of resolving such opinions and appropriate actions to address such potential infringement including taking patent infringement. OMP will have the right to obtain a royalty-bearing license to such patent or other intellectual propertypatents being infringed by OMP, subject to ADDEX’s approval, which approval shall not be unreasonably withheld. OMP may deduct from the amount of royalties due ADDEX on Net Sales of Collaboration Product charged to infringe, an amount which is the lesser of [***] all sums actually paid by OMP to such Third Party or [***] of all royalty payments otherwise payable to ADDEX on the Net Sales of such Collaboration Product calculated using an average royalty rate. Such application and deduction shall not apply to such license obtained for any act of OMP using [***]. If as a result ADDEX believes that there is no reasonably basis for believing that there is infringement of an agreement between the parties, GENENTECH acquires a license to such Third Party patent or other intellectual propertypatents, the associated intellectual property acquisition and licensing costs shall be deemed ADDEX may request arbitration under Article 18 on said issue to be part avoid reduction of the GENENTECH's Fully Burdened Manufacturing CostADDEX’s royalty payments. (b) If GENENTECH insists that such a license is necessary but ROCHE does not agree, or if ROCHE is not willing to agree to terms for such a license that are acceptable to the third party patent or intellectual property owner, then ROCHE shall defend, indemnify and hold harmless GENENTECH from and against all third party costs, claims, suits, expenses (including reasonable attorney's fees) and damages arising out of or resulting from any infringement by GENENTECH of such patent or intellectual property which covers the manufacture of the Product. (c) If ROCHE insists that such a license is necessary but GENENTECH does not agree, or if GENENTECH is not willing to agree to terms for such a license that are acceptable to the third party patent or intellectual property owner, then GENENTECH shall defend, indemnify and hold harmless ROCHE from and against all third party costs, claims, suits, expenses (including reasonable attorney's fees) and damages arising out of or resulting from any infringement by ROCHE of such patent or intellectual property which covers the manufacture of the Product.

Third Party Patents. (a) If the Responsible Party is producing Clinical Requirements or Commercial Requirements for the other Party and either Party becomes aware of any patent patents or other appropriate intellectual property belonging to a third party which the either Party reasonably believes that without that, in the absence of a license thereto GENENTECH thereto, the Responsible Party would infringe by virtue of its obligations under Article IV to the Responsible Party's manufacture and supply both clinical and commercial needs for Bulk Product or Vialed Product in of that Product, then the Roche Territory, the Responsible Party shall notify advise the other Party of such. The Parties shall thereafter discuss a means of resolving such potential infringement including one Party or the other (or jointly) taking a license to such patent or other intellectual property. If as a result of an agreement between the partiesParties, GENENTECH the Responsible Party acquires a license to such patent or other intellectual property, then the associated intellectual property acquisition and licensing costs shall be deemed to be part of the GENENTECH's Fully Burdened Manufacturing Cost. (b) Other Operating Income/Expense as defined in the Financial Appendix. If GENENTECH the Responsible Party insists that such a license is necessary but ROCHE the other Party does not agree, or if ROCHE the other Party is not willing to agree to terms for such a license that are acceptable to the Responsible Party and to the third party patent or intellectual property owner, then ROCHE the other Party shall defend, indemnify and hold harmless GENENTECH the Responsible Party and the other Party from and against all third party costs, claims, suits, expenses (including reasonable attorney's fees) and damages arising out of or resulting from any infringement by GENENTECH the Responsible Party of such patent or intellectual property which covers the manufacture of that Drug Candidate or Product. If the Product. (c) If ROCHE other Party insists that such a license is necessary but GENENTECH the Responsible Party does not agree, agree or if GENENTECH the Responsible Party is not willing to agree to terms for such a license that are acceptable to the other Party and to the third party patent or intellectual property owner, then GENENTECH the Responsible Party shall defend, indemnify and hold harmless ROCHE the other Party from and against all third party costs, claims, suits, expenses (including reasonable attorney's attorneys fees) and damages arising out of or resulting from any infringement by ROCHE the Responsible Party or the other Party of such patent or intellectual property which covers the manufacture of that Product. The provisions of the Productprevious two sentences shall not be transferable to any other party or person.

Third Party Patents. (a) If either Party becomes aware of any a patent or other appropriate intellectual property belonging patents should issue to a third party Third Party in any country of the Territory during the term of this Agreement, which OMP believes, in its reasonable judgment, would be infringed by the use or sale of a Collaboration Compound in such country, and if OMP believes, in its reasonable judgment, that it would be impractical or impossible to commercialize a Collaboration Product containing such Collaboration Product without obtaining a royalty-bearing license from such Third Party reasonably believes under such patent or patents in said country, then OMP shall promptly notify ADDEX in writing to that without a license thereto GENENTECH would infringe by virtue of its obligations under Article IV to manufacture and supply both clinical and commercial needs for Bulk Product or Vialed Product in the Roche Territory, the Party shall notify the other Party of sucheffect with legal opinions. The Parties shall thereafter meet to discuss a means of resolving such opinions and appropriate actions to address such potential infringement including taking patent infringement. OMP will have the right to obtain a royalty-bearing license to such patent or other intellectual propertypatents being infringed by OMP, subject to ADDEX’s approval, which approval shall not be unreasonably withheld. OMP may deduct from the amount of royalties due ADDEX on Net Sales of Collaboration Product charged to infringe, an amount which is the lesser of [***] all sums actually paid by OMP to such Third Party or [***] of all royalty payments otherwise payable to ADDEX on the Net Sales of such Collaboration Product calculated using an average royalty rate. Such application and deduction shall not apply to such license obtained for any act of OMP using [***] [***]. If as a result ADDEX believes that there is no reasonably basis for believing that there is infringement of an agreement between the parties, GENENTECH acquires a license to such Third Party patent or other intellectual propertypatents, the associated intellectual property acquisition and licensing costs shall be deemed ADDEX may request arbitration under Article 18 on said issue to be part avoid reduction of the GENENTECH's Fully Burdened Manufacturing CostADDEX’s royalty payments. (b) If GENENTECH insists that such a license is necessary but ROCHE does not agree, or if ROCHE is not willing to agree to terms for such a license that are acceptable to the third party patent or intellectual property owner, then ROCHE shall defend, indemnify and hold harmless GENENTECH from and against all third party costs, claims, suits, expenses (including reasonable attorney's fees) and damages arising out of or resulting from any infringement by GENENTECH of such patent or intellectual property which covers the manufacture of the Product. (c) If ROCHE insists that such a license is necessary but GENENTECH does not agree, or if GENENTECH is not willing to agree to terms for such a license that are acceptable to the third party patent or intellectual property owner, then GENENTECH shall defend, indemnify and hold harmless ROCHE from and against all third party costs, claims, suits, expenses (including reasonable attorney's fees) and damages arising out of or resulting from any infringement by ROCHE of such patent or intellectual property which covers the manufacture of the Product.