Common use of Third Party Patents Clause in Contracts

Third Party Patents. If a patent or patents should issue to a 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 under such patent or patents in said country, then OMP shall promptly notify ADDEX in writing to that effect with legal opinions. The Parties shall meet to discuss such opinions and appropriate actions to address such potential patent infringement. OMP will have the right to obtain a royalty-bearing license to such patent or patents 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 ADDEX believes that there is no reasonably basis for believing that there is infringement of such Third Party patent or patents, ADDEX may request arbitration under Article 18 on said issue to avoid reduction of ADDEX’s royalty payments.

Third Party Patents. (a) If a either Party becomes aware of any patent or patents should issue other appropriate intellectual property belonging to a Third 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 any country the Roche Territory, the Party shall notify the other Party 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 under such patent or patents in said country, then OMP shall promptly notify ADDEX in writing to that effect with legal opinionssuch. The Parties shall meet to thereafter discuss such opinions and appropriate actions to address a means of resolving such potential patent infringement. OMP will have the right to obtain infringement including taking a royalty-bearing license to such patent or patents being infringed by OMPother intellectual property. If as a result of an agreement between the parties, 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 GENENTECH acquires a license to such Third Party 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 royalty payments otherwise payable to ADDEX on the Net Sales 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 Collaboration Product calculated using an average royalty rate. Such application 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 deduction shall not apply to such license obtained for 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 act of OMP using [***]. If ADDEX believes that there is no reasonably basis for believing that there is infringement by ROCHE of such Third Party patent or patents, ADDEX may request arbitration under Article 18 on said issue to avoid reduction intellectual property which covers the manufacture of ADDEX’s royalty paymentsthe Product.

Third Party Patents. If a patent or patents should issue to a 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 under such patent or patents in said country, then OMP shall promptly notify ADDEX in writing to that effect with legal opinions. The Parties shall meet to discuss such opinions and appropriate actions to address such potential patent infringement. OMP will have the right to obtain a royalty-bearing license to such patent or patents 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 ADDEX believes that there is no reasonably basis for believing that there is infringement of such Third Party patent or patents, ADDEX may request arbitration under Article 18 on said issue to avoid reduction of ADDEX’s royalty payments.

Third Party Patents. If a patent the Responsible Party is producing Clinical Requirements or Commercial Requirements for the other Party and either Party becomes aware of any patents should issue or other appropriate intellectual property belonging to a Third third party which either Party reasonably believes that, in any country the absence of a license thereto, the Responsible Party would infringe by virtue of the Territory during the term Responsible Party's manufacture 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 under such patent or patents in said countryProduct, then OMP the Responsible Party shall promptly notify ADDEX in writing to that effect with legal opinionsadvise the other Party of such. The Parties shall meet to thereafter discuss such opinions and appropriate actions to address a means of resolving such potential patent infringement. OMP will have infringement including one Party or the right to obtain other (or jointly) taking a royalty-bearing license to such patent or patents being infringed other intellectual property. If as a result of an agreement between the Parties, 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 Other Operating Income/Expense as defined in the Financial Appendix. If the Responsible Party insists that such a license is necessary but the other Party does not agree, or if 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 the other Party shall defend, indemnify and hold harmless 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 OMPthe Responsible Party of such patent or intellectual property which covers the manufacture of that Drug Candidate or Product. If the other Party insists that such a license is necessary but the Responsible Party does not agree or if 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, subject to ADDEX’s approvalthen the Responsible Party shall defend, indemnify and hold harmless the other Party from and against all third party costs, claims, suits, expenses (including reasonable attorneys fees) and damages arising out of or resulting from any infringement by the Responsible Party or the other Party of such patent or intellectual property which approval covers the manufacture of that Product. The provisions of the previous two sentences shall not be unreasonably withheld. OMP may deduct from the amount of royalties due ADDEX on Net Sales of Collaboration Product charged transferable to infringe, an amount which is the lesser of [***] all sums actually paid by OMP to such Third Party any other 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 ADDEX believes that there is no reasonably basis for believing that there is infringement of such Third Party patent or patents, ADDEX may request arbitration under Article 18 on said issue to avoid reduction of ADDEX’s royalty paymentsperson.