Transfer of Patents. In the event of any sale, assignment, transfer, exclusive license, or other conveyance of any ownership interest in a Party’s Licensed Patents (“TRANSFER”), such Party shall (i) ensure that the purchaser, assignee, transferee, or exclusive licensee (“TRANSFEREE”) shall be bound by all applicable licenses, immunities, covenants, and restrictions contained in this Agreement, (ii) require that such Transferee agree in writing prior to any such Transfer to be bound by all licenses, immunities, covenants, and other restrictions hereunder, and (iii) ensure that such Transfer does not affect such Party’s right and ability to perform all of its obligations under this Agreement. In no event shall such Party be relieved or excused from any of its obligations under this Agreement as a result of such Transfer. Notwithstanding anything to the contrary contained in Section 10.12, each Party shall have the right to file this Agreement, and ASML shall have the right to file any sublicense agreement with Zeiss SMT (including, to the extent attached thereto, the Nikon-Zeiss SMT Patent Cross-License Agreement) or any summary or translation hereof or thereof with any patent office or other Governmental Authority in order to notify potential Transferees of the existence and terms of this Agreement or such sublicense as it relates to any Licensed Patents proposed to be Transferred, provided that prior to any such filing the other Party shall be given an opportunity to propose reasonable redactions to be made to the filed version of this Agreement or such sublicense and the Parties shall cooperate with respect to agreeing on such redactions. Each Party shall provide all reasonable cooperation requested by the filing Party, at the filing Party’s expense, including, without limitation, the execution, delivery and filing of any applicable instruments, notifications, forms, affidavits and the like. *** - indicates material omitted pursuant to a confidential treatment request and filed separately with the Securities and Exchange Commission.
Appears in 2 contracts
Samples: License Agreement, License Agreement (Asml Holding Nv)
Transfer of Patents. In the event of any sale, assignment, transfer, exclusive license, or other conveyance of any ownership interest by a Party or its Grantor Entities (the “Transferor”) in a Party’s the ASML Licensed Patents or Restricted Patents of an ASML Grantor Entity, or the Zeiss Licensed Patents or Restricted Patents of a Zeiss Grantor Entity, on the one hand, or the Nikon Licensed Patents or Restricted Patents of a Nikon Grantor Entity, on the other hand, that are reasonably relevant to the Licensed Products of the other Party or Parties as applicable (“TRANSFERTransfer”), such Party Transferor shall (ia) ensure that the purchaser, assignee, transferee, or exclusive licensee (“TRANSFEREETransferee”) shall be bound by all applicable licenses, immunitiesreleases, covenants, and other rights (including Section 3.6 (Conversion of Licensed Patents)), and restrictions contained in this Agreement, (iib) require that such Transferee agree in writing prior to any such Transfer to be bound by all licenses, immunitiescovenants, covenantsand other rights (including Section 3.6 (Conversion of Licensed Patents)), and other restrictions hereunder, and (iiic) ensure that such Transfer does not affect such Partythe Transferor’s right and ability to perform all of its obligations under this Agreement. In no event shall such Party Transferor be relieved or excused from any of its obligations under this Agreement as a result of such Transfer, and Transferor shall expressly reserve and retain the right to grant or extend all licenses, releases, covenants, and other rights that may be required to be granted or extended by such Transferor under this Agreement including pursuant to Section 3.6 (Conversion of Licensed Patents). Notwithstanding anything to the contrary contained in Section 10.12, each Party shall have the right to file this Agreement, and ASML shall have the right to file any sublicense agreement with Zeiss SMT (including, to the extent attached thereto, the Nikon-Zeiss SMT Patent Cross-License Agreement) or any summary or translation hereof or thereof with any patent office or other Governmental Authority in order to notify potential Transferees of the existence and terms of this Agreement or such sublicense as it relates to any Licensed Patents proposed to be Transferred, provided that prior to any such filing the other Party Parties shall be given an opportunity to propose reasonable redactions to be made to the filed version of this Agreement or such sublicense and the Parties shall cooperate with respect to agreeing on such redactions. Each Party shall provide all reasonable cooperation requested by the filing Party, at the filing Party’s expense, including, without limitation, including the execution, delivery and filing of any applicable instruments, notifications, forms, affidavits and the like. *** - indicates material omitted pursuant to a confidential treatment request and filed separately with the Securities and Exchange Commission.
Appears in 1 contract
Transfer of Patents. In the event of any sale, assignment, transfer, exclusive license, or other conveyance of any ownership interest in a Party’s 's Licensed Patents (“"TRANSFER”"), such Party shall (i) ensure that the purchaser, assignee, transferee, or exclusive licensee (“"TRANSFEREE”") shall be bound by all applicable licenses, immunities, covenants, and restrictions contained in this Agreement, (ii) require that such Transferee agree in writing prior to any such Transfer to be bound by all licenses, immunities, covenants, and other restrictions hereunder, and (iii) ensure that such Transfer does not affect such Party’s 's right and ability to perform all of its obligations under this Agreement. In no event shall such Party be relieved or excused from any of its obligations under this Agreement as a result of such Transfer. Notwithstanding anything to the contrary contained in Section 10.12, each Party shall have the right to file this Agreement, and ASML shall have the right to file any sublicense agreement with Zeiss SMT (including, to the extent attached thereto, the Nikon-Zeiss SMT Patent Cross-License Agreement) or any summary or translation hereof or thereof with any patent office or other Governmental Authority in order to notify potential Transferees of the existence and terms of this Agreement or such sublicense as it relates to any Licensed Patents proposed to be Transferred, provided that prior to any such filing the other Party shall be given an opportunity to propose reasonable redactions to be made to the filed version of this Agreement or such sublicense and the Parties shall cooperate with respect to agreeing on such redactions. Each Party shall provide all reasonable cooperation requested by the filing Party, at the filing Party’s 's expense, including, without limitation, the execution, delivery and filing of any applicable instruments, notifications, forms, affidavits and the like. *** - indicates material omitted pursuant to a confidential treatment request and filed separately with the Securities and Exchange Commission.
Appears in 1 contract
Samples: License Agreement (Asml Holding Nv)
Transfer of Patents. In the event of any sale, assignment, transfer, exclusive license, or other conveyance of any ownership interest in a Party’s 's Licensed Patents (“"TRANSFER”"), such Party shall (i) ensure that the purchaser, assignee, transferee, or exclusive licensee (“"TRANSFEREE”") shall be bound by all applicable licenses, immunities, covenants, and restrictions contained in this Agreement, (ii) require that such Transferee agree in writing prior to any such Transfer to be bound by all licenses, immunities, covenants, and other restrictions hereunder, and (iii) ensure that such Transfer does not affect such Party’s 's right and ability to perform all of its obligations under this Agreement. In no event shall such Party be relieved or excused from any of its obligations under this Agreement as a result of such Transfer. Notwithstanding anything to the contrary contained in Section 10.12, each Party shall have the right to file this Agreement, and Zeiss SMT and ASML (as provided in Section 9.3 of the Nikon-ASML Patent Cross-License Agreement) shall have the right to file any sublicense agreement with Zeiss SMT (including, to the extent attached thereto, the Nikon-Zeiss SMT Patent Cross-License Agreement) ASML or any summary or translation hereof or thereof with any patent office or other Governmental Authority in order to notify potential Transferees of the existence and terms of this Agreement or such sublicense as it relates to any Licensed Patents proposed to be Transferred, provided that prior to any such filing the other Party shall be given an opportunity to propose reasonable redactions to be made to the filed version of this Agreement or such sublicense and the Parties shall cooperate with respect to agreeing on such redactions. Each Party shall provide all reasonable cooperation requested by the filing Party, at the filing Party’s 's expense, including, without limitation, the execution, delivery and filing of any applicable instruments, notifications, forms, affidavits and the like. *** - indicates material omitted pursuant Notwithstanding the foregoing, to the extent Zeiss SMT is by operation of German Law obligated to offer the inventor of any Patent the option to maintain such Patent or file a confidential treatment subsequent Patent application claiming priority from such Patent in his or her own name in any country in which Zeiss SMT is not interested in pursuing such Patent, Zeiss SMT shall first request that such inventor agree to grant Nikon the same rights under such Patent as if Zeiss SMT were to retain its rights under such Patent. If such inventor refuses to consent to this condition, and filed separately with to the Securities extent German Law does not allow Zeiss SMT to require the inventor to either (i) grant Nikon the same rights under such Patent as if Zeiss SMT were to retain its rights under such Patent, or (ii) permit Zeiss SMT to grant to Nikon and Exchange Commission.its Subsidiaries and their respective Covered Entities and vendors the licenses, immunities, and additional commitments set forth in Sections 2, 3, and 4 hereof, then Zeiss SMT shall notify Nikon of the situation, and if Nikon makes a written request to Zeiss SMT within three (3) weeks of receipt of such notification from Zeiss SMT, Zeiss SMT shall maintain and/or prosecute such Patent at Nikon's sole expense, as long as Nikon is willing to bear such maintenance and prosecution costs and expenses, in which event Zeiss SMT shall retain full control, discretion, and ownership of and regarding such Patent, subject to all the terms and conditions of this Agreement. If Nikon fails to make such a written request, or notifies Zeiss SMT that it is no longer willing to bear any such maintenance and prosecution costs, then Zeiss SMT may, to the extent it is,
Appears in 1 contract
