Common use of Zealand Pharma Patent Prosecution Clause in Contracts

Zealand Pharma Patent Prosecution. Zealand Pharma, through internal or reputable external patent attorney or agent of its choice, shall file, prosecute and maintain the Zealand Pharma Patents. If, at any time after the Effective Date, Zealand Pharma identifies a Patent Right Controlled by Zealand Pharma which would be infringed by the manufacture, use or sale of Collaboration Compounds or Products by BI, its Affiliates, Sublicensees, Recognized Agents or customers, Zealand Pharma shall propose to BI by notice that such Patent Rights be included within the scope of the license granted in Section 5.1 and added to Appendix 1.112(b). BI shall have nine (9) months from the receipt of such notice to elect, in its sole discretion, whether or not such Patent Rights shall be added to Appendix 1.112(b). [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. Similarly, if at any time after the Effective Date, BI identifies a Patent Right Controlled by Zealand Pharma which would be infringed by manufacture, use or sale of Collaboration Compounds or Products by BI, its Affiliates, Sublicensees, Recognized Agents or customers, BI may require by notice to Zealand Pharma that such Patent Rights be included within the scope of the license granted in Section 5.1 and added to Appendix 1.112(b). Any Patent Rights Controlled by Zealand Pharma so added to Appendix 1.112(b) shall bear royalties as provided in Section 12.8(1)(x), an any Patent Rights controlled by Zealand Pharma that are not added to Appendix 1.112(b) as provided in this section may not be used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI, its Affiliates, Sublicensees, Recognized Agents and customers. During the Term of this Agreement, the Parties shall reasonably cooperate in the filing, prosecution and maintaining of the Zealand Pharma Patents, and Zealand Pharma shall keep BI regularly and currently informed of all steps to be taken in the preparation, filing, prosecution and maintenance of the Zealand Pharma Patents, and agree upon a common patent strategy and shall furnish BI with copies of such applications and amendments thereto, and any other related correspondence to and from patent offices and external patent attorneys and agents. BI shall have the right to comment thereon within thirty (30) days after receipt from Zealand Pharma before Zealand Pharma makes the submission to a patent office which could materially affect the scope or validity of the patent coverage and Zealand Pharma shall reasonably take into account all comments made by or on behalf of BI (BI shall provide its comments within fifteen (15) days, if possible). In case of a dispute, BI shall always have the final decision-making authority with respect to any action relating to the preparation, filing, prosecution and maintenance of any Zealand Pharma Patents to the extent relating to Collaboration Compounds or Products, acting reasonably and in good faith to secure the most valuable protection available under applicable patent laws. In all other cases Zealand Pharma shall have the final decision-making authority with respect to any action relating to the preparation, filing, prosecution and maintenance of any Zealand Pharma Patents, acting reasonably and in good faith to secure the most valuable protection available under applicable patent laws. BI shall bear all fees and external expenses necessary for the prosecution and maintenance of the Zealand Pharma Patents listed in Appendix 1.112(a) and any continuation, continuation-in-part (to the extent claiming priority to at least one of the Patent Rights listed in Appendix 1.112(a)), division, reissue, renewal, re-examination, extension or supplementary protection certificate granted in relation thereto, or any foreign counterpart thereof. Except as may otherwise be agreed, Zealand Pharma shall bear all fees [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. and external expenses necessary for the prosecution and maintenance of the Zealand Pharma Patents listed in Appendix 1.112(b). If BI determines that it no longer wishes to have a license for a Zealand Pharma Patent listed in Appendix 1.112(a) or Appendix 1.112(b), or to any continuation, continuation-in-part (to the extent claiming priority to at least one of the Patent Rights listed in Appendix 1.112(a) or Appendix 1.112(b)), division. reissue, renewal, re-examination, extension or supplementary protection certificate granted in relation thereto, or any foreign counterpart thereof, BI shall so notify Zealand Pharma. The Zealand Pharma Patent BI wishes to remove from Appendix 1.112(a) or Appendix 1.112(b) shall be removed therefrom, effective on the last day of the Calendar Quarter first commencing after the date of receipt by Zealand Pharma of such notice. From and after the removal of such Zealand Pharma Patent from Appendix 1.112(a) or Appendix 1.112(b), (i) such Zealand Pharma Patent may not be further used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI, its Affiliates, Sublicensees, Recognized Agents and customers, (ii) BI shall not be obliged to bear fees or external expenses for such a Zealand Pharma Patent accruing after the effective date of such removal, and (iii) Zealand Pharma shall be solely responsible for all further matters with respect to the prosecution, assertion, defense or maintenance of such Zealand Pharma Patent.

Zealand Pharma Patent Prosecution. Zealand Pharma, through an internal or reputable external patent attorney or agent of its choice, shall file, prosecute and maintain the Zealand Pharma Patents. [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. If, at any time after the Effective Date, Zealand Pharma identifies a Patent Right Controlled by Zealand Pharma which would be infringed by the manufacture, use or sale of Collaboration Compounds or Products by BI81, its Affiliates, Sublicensees, Recognized Agents or customersAgents, Zealand Pharma shall propose to to. BI by notice that such Patent Rights be included within the scope of the license granted in Section 5.1 and added to Appendix 1.112(b1.114 (b). BI shall have nine (9) months from the receipt of such notice to elect, in its sole discretion, whether or not such Patent Rights shall be added to Appendix 1.112(b1.114 (b). [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. Similarly, if at any time after the Effective Date, BI identifies a Patent Right Controlled by Zealand Pharma which would be infringed by manufacture, use or sale of Collaboration Compounds or Products by BI, its Affiliates, Sublicensees, Recognized Agents or customersAgents, BI may require by notice to Zealand Pharma that such Patent Rights be included within the scope of the license granted in Section 5.1 and added to Appendix 1.112(b1.114 (b). Any Patent Rights Controlled by Zealand Pharma so added to Appendix 1.112(b1.114 (b) shall bear royalties as provided in Section 12.8(1)(x)12.8, an and any Patent Rights controlled by Zealand Pharma that are not added to Appendix 1.112(b1.114 (b) as provided in this section may not be used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI81, its Affiliates, SublicenseesSublicensees and Recognized Agents, Recognized Agents and customersprovided, however, that the non-assertion undertaking in Section 5.1 shall continue to apply with respect to Patent Rights Controlled by Zealand Pharma that claim Zealand Pharma Platform Technology (to the extent of such claims), even if BI elects not to include such Patent Rights of Zealand Pharma in Appendix 1.114 (b). During the Term of this AgreementTerm, the Parties shall reasonably cooperate in the filing, prosecution and maintaining maintenance of the Zealand Pharma Patents, and Zealand Pharma shall keep BI regularly and currently informed of all steps to be taken in the preparation, filing, prosecution and maintenance of the Zealand Pharma Patents, and agree upon a common patent strategy and shall furnish BI with copies of such applications and amendments thereto, and any other related correspondence to and from patent offices and external patent attorneys and agents. BI shall have the right to comment thereon within thirty (30) days after receipt from Zealand Pharma before Zealand Pharma makes the submission to a patent office which could materially affect the scope or validity of the patent coverage and Zealand Pharma shall reasonably take into account all comments made by or on behalf of BI (BI shall provide its comments within fifteen (15) days, if possible). In case of a dispute, BI shall always have the final decision-making authority with respect to any action relating to the preparation, filing, prosecution and maintenance of any Zealand Pharma Patents solely to the extent relating to that claims cover Collaboration Compounds or ProductsProducts or their use, acting or are directly related thereto, for so long [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. as BI acts reasonably and in good faith to secure the most valuable protection available under applicable patent laws. In all other cases Zealand Pharma shall have the final decision-making authority with respect to any action relating to the preparation, filing, prosecution and maintenance of any Zealand Pharma Patents, including (notwithstanding any other provision hereof) the Zealand Pharma Platform Technology, acting reasonably and in good faith to secure the most valuable protection available under applicable patent laws. BI shall bear all fees and external expenses necessary for the prosecution and maintenance of the Zealand Pharma Patents listed in Appendix 1.112(a1.114 (a) and Appendix 1.114 (b) and any continuation, continuation-in-part (to the extent claiming priority to at least one of the Patent Rights listed in Appendix 1.112(a1.114 (a) or Appendix 1.114 (b)), divisiondivisional, reissue, renewal, re-examination, extension or supplementary protection certificate granted in relation thereto, or any foreign counterpart thereof. Except as may otherwise be agreed, Zealand Pharma shall bear all fees [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. and external expenses necessary for the prosecution and maintenance of the Zealand Pharma Patents listed in Appendix 1.112(b). If BI determines that it no longer wishes to have a license for a Zealand Pharma Patent listed in Appendix 1.112(a) or Appendix 1.112(b), or to any continuation, continuation-in-part (to the extent claiming priority to at least one of the Patent Rights listed in Appendix 1.112(a) or Appendix 1.112(b)), division. reissue, renewal, re-examinationreexamination, extension or supplementary protection certificate granted in relation thereto, or any foreign counterpart thereof, except for those Patent Rights claiming the Zealand Pharma Platform Technology (to the extent of such claims). If BI determines that it no longer wishes to have a license for any Zealand Pharma Patent, BI shall so notify Zealand Pharma. The Such Zealand Pharma Patent BI wishes to remove shall be removed from (if there listed), or noted as not included in, Appendix 1.112(a1.114 (a) or Appendix 1.112(b) shall be removed therefrom1.114 (b), as applicable, effective on the last day of the Calendar Quarter first commencing after the date of receipt by Zealand Pharma of such notice. From and after the removal or annotation of such Zealand Pharma Patent from Appendix 1.112(a1.114 (a) or Appendix 1.112(b1.114 (b), (i) such Zealand Pharma Patent shall not be within the scope of any licenses granted by Zealand Pharma hereunder and may not be further used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI, its Affiliates, Sublicensees, Sublicensees or Recognized Agents and customersAgents, (ii) BI shall not be obliged to bear fees or external expenses for such a Zealand Pharma Patent accruing after the effective date of such removal, and (iii) Zealand Pharma shall be solely responsible for all further matters with respect to the prosecution, assertion, defense or maintenance of such Zealand Pharma Patent, which shall no longer we subject to the prosecution, assertion, defense or maintenance provisions set forth in this Section 14.

Zealand Pharma Patent Prosecution. Zealand Pharma, through internal or reputable external patent attorney or agent of its choice, shall file, prosecute and maintain the Zealand Pharma Patents. If, at any time after the Effective Date, Zealand Pharma identifies a Patent Right Controlled by Zealand Pharma which would be infringed by the manufacture, use or sale of Collaboration Compounds or Products by BI, its Affiliates, Sublicensees, Recognized Agents or customers, Zealand Pharma shall propose to BI by notice that such Patent Rights be included within the scope of the license granted in Section 5.1 and added to Appendix 1.112(b). BI shall have nine (9) months from the receipt of such notice to elect, in its sole discretion, whether or not such Patent Rights shall be added to Appendix 1.112(b). [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. Similarly, if at any time after the Effective Date, BI identifies a Patent Right Controlled by Zealand Pharma which would be infringed by manufacture, use or sale of Collaboration Compounds or Products by BI, its Affiliates, Sublicensees, Recognized Agents or customers, BI may [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. require by notice to Zealand Pharma that such Patent Rights be included within the scope of the license granted in Section 5.1 and added to Appendix 1.112(b). Any Patent Rights Controlled by Zealand Pharma so added to Appendix 1.112(b) shall bear royalties as provided in Section 12.8(1)(x), an any Patent Rights controlled by Zealand Pharma that are not added to Appendix 1.112(b) as provided in this section may not be used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI, its Affiliates, Sublicensees, Recognized Agents and customers. During the Term of this Agreement, the Parties shall reasonably cooperate in the filing, prosecution and maintaining of the Zealand Pharma Patents, and Zealand Pharma shall keep BI regularly and currently informed of all steps to be taken in the preparation, filing, prosecution and maintenance of the Zealand Pharma Patents, and agree upon a common patent strategy and shall furnish BI with copies of such applications and amendments thereto, and any other related correspondence to and from patent offices and external patent attorneys and agents. BI shall have the right to comment thereon within thirty (30) days after receipt from Zealand Pharma before Zealand Pharma makes the submission to a patent office which could materially affect the scope or validity of the patent coverage and Zealand Pharma shall reasonably take into account all comments made by or on behalf of BI (BI shall provide its comments within fifteen (15) days, if possible). In case of a dispute, BI shall always have the final decision-making authority with respect to any action relating to the preparation, filing, prosecution and maintenance of any Zealand Pharma Patents to the extent relating to Collaboration Compounds or Products, acting reasonably and in good faith to secure the most valuable protection available under applicable patent laws. In all other cases Zealand Pharma shall have the final decision-making authority with respect to any action relating to the preparation, filing, prosecution and maintenance of any Zealand Pharma Patents, acting reasonably and in good faith to secure the most valuable protection available under applicable patent laws. BI shall bear all fees and external expenses necessary for the prosecution and maintenance of the Zealand Pharma Patents listed in Appendix 1.112(a) and any continuation, continuation-in-part (to the extent claiming priority to at least one of the Patent Rights listed in Appendix 1.112(a)), division, reissue, renewal, re-examination, extension or supplementary protection certificate granted in relation thereto, or any foreign counterpart thereof. Except as may otherwise be agreed, Zealand Pharma shall bear all fees [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. and external expenses necessary for the prosecution and maintenance of the Zealand Pharma Patents listed in Appendix 1.112(b). If BI determines that it no longer wishes to have a license for a Zealand Pharma Patent listed in Appendix 1.112(a) or Appendix 1.112(b), or to [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. any continuation, continuation-in-part (to the extent claiming priority to at least one of the Patent Rights listed in Appendix 1.112(a) or Appendix 1.112(b)), division. reissue, renewal, re-examination, extension or supplementary protection certificate granted in relation thereto, or any foreign counterpart thereof, BI shall so notify Zealand Pharma. The Zealand Pharma Patent BI wishes to remove from Appendix 1.112(a) or Appendix 1.112(b) shall be removed therefrom, effective on the last day of the Calendar Quarter first commencing after the date of receipt by Zealand Pharma of such notice. From and after the removal of such Zealand Pharma Patent from Appendix 1.112(a) or Appendix 1.112(b), (i) such Zealand Pharma Patent may not be further used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI, its Affiliates, Sublicensees, Recognized Agents and customers, (ii) BI shall not be obliged to bear fees or external expenses for such a Zealand Pharma Patent accruing after the effective date of such removal, and (iii) Zealand Pharma shall be solely responsible for all further matters with respect to the prosecution, assertion, defense or maintenance of such Zealand Pharma Patent.

Zealand Pharma Patent Prosecution. Zealand Pharma, through an internal or reputable external patent attorney or agent of its choice, shall file, prosecute and maintain the Zealand Pharma Patents. If, at any time after the Effective Date, Zealand Pharma identifies a Patent Right Controlled by Zealand Pharma which would be infringed by the manufacture, use or sale of Collaboration Compounds or Products by BI81, its Affiliates, Sublicensees, Recognized Agents or customersAgents, Zealand Pharma shall propose to to. BI by notice that such Patent Rights be included within the scope of the license granted in Section 5.1 and added to Appendix 1.112(b1.114 (b). BI shall have nine (9) months from the receipt of such notice to elect, in its sole discretion, whether or not such Patent Rights shall be added to Appendix 1.112(b1.114 (b). [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. Similarly, if at any time after the Effective Date, BI identifies a Patent Right Controlled by Zealand Pharma which would be infringed by manufacture, use or sale of Collaboration Compounds or Products by BI, its Affiliates, Sublicensees, Recognized Agents or customersAgents, BI may require by notice to Zealand Pharma that such Patent Rights be included within the scope of the license granted in Section 5.1 and added to Appendix 1.112(b1.114 (b). Any Patent Rights Controlled by Zealand Pharma so added to Appendix 1.112(b1.114 (b) shall bear royalties as provided in Section 12.8(1)(x)12.8, an and any Patent Rights controlled by Zealand Pharma that are not added to Appendix 1.112(b1.114 (b) as provided in this section may not be used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI81, its Affiliates, SublicenseesSublicensees and Recognized Agents, Recognized Agents and customersprovided, however, that the non-assertion undertaking in Section 5.1 shall continue to apply with respect to Patent Rights Controlled by Zealand Pharma that claim Zealand Pharma Platform Technology (to the extent of such claims), even if BI elects not to include such Patent Rights of Zealand Pharma in Appendix 1.114 (b). During the Term of this AgreementTerm, the Parties shall reasonably cooperate in the filing, prosecution and maintaining maintenance of the Zealand Pharma Patents, and Zealand Pharma shall keep BI regularly and currently informed of all steps to be taken in the preparation, filing, prosecution and maintenance of the Zealand Pharma Patents, and agree upon a common patent strategy and shall furnish BI with copies of such applications and amendments thereto, and any other related correspondence to and from patent offices and external patent attorneys and agents. BI shall have the right to comment thereon within thirty (30) days after receipt from Zealand Pharma before Zealand Pharma makes the submission to a patent office which could materially affect the scope or validity of the patent coverage and Zealand Pharma shall reasonably take into account all comments made by or on behalf of BI (BI shall provide its [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. comments within fifteen (15) days, if possible). In case of a dispute, BI shall always have the final decision-making authority with respect to any action relating to the preparation, filing, prosecution and maintenance of any Zealand Pharma Patents solely to the extent relating to that claims cover Collaboration Compounds or ProductsProducts or their use, acting or are directly related thereto, for so long as BI acts reasonably and in good faith to secure the most valuable protection available under applicable patent laws. In all other cases Zealand Pharma shall have the final decision-making authority with respect to any action relating to the preparation, filing, prosecution and maintenance of any Zealand Pharma Patents, including (notwithstanding any other provision hereof) the Zealand Pharma Platform Technology, acting reasonably and in good faith to secure the most valuable protection available under applicable patent laws. BI shall bear all fees and external expenses necessary for the prosecution and maintenance of the Zealand Pharma Patents listed in Appendix 1.112(a1.114 (a) and Appendix 1.114 (b) and any continuation, continuation-in-part (to the extent claiming priority to at least one of the Patent Rights listed in Appendix 1.112(a1.114 (a) or Appendix 1.114 (b)), divisiondivisional, reissue, renewal, re-examination, extension or supplementary protection certificate granted in relation thereto, or any foreign counterpart thereof. Except as may otherwise be agreed, Zealand Pharma shall bear all fees [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. and external expenses necessary for the prosecution and maintenance of the Zealand Pharma Patents listed in Appendix 1.112(b). If BI determines that it no longer wishes to have a license for a Zealand Pharma Patent listed in Appendix 1.112(a) or Appendix 1.112(b), or to any continuation, continuation-in-part (to the extent claiming priority to at least one of the Patent Rights listed in Appendix 1.112(a) or Appendix 1.112(b)), division. reissue, renewal, re-examinationreexamination, extension or supplementary protection certificate granted in relation thereto, or any foreign counterpart thereof, except for those Patent Rights claiming the Zealand Pharma Platform Technology (to the extent of such claims). If BI determines that it no longer wishes to have a license for any Zealand Pharma Patent, BI shall so notify Zealand Pharma. The Such Zealand Pharma Patent BI wishes to remove shall be removed from (if there listed), or noted as not included in, Appendix 1.112(a1.114 (a) or Appendix 1.112(b) shall be removed therefrom1.114 (b), as applicable, effective on the last day of the Calendar Quarter first commencing after the date of receipt by Zealand Pharma of such notice. From and after the removal or annotation of such Zealand Pharma Patent from Appendix 1.112(a1.114 (a) or Appendix 1.112(b1.114 (b), (i) such Zealand Pharma Patent shall not be within the scope of any licenses granted by Zealand Pharma hereunder and may not be further used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI, its Affiliates, Sublicensees, Sublicensees or Recognized Agents and customersAgents, (ii) BI shall not be obliged to bear fees or external expenses for such a Zealand Pharma Patent accruing after the effective date of such removal, and (iii) Zealand Pharma shall be solely responsible for all further matters with respect to the prosecution, assertion, defense or maintenance of such Zealand Pharma Patent, which shall no longer we subject to the prosecution, assertion, defense or maintenance provisions set forth in this Section 14.