Common use of By Third Parties Clause in Contracts

By Third Parties. McGill and Licensee agree to inform the other Party promptly in writing of any actual or suspected infringement of the LICENSED PATENT or LICENSED INTELLECTUAL PROPERTY by a third party. Licensee shall have, for a period of 120 days from the date of any notice of infringement of the Licensed Patent or LICENSED INTELLECTUAL PROPERTY, the first right to institute suit against such third party. Thereafter, McGill and Licensee shall each have the right to institute an action for infringement of the Licensed Patent against such third party in accordance with the following: a. If both McGill and Licensee agree to institute suit jointly, the suit shall be brought in both their names, the out-of-pocket costs thereof shall be borne equally, and any recovery or settlement shall be shared equally. McGill and Licensee shall agree to the manner in which they shall exercise control over such suit. Each Party, at its option, may be represented by separate counsel of its own selection, the fees for which shall be paid by that Party. b. In the absence of an agreement to institute a suit jointly, McGill may, but is not obligated to, institute suit, and at its option, join Licensee as a plaintiff. If McGill decides to institute suit, it shall notify Licensee in writing. Licensee’s failure to notify McGill in writing within fifteen (15) days after the date of ▇▇▇▇▇▇’▇ notice, that it will join in enforcing the LICENSED PATENT(S) pursuant to the terms hereof, shall be deemed conclusively to be Licensee’s assignment to McGill of all rights, causes of action, and damages resulting from any such alleged infringement. McGill shall bear the entire cost of such litigation and shall be entitled to retain the entire amount of any recovery or settlement; and c. In the absence of an agreement to institute a suit jointly, and if McGill does not notify Licensee of its intent to pursue legal action within ninety (90) days, as provided in (a) or (b) above, Licensee may institute suit. Licensee shall bear the entire cost of such litigation. Any recovery in excess of litigation costs and reasonable attorney fees shall be shared equally between Licensee and McGill. d. If Licensee undertakes to defend the LICENSED PATENT(S) by litigation, Licensee may deduct from its royalty payments to McGill with respect to the LICENSED PATENT(S) subject to suit an amount not exceeding fifty percent (50%) of Licensee’s expenses and costs of such action, including reasonable attorney’s fees, provided however, that such reduction shall not exceed fifty percent (50%) of the total royalty due to McGill for each calendar year.

By Third Parties. McGill and Licensee agree to inform the other Party promptly in writing of any actual or suspected infringement of the LICENSED PATENT or LICENSED INTELLECTUAL PROPERTY by a third party. Licensee shall have, for a period of 120 days from the date of any notice of infringement of the Licensed Patent or LICENSED INTELLECTUAL PROPERTY, the first right to institute suit against such third party. Thereafter, McGill and Licensee shall each have the right to institute an action for infringement of the Licensed Patent against such third party in accordance with the following: a. If both McGill and Licensee agree to institute suit jointly, the suit shall be brought in both their names, the out-of-pocket costs thereof shall be borne bome equally, and any recovery or settlement shall be shared equally. McGill and Licensee shall agree to the manner in which they shall exercise control over such suit. Each Party, at its option, may be represented by separate counsel of its own selection, the fees for which shall be paid by that Party. b. In the absence of an agreement to institute a suit jointly, McGill may, but is not obligated to, institute suit, and at its option, join Licensee as a plaintiff. If McGill decides to institute suit, it shall notify Licensee in writing. Licensee’s failure to notify McGill in writing within fifteen (15) days after the date of ▇▇▇▇▇▇’▇ notice, that it will join in enforcing the LICENSED PATENT(S) pursuant to the terms hereof, shall be deemed conclusively to be Licensee’s assignment to McGill of all rights, causes of action, and damages resulting from any such alleged infringement. McGill shall bear the entire cost of such litigation and shall be entitled to retain the entire amount of any recovery or settlement; and c. In the absence of an agreement to institute a suit jointly, and if McGill does not notify Licensee of its intent to pursue legal action within ninety (90) days, as provided in (a) or (b) above, Licensee may institute suit. Licensee shall bear the entire cost of such litigation. Any recovery in excess of litigation costs and reasonable attorney fees shall be shared equally between Licensee and McGill. d. If Licensee undertakes to defend the LICENSED PATENT(S) by litigation, Licensee may deduct from its royalty payments to McGill with respect to the LICENSED PATENT(S) subject to suit an amount not exceeding fifty percent (50%) of Licensee’s expenses and costs of such action, including reasonable attorney’s fees, provided however, that such reduction shall not exceed fifty percent (50%) of the total royalty due to McGill for each calendar year.