Common use of IP Enforcement Clause in Contracts

IP Enforcement. With respect to any actual or potential infringements of any Licensed RNAi IP in the RNAi Field by a Third Party, Arrowhead shall have the exclusive right, but not the obligation, to prosecute at its own expense any action or proceeding with respect to such infringements and, with respect to any actual or potential infringements of Licensed RNAi IP outside of the RNAi Field by a Third Party, Novartis shall have the exclusive right, but not the obligation, to prosecute at its own expense any action or proceeding with respect to such infringements (Arrowhead or Novartis, in prosecuting any such action or proceeding in accordance with the foregoing, is referred to as the “Enforcing Party”). Any recoveries resulting from enforcement actions under this Section 2.08 shall first be applied against payment of each Party’s costs and expenses in connection therewith. Any such recoveries in excess of such costs and expenses (the “Remainder”) shall be shared by the Parties as follows: (a) if Arrowhead initiates such action or proceeding, then such Remainder shall be treated as Net Sales and will be subject to the payment obligations to Novartis under Article 6 (and for purposes of calculating the applicable royalty rate and commercial milestones, such Remainder will be combined with any Net Sales for such calendar year), with Arrowhead retaining the balance after such payment; or (b) if Novartis initiates such action or proceeding, the Remainder shall be divided equally between the Parties. In furtherance of Enforcing Party’s enforcement rights, the other Party (the “Joined Party”) hereby agrees that the Enforcing Party may include the Joined Party as a party plaintiff in any such action or proceeding if such joinder is deemed by the Enforcing Party to be necessary to commence or maintain any action or proceeding with respect to infringement of Licensed RNAi IP. Each Enforcing Party agrees to reasonably consult with the other Party on positions taken or statements made in any such action or proceeding relating to the scope, validity and/or infringement of claims within the Licensed RNAi IP. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into in any such action or proceeding without the consent of the Joined Party, which consent shall not unreasonably be withheld.

IP Enforcement. With respect to If, during the term of this Agreement, either Party becomes aware of any actual or potential infringements threatened infringement or misappropriation of any Hydroponic IP or Developed IP by any third party that impacts the Licensed RNAi Products or their use, the following provisions shall apply: (a) The Party having such knowledge shall promptly give notice to the other Party, with all available details. (b) To the extent that the infringement concerns the Hydroponic IP, OMS, as the owner of the Hydroponic IP, shall have the right to enforce the Hydroponic IP, and AeroGrow, as the exclusive licensee, shall join any such enforcement action if requested by OMS. AeroGrow agrees to cooperate with OMS by taking such actions as may be reasonably necessary, including but not limited to, producing relevant documents and signing all necessary papers and ensuring that its employees and agents also take such action. In the event any monetary recovery in connection with such infringement action is obtained, such recovery shall be applied in the following priority: (i) to reimburse OMS to the extent of its out-of-pocket expenses (including reasonable attorneys’ fees) in prosecuting such infringement or misappropriation, (ii) ninety percent (90%) of the balance shall be paid to the OMS; and (iii) ten percent (10%) of the balance shall be paid to AeroGrow as exclusive licensee. (c) If OMS determines, in its discretion, not to enforce the Hydroponic IP against any such infringement in the Territory, AeroGrow, as the exclusive licensee of the Hydroponic IP in the RNAi Field by a Third PartyTerritory, Arrowhead shall have the exclusive rightright to enforce such Hydroponic IP that OMS has determined not to enforce in the Territory. OMS shall make such determination within six (6) months of written notice from AeroGrow describing such infringement and the relevant Hydroponic IP. If OMS declines, then OMS, as the owner, shall join any such enforcement action by AeroGrow (at the expense of AeroGrow) if requested by AeroGrow. OMS agrees to cooperate with AeroGrow (at the expense of AeroGrow) by taking such actions as may be reasonably necessary, including but not limited to, producing relevant documents and signing all necessary papers and ensuring that its employees and agents also take such action. In the obligationevent any monetary recovery in connection with such infringement action is obtained, such recovery shall be applied in the following priority: (i) to prosecute at reimburse AeroGrow to the extent of its own expense any action out-of-pocket expenses (including reasonable attorney’s fees) in prosecuting such infringement or proceeding misappropriation, (ii) fifty percent (50%) of the balance shall be paid to the AeroGrow; and (iii) fifty percent (50%) of the balance shall be paid to OMS. If AeroGrow has not filed suit to enforce the Hydroponic IP within six (6) months after OMS has declined, then the right to enforce the Hydroponic IP in the Territory shall revert to OMS. (d) To the extent that the infringement concerns the Developed IP, the Parties shall meet to discuss and agree upon an appropriate course of action, and each Party shall provide reasonable assistance to the other Party with respect to such infringements and, with respect to any actual or potential infringements of Licensed RNAi IP outside enforcement of the RNAi Field by a Third PartyDeveloped IP. (e) The Parties shall keep one another informed of the status of their respective activities regarding any litigation or settlement thereof concerning enforcement of the Hydroponic IP and the Developed IP; provided, Novartis shall have the exclusive right, but not the obligation, to prosecute at its own expense any action that no settlement or proceeding with respect to such infringements (Arrowhead or Novartis, in prosecuting any such action or proceeding in accordance with the foregoing, is referred to as the “Enforcing Party”). Any recoveries resulting from enforcement actions under this Section 2.08 shall first be applied against payment of each Party’s costs and expenses in connection therewith. Any such recoveries in excess of such costs and expenses (the “Remainder”) shall be shared by the Parties as follows: (a) if Arrowhead initiates such action or proceeding, then such Remainder shall be treated as Net Sales and will be subject to the payment obligations to Novartis under Article 6 (and for purposes of calculating the applicable royalty rate and commercial milestones, such Remainder will be combined with any Net Sales for such calendar year), with Arrowhead retaining the balance after such payment; or (b) if Novartis initiates such action or proceeding, the Remainder shall be divided equally between the Parties. In furtherance of Enforcing Party’s enforcement rights, the other Party (the “Joined Party”) hereby agrees that the Enforcing Party may include the Joined Party as a party plaintiff in any such action or proceeding if such joinder is deemed by the Enforcing Party to be necessary to commence or maintain any action or proceeding with respect to infringement of Licensed RNAi IP. Each Enforcing Party agrees to reasonably consult with the other Party on positions taken or statements made in any such action or proceeding relating to the scope, validity and/or infringement of claims within the Licensed RNAi IP. No settlement, consent judgment or other voluntary final disposition of the any suit defended or action brought by a Party pursuant to this Article 5 may be entered into in any such action or proceeding without the consent of the Joined other Party if such settlement would require the other Party to be subject to an injunction or to make a monetary payment or an admission of wrongdoing or would otherwise adversely affect the other Party, which consent shall not unreasonably be withheld’s rights under this Agreement.