Common use of IP Rights Clause in Contracts

IP Rights. SurModics shall have the sole right, at its discretion and expense, to enforce the SurModics IP Rights and any SurModics Research IP Rights against an Infringing Product to the extent such enforcement relates to the SurModics Technology. Upon receipt of a written notice from Edge requesting that SurModics initiate legal proceedings against an Infringing Product, SurModics agrees that it shall use its Commercially Reasonable Efforts to evaluate (a) whether it believes that such Infringing Product infringes the SurModics IP Rights or the SurModics Research IP Rights, and (b) the merits of any and all appropriate legal actions that may be brought against such third party to enforce the SurModics IP Rights or the SurModics Research IP Rights, taking into consideration such factors as the likelihood of success on the merits of any such action, the likelihood that any such action might impair or otherwise affect the scope of such rights, the likelihood that failure to initiate legal proceedings might impair or otherwise negatively affect Edge’s ability to commercialize Product and other similar factors. In the event that SurModics initiates an enforcement action, Edge shall assist SurModics in connection with any such action, upon request and at SurModics’ sole expense, and to the extent commercially reasonable; and in any event, SurModics shall keep Edge reasonably informed of the progress of any such enforcement action. Any settlement or recovery shall be distributed in the following order: (i) to SurModics for reimbursement of expenses related to such claim, including but not limited to attorneys’ fees and expenses associated with the legal proceedings; and (ii) ** to Edge and ** to SurModics for damages related to the infringement, including lost profits. SurModics shall not make any settlement or compromise that adversely affects the interests of Edge with respect to the Product without the prior consent of Edge. Notwithstanding the foregoing, in the event SurModics chooses not to initiate an enforcement action, Edge shall have the right but not the obligation to initiate and prosecute such an action at its cost and expense provided, however that SurModics shall use its Commercially Reasonable Efforts to cooperate with Edge, at Edge’s sole expense. The amount of any settlement or recovery obtained in such enforcement action shall be retained by Edge, except that SurModics shall receive a portion equivalent to the royalties it would have received in accordance with the terms of this Agreement as if such amount were Net Sales of Edge. Edge shall not make any settlement or compromise that adversely affects the interests of SurModics without the prior consent of SurModics.

IP Rights. SurModics (a) The Company Parties shall have the sole right, at its discretion and expense, to enforce the SurModics IP Rights and any SurModics Research IP Rights against an Infringing Product provide to the extent Purchaser Representative a copy of any written notice received by any Company Party or BBCH from a Third Party alleging or claiming that the Exploitation of the Licensed Product in the Territory infringes or misappropriates any Patents or other Intellectual Property of a Third Party, together with copies of material correspondence sent or received by any Company Party or BBCH related thereto, as soon as practicable and in any event not more than [***] following such enforcement relates delivery or receipt (or such later date as the Purchaser Representative may agree to in its sole discretion). (b) The Company Parties shall promptly inform the SurModics Technology. Upon receipt Purchasers (i) (A) upon becoming aware of any actual or suspected infringement or misappropriation by a Third Party of any Patent or other Intellectual Property included in the IP Rights, and/or (B) upon filing or otherwise submitting a written claim to such Third Party of such actual or suspected infringement or misappropriation, or (ii) if a Company Party receives a written notice from Edge requesting a Third Party alleging that SurModics initiate any Patent or other Intellectual Property included in the IP Rights is invalid or unenforceable; provided, that, reasonably prior to the Company Parties’ initiating an enforcement action regarding any suspected infringement or misappropriation by a Third Party of any such Patent or other Intellectual Property included in the IP Rights, Company Parties shall provide the Purchaser Representative with written notice of such enforcement action and thereafter shall provide the Purchaser Representative with additional information regarding such enforcement action on a regular basis, including as reasonably requested by the Purchaser Representative in writing. In the event the Purchaser Representative provides any written comments with respect to such enforcement action or proceeding, or any allegations of invalidity or unenforceability in writing, Company Parties shall consider such comments in good faith. (c) To the extent required or permitted by the applicable Covered License Agreement, the Company Parties shall (and shall cause the Parent’s other Subsidiaries to), at the Company Parties’ expense, (A) use Commercially Reasonable and Diligent Efforts to enforce and defend, or, to the extent the Company Parties do not have the right to do so under any applicable Covered License Agreement, exercise their respective rights to cause the applicable party to enforce and defend, such IP Rights, which may include bringing any legal proceedings against an Infringing Product, SurModics agrees that it action for infringement or defending any counterclaim of invalidity or unenforceability or action of such Third Party for declaratory judgment of non-infringement or non-interference. The Company Parties shall use its Commercially Reasonable and Diligent Efforts to, and if requested in writing by the Purchaser Representative, use good faith efforts to consult with the Purchaser Representative, to institute and enforce an enforcement against any infringement by a Third Party with respect to the Patents included within the IP Rights and shall otherwise use Commercially Reasonable and Diligent Efforts to evaluate enforce or defend such Patents, as applicable. In connection with any such enforcement or defense of such Patents, the Company Parties shall retain and employ a team of legal counsel from a law firm with an internationally recognized European patent litigation practice of reputable standing and relevant experience. (ad) whether it believes that such Infringing Product infringes To the SurModics extent required or permitted by the applicable Covered License Agreement, the Company Parties’ shall (and shall cause the Parent’s other Subsidiaries to), at the Company Parties’ expense, diligently file, prosecute, maintain and, subject to any applicable in-licenses, enforce all Company Patents and any Patents or other Intellectual Property included in the IP Rights or (including, in the SurModics Research case of such prosecution and maintenance, taking any and all reasonably necessary actions to prepare, execute, deliver and file any and all agreements, documents and instruments, which are reasonably necessary to diligently preserve and maintain the Patents included within the IP Rights, and (b) the merits of any and all appropriate legal actions that may be brought against such third party to enforce the SurModics IP Rights or the SurModics Research IP Rightsprosecuting applications for potential patent term extensions, taking into consideration such factors as the likelihood of success on the merits of any such actionpatent term adjustments, the likelihood that any such action might impair or otherwise affect the scope of such rights, the likelihood that failure to initiate legal proceedings might impair or otherwise negatively affect Edge’s ability to commercialize Product and other similar factors. In the event that SurModics initiates an enforcement action, Edge shall assist SurModics in connection with any such action, upon request and at SurModics’ sole expensesupplementary protection certificates, and the like, and allow to the extent commercially reasonable; and in any event, SurModics shall keep Edge reasonably informed of the progress of any such enforcement action. Any settlement lapse or recovery shall be distributed abandon certain immaterial Patent applications in the following order: (i) to SurModics for reimbursement of expenses related to such claim, including but not limited to attorneys’ fees and expenses associated ordinary course consistent with the legal proceedings; and (ii) ** to Edge and ** to SurModics for damages related to the infringement, including lost profits. SurModics shall not make any settlement or compromise that adversely affects the interests of Edge with respect to the Product without the prior consent of Edge. Notwithstanding the foregoing, in the event SurModics chooses not to initiate an enforcement action, Edge shall have the right but not the obligation to initiate and prosecute such an action at its cost and expense provided, however that SurModics shall use its Commercially Reasonable Efforts to cooperate with Edge, at Edge’s sole expense. The amount of any settlement or recovery obtained in such enforcement action shall be retained by Edge, except that SurModics shall receive a portion equivalent to the royalties it would have received in accordance with the terms of this Agreement as if such amount were Net Sales of Edge. Edge shall not make any settlement or compromise that adversely affects the interests of SurModics without the prior consent of SurModicspast practices).

IP Rights. SurModics shall have the sole right, at its discretion and expense, to enforce the SurModics IP Rights and any SurModics Research IP Rights against an Infringing Product (a) Other than to the extent such enforcement relates permitted herein or in the Collateral Documents or with respect to registrations and applications no longer used, and except to the SurModics Technologyextent failure to act would not, as deemed by the applicable Loan Party in its reasonable business judgment, be reasonably expected to have a Material Adverse Effect, each Loan Party will maintain, preserve, protect and enforce all of its material Intellectual Property. Upon receipt Except as would not, as deemed by the applicable Loan Party in its reasonable business judgment, be reasonably expected to have a Material Adverse Effect, without limitation of a written notice from Edge requesting that SurModics initiate legal the foregoing, each Loan Party: (i) shall take all actions necessary or reasonably required to (A) maintain and pursue each application, obtain the relevant registration or issuance, and maintain the registration or issuance of each of its Patents, Trademarks and Copyrights included in the Collateral, including by making timely filings of applications for renewal, affidavits of use, affidavits of incontestability and payment of maintenance fees, and initiating opposition, interference and cancellation proceedings against an Infringing Productthird parties, SurModics agrees that it shall use its Commercially Reasonable Efforts to evaluate (aB) whether it believes that such Infringing Product infringes enforce all Intellectual Property included in the SurModics IP Rights Collateral in the instance of any infringement, misappropriation, dilution or the SurModics Research IP Rightsother violation thereof, and (C) not abandon any application prior to exhaustion of all administrative and judicial remedies where reasonable to do so, in each case (A), (B) and (C), unless such Loan Party determines, in the exercise of its reasonable business judgment consistent with past practice, that the applicable Intellectual Property is not material to the conduct of its business; (ii) shall maintain the confidentiality of its trade secrets; (iii) shall, and shall use commercially reasonable efforts to cause its licensees and sublicensees to, maintain the quality of products and services offered under all material Trademarks and to otherwise comply with quality controls and standards to preserve the validity of, and goodwill associated with, such Trademarks; and (iv) shall renew those of its domain name registrations that are material to such Loan Party’s business. (b) Other than to the merits extent permitted herein or in the Collateral Documents, or with respect to registrations and applications no longer used or otherwise material to the business operations of the applicable Loan Party (as determined by such Loan Party in its reasonable business judgement), and except to the extent any act or omission to act would not, as deemed by the applicable Loan Party in its reasonable business judgment, be reasonably expected to have a Material Adverse Effect, no Loan Party shall do or permit any act or knowingly omit to do any act whereby any of its Collateral consisting of Intellectual Property may lapse, be terminated, or become invalid or unenforceable or placed in the public domain (or in the case of a trade secret, becomes publicly known). (c) Subject to the Agreed Guaranty and Security Principles, each Loan Party shall notify the Administrative Agent as soon as reasonably practicable under the circumstances if it knows that any issued or applied for Patent, registered or applied for Trademark or registered Copyright, in each case, material to the conduct of the Loan Parties’ business, taken as a whole, may or has become abandoned, lapsed or dedicated to the public, or of any adverse determination or development (including the institution of, or any such determination or development in, any adversarial proceeding in the USPTO (or its foreign equivalents), the USCO (or its foreign equivalents) or any court), regarding such Loan Party’s ownership of any such material Patent, Trademark or Copyright, its right to keep, register or to maintain the same or the validity or enforceability thereof. (d) Each Loan Party shall, on an annual basis concurrent with the delivery of the Perfection Certificate (as defined in the U.S. Security Agreement), notify the Administrative Agent of each application for, or each issued registration for, any material Intellectual Property (other than Intellectual Property constituting an Excluded Asset) before the USPTO (or its foreign equivalents) or the USCO (or its foreign equivalents) filed by or on behalf of, or acquired by, such Loan Party. The provisions hereof shall automatically apply to any such Patent, Trademark or Copyright and any such Patent, Trademark or Copyright shall automatically constitute Collateral as if such would have constituted Collateral at the time of execution hereof and be subject to the security interests created by this Agreement without further action by any party. No later than sixty (60) days following the date of such notification, each Loan Party shall execute and deliver any and all appropriate legal actions that may be brought against security agreements or other instruments reasonably requested by Administrative Agent (acting at the direction of the Required Lenders) to evidence and document such third party security interest therein, subject to enforce the SurModics IP Rights or the SurModics Research IP Rights, taking into consideration such factors as the likelihood of success on the merits of any such actionCollateral Documents, the likelihood that any such action might impair or otherwise affect Collateral and Guarantee Requirement and the scope of such rights, the likelihood that failure to initiate legal proceedings might impair or otherwise negatively affect Edge’s ability to commercialize Product Agreed Guaranty and other similar factors. In the event that SurModics initiates an enforcement action, Edge shall assist SurModics in connection with any such action, upon request and at SurModics’ sole expense, and to the extent commercially reasonable; and in any event, SurModics shall keep Edge reasonably informed of the progress of any such enforcement action. Any settlement or recovery shall be distributed in the following order: (i) to SurModics for reimbursement of expenses related to such claim, including but not limited to attorneys’ fees and expenses associated with the legal proceedings; and (ii) ** to Edge and ** to SurModics for damages related to the infringement, including lost profits. SurModics shall not make any settlement or compromise that adversely affects the interests of Edge with respect to the Product without the prior consent of Edge. Notwithstanding the foregoing, in the event SurModics chooses not to initiate an enforcement action, Edge shall have the right but not the obligation to initiate and prosecute such an action at its cost and expense provided, however that SurModics shall use its Commercially Reasonable Efforts to cooperate with Edge, at Edge’s sole expense. The amount of any settlement or recovery obtained in such enforcement action shall be retained by Edge, except that SurModics shall receive a portion equivalent to the royalties it would have received in accordance with the terms of this Agreement as if such amount were Net Sales of Edge. Edge shall not make any settlement or compromise that adversely affects the interests of SurModics without the prior consent of SurModicsSecurity Principles.