Common use of Patent Enforcement Clause in Contracts

Patent Enforcement. In the event either Party becomes aware of any interference, opposition, or request for reexamination, or similar proceedings, involving a ***CONFIDENTIAL TREATMENT REQUESTED patent application or patent filed in accordance with Section 5.2(a) or 5.2(b), it shall promptly notify the other Party hereto, and the Parties shall agree on the steps which shall be taken to protect the pertinent patent. In the event either Party becomes aware of any possible infringement of a patent filed in accordance with Section 5.2(a) or 5.2(b) or misappropriation of an invention within the Collaboration, it shall promptly notify the other Party hereto, providing a written description of the potentially infringing or misappropriation activities. SGX shall have the right, but not the obligation to institute, prosecute and control any action or proceeding with respect to infringement of patents within SGX Background Technology. Roche shall have the right, but not the obligation, to institute, prosecute and control any action or proceeding with respect to infringement of patents within Roche Background Technology or compounds within Early Lead Series'. If a Party given the right to enforce a patent pursuant to this Section fails to bring an action or proceeding, or take other actions (e.g., commence settlement discussions) against a suspected infringer within a period of ninety (90) days after having notice of such infringement, the other Party shall have the right to bring and control an action against such infringer by counsel of its own choice, and the non-enforcing Party shall have the right to be represented in any such action by counsel of its own choice at its own expense. The Party controlling an action involving any infringement of a patent under this Section shall consider in good faith the interests of the other Party in so doing, and shall not settle or consent to an adverse judgment in any such action which would have a material adverse effect on the rights or interests of the other Party without the prior express written consent of such other Party. If one Party brings any such action or proceeding, the other Party agrees to be joined as a Party plaintiff if necessary to prosecute the action and to give the first Party reasonable assistance and authority to file and prosecute the suit. In each case relating to infringement of a patent under this Section, each Party shall bear the costs of its enforcement of such rights discussed in this section and retain for its own account any amounts received from Third Parties.

Patent Enforcement. In the event either Party becomes aware of any interference, opposition, or request for reexamination, or similar proceedings, involving a ***CONFIDENTIAL TREATMENT REQUESTED patent application or patent filed in accordance with Section 5.2(a7.2(b) or 5.2(bwithin Collaboration Technology (a "Collaboration Patent"), it shall promptly notify the other Party hereto, and the Parties shall agree on the steps which shall be taken to protect the pertinent patentCollaboration Patent. In the event either Party becomes aware of any possible infringement of a patent filed in accordance with Section 5.2(a) or 5.2(b) Collaboration Patent or misappropriation of an invention within the CollaborationCollaboration Technology, it shall promptly notify the other Party hereto, providing a written description of the potentially infringing or misappropriation activities. SGX shall have the right, but not the obligation to institute, prosecute and control any action or proceeding with respect to infringement of patents within Collaboration Patents in the SGX Background TechnologyTerritory. Roche UG shall have the right, but not the obligation, to institute, prosecute and control any action or proceeding with respect to infringement of patents within Roche Background Technology or compounds within Early Lead Series'Collaboration Patents in the UG Territory. If a Party given the right to enforce a patent Collaboration Patent pursuant to this Section fails to bring an action or proceeding, or take other actions (e.g., commence settlement discussions) proceeding against a suspected infringer within a period of ninety (90) days after having notice of such infringementinfringement in the Party's Territory, the other Party shall have the right to bring and control an action against such infringer by counsel of its own choice, and the non-enforcing Party shall have the right to be represented in any such action by counsel of its own choice at its own expense. The Party controlling an action involving any infringement of a patent under this Section Collaboration Patent shall consider in good faith the interests of the other Party in so doing, and shall not settle or consent to an adverse judgment in any such action which would have a material adverse effect on the rights or interests of the other Party without the prior express written consent of such other Party. If one Party brings any such action or proceeding, the other Party agrees to be joined as a Party plaintiff if necessary to prosecute the action and to give the first Party reasonable assistance and authority to file and prosecute the suit. In each case relating to infringement of a patent under this SectionCollaboration Patent, each Party shall bear the costs of its enforcement of such the Patent rights discussed in this section and retain for its own account any amounts received from Third Parties.; provided, however, that any such recovery over the costs of the enforcement of the Patent Rights shall be deemed Net Sales of the infringed Collaboration Product, subject to a royalty of [...***...]%. 22 ***CONFIDENTIAL TREATMENT REQUESTED

Patent Enforcement. In the event either Party If a party becomes aware of any interferenceThird Party’s manufacture, oppositionuse, sale, offer for sale or import of a product that is competitive with a Companion Diagnostic and such party believes or suspects that such Third Party’s activities infringe, or request for reexaminationmay infringe, or similar proceedingsany Group 2 Patent, involving a ***CONFIDENTIAL TREATMENT REQUESTED patent application or patent including the filing by any Third Party of any certification filed in accordance with Section 5.2(a) or 5.2(bunder the United States Drug Price Competition and Patent Term Restoration Act of 1984 (collectively, “Competitive Infringement”), it such party shall promptly notify the other Party heretoparty in writing thereof, and including the Parties shall agree on the steps which shall be taken to protect the pertinent patent. In the event either Party becomes aware of any possible infringement of a patent filed in accordance with Section 5.2(a) or 5.2(b) or misappropriation of an invention within the Collaboration, it shall promptly notify the other Party hereto, providing a written description of the potentially infringing or misappropriation activities. SGX shall have the right, but not the obligation to institute, prosecute and control any action or proceeding with respect to infringement of patents within SGX Background Technology. Roche shall have the right, but not the obligation, to institute, prosecute and control any action or proceeding with respect to infringement of patents within Roche Background Technology or compounds within Early Lead Series'. If a Party given the right to enforce a patent pursuant to this Section fails to bring an action or proceeding, or take other actions (e.g., commence settlement discussions) against a suspected infringer within a period of ninety (90) days after having notice identity of such infringementThird Party (the “Infringer”), which notice shall set forth in reasonable detail the other Party facts and circumstances of such activities that are known to such party. To the maximum extent permitted by the Penn Agreement, Celladon, at its sole expense, shall have the right to bring determine the appropriate course of action to enforce Group 2 Patents against the Infringer or otherwise xxxxx the Competitive Infringement, to take (or refrain from taking) appropriate action to enforce Group 2 Patents against the Infringer, to defend any declaratory judgments by an Infringer seeking to invalidate or hold the Group 2 Patents unenforceable, to control any litigation or other enforcement action and control an to enter into, or permit, the settlement of any such litigation, declaratory judgments or other enforcement action with respect to Group 2 Patents, in each case in Celladon’s own name and, if necessary for standing purposes, in the name of AmpliPhi and shall consider, in good faith, the interests of AmpliPhi in so doing. If Celladon does not, within one hundred twenty (120) days of receipt of notice from AmpliPhi, xxxxx the Competitive Infringement or file suit to enforce the Group 2 Patents against such infringer by counsel of its own choicethe Infringer, and the non-enforcing Party AmpliPhi shall have the right to be represented in take whatever action it deems appropriate to enforce the Group 2 Patents. The party controlling any such enforcement action by counsel of its own choice at its own expense. The Party controlling an action involving any infringement of a patent under this Section shall consider in good faith the interests of the other Party in so doing, and shall not settle the action or otherwise consent to an adverse judgment in any such action which would have a material adverse effect on that diminishes the rights or interests of the other Party non-controlling party without the prior express written consent of such the other Partyparty. If one Party brings All monies recovered upon the final judgment or settlement of any such action or proceedingsuit to enforce the Group 2 Patents shall first be applied to reimburse each party, and, if applicable, Penn, for their respective litigation expenditures, with remaining recoveries being subject to Celladon’s payment obligations under Section 3.2 to the other Party agrees extent required by the Penn Agreement, after which any remaining recovery shall be shared by the parties in relation to be joined as a Party plaintiff if necessary to prosecute the action and to give the first Party reasonable assistance and authority to file and prosecute the suit. In damages suffered by each case relating to infringement of a patent under this Section, each Party shall bear the costs of its enforcement of such rights discussed in this section and retain for its own account any amounts received from Third Partiesparty.

Patent Enforcement. In (a) Calgene and Monsanto shall each give prompt notice to the event either Party becomes aware other of any interference, opposition, or request for reexamination, or similar proceedings, involving a ***CONFIDENTIAL TREATMENT REQUESTED patent application or patent filed in accordance with Section 5.2(a) or 5.2(b), it shall promptly notify the other Party hereto, and the Parties shall agree on the steps which shall be taken to protect the pertinent patent. In the event either Party becomes aware of any possible infringement of a patent filed in accordance with Section 5.2(athe Patent Rights which may come to its attention; b) or 5.2(b) or misappropriation of an invention within the Collaboration, it shall promptly notify the other The Party hereto, providing a written description of the potentially infringing or misappropriation activities. SGX holding such Patent Rights shall have the right, but not the obligation to institute, prosecute and control any action or proceeding with respect to infringement of patents within SGX Background Technology. Roche shall have the right, exclusive right (but not the obligation) to institute and conduct legal action against Third Party infringers of a Patent Right, and to institute, prosecute and control enter into such settlement agreements as it may deem appropriate. The Party holding such Patent Rights shall receive the full benefits of any action or proceeding with respect to infringement of patents within Roche Background Technology or compounds within Early Lead Series'. If a Party given the right to enforce a patent it takes pursuant to this Section fails to bring an action or proceeding, or take other actions Paragraph 7.02; (e.g., commence settlement discussionsc) against a suspected infringer within a period of ninety (90) days after having notice of such infringement, If the other Party shall have the right to bring and control an action against such infringer by counsel of its own choice, and the non-enforcing Party shall have the right to be represented in any such action by counsel of its own choice at its own expense. The Party controlling an action involving any infringement of a patent under this Section shall consider in good faith the interests infringing activities of the other Third Party result in so doing, and shall not settle or consent to an adverse judgment in any such action which would have a material adverse effect on the rights or interests business of a Party relating to Licensed Products and at the end of 180 days from the receipt of notice by such Party of such infringement, the Third Party is both unlicensed under the Patent Rights and is engaging in activities which are an infringement of the Patent Rights, and the Party which owns and/or controls the involved Patent Rights has not brought a suit, action or other proceeding for infringement against such Third Party, then: (i) when such affected Party without is Monsanto, it shall be excused from paying the prior express written consent earned royalty otherwise due hereunder with respect to revenues derived from sales of Licensed Products in the geographic area where the competitive infringing activity occurs; and (ii) when such affected Party is Calgene, Calgene shall be entitled to make a reduction (which is reasonable under the circumstances) in the earned royalty otherwise due on the Net Profits of the Oils Division to reflect the impact on sales of its products in the geographic area where the competitive infringing activity occurs. Such excuse or reduction, as the case may be, from payment shall arise only as to sales of the affected Licensed Products in the geographic area in which the infringing products are sold and shall continue only for so long as the infringing products continue to be infringing and to so compete with the Licensed Products; (d) Neither Party shall have the right (by operation of law or otherwise) to enforce any Patent Right (owned and/or controlled by the other Party. If one Party brings ) licensed hereunder against any such action or proceeding, the other Party agrees to be joined as a Party plaintiff if necessary to prosecute the action and to give the first Party reasonable assistance and authority to file and prosecute the suit. In each case relating to infringement of a patent under this Section, each Party shall bear the costs of its enforcement of such rights discussed in this section and retain for its own account any amounts received from Third Partiesalleged infringer.

Patent Enforcement. In Upon learning of the event either Party becomes aware infringement of any interferencethe Sole Patent Rights to the extent exclusively licensed hereunder or the Joint Patent Rights by a third party, oppositiona party shall promptly provide notice to the other party in writing of the fact and shall supply the other party with all evidence possessed by it pertaining to and establishing such infringement. The party whose exclusive license rights hereunder to the Sole Patent [ * ] designates portions of this document that have been omitted pursuant to a request for confidential treatment filed separately with the Commission. Rights allegedly are being infringed shall have [ * ] from the date of learning of the infringement or receipt of notice of infringement, or request for reexaminationsuch lesser period of time if a further delay could result in material harm to, or similar proceedingsloss of a material right of, involving a ***CONFIDENTIAL TREATMENT REQUESTED patent application or patent filed in accordance with Section 5.2(a) or 5.2(b), it shall promptly notify the other Party heretoparty, and to xxxxx the Parties shall agree on infringement or to file suit against at least one of the steps which shall be taken to protect the pertinent patent. In the event either Party becomes aware of any possible infringement of a patent filed in accordance infringers, at its sole expense, following consultation with Section 5.2(a) or 5.2(b) or misappropriation of an invention within the Collaboration, it shall promptly notify the other Party hereto, providing party. The party who has a written description of the potentially infringing right to bring an infringement suit shall not be obligated to bring or misappropriation activities. SGX shall have the right, but not the obligation to institute, prosecute and control maintain more than one such suit at any action or proceeding time with respect to infringement claims directed to any one method of patents within SGX Background Technology. Roche shall have the rightmanufacture, but not the obligation, to institute, prosecute and control any action use or proceeding with respect to infringement composition of patents within Roche Background Technology or compounds within Early Lead Series'matter. If a Party given the party who has the right to enforce a patent pursuant to this Section fails to bring an action or proceeding, or take other actions (e.g., commence settlement discussions) against a suspected infringer the infringement suit does not bring the suit within a period of ninety (90) days after having notice of such infringementthe time set forth in the preceding paragraph, the other Party party shall have the right to bring and control an take whatever action against such infringer by counsel of it deems appropriate in its own choicename or, if required by law, in the name of the party whose exclusive license rights in the Sole Patent Rights or interest in the Joint Patent Rights are being infringed, to enforce such Sole Patent Rights or Joint Patent Rights. All monies recovered upon the final judgment or settlement of any infringement suit shall, after reimbursement of the expenses of the party bringing such suit, be shared by the parties [ * ]. The parties shall fully cooperate with each other in the planning and execution of any suit to enforce their Sole Patent Rights in the non-enforcing Party Extracellular Field, Intracellular Field or Excluded Field or Joint Patent Rights. The parties shall confer with respect to enforcement of the Joint Patent Rights. In the absence of any other agreement as to the enforcement of the Joint Patent Rights, each party shall have the right to be represented in any such action by counsel of its own choice enforce the Joint Patent Rights at its own expense. The Party controlling an action involving expense and retain any award of damages or expenses, except that the party whose exclusive license rights in the Joint Patent Rights are being infringed shall have [ * ] from the date of learning of the infringement or receipt of notice of infringement (or such lesser period of time if a further delay could result in material harm to, or loss of a patent under material right of, the other party) to xxxxx the infringement or to file suit against at least one of the infringers, at its sole expense following consultation with the other party and the provisions of the second paragraph of this Section 9 shall consider in good faith the interests apply (i.e., right of the other Party in so doingparty to subsequently bring an infringement suit, sharing of any final judgment or settlement and cooperation). The party bringing the infringement suit shall not settle the suit or otherwise consent to an adverse judgment in any such action which would have suit in a material adverse effect on manner that diminishes the rights or interests of the other Party party without the prior express written consent other party's consent. The other party shall have the right to participate, at its expense and with counsel of such other Partyits choosing, in an [ * ] designates portions of this document that have been omitted pursuant to a request for confidential treatment filed separately with the Commission. If one Party brings any such action or proceeding, infringement suit brought by the other Party agrees party to be joined as a Party plaintiff if necessary to prosecute the action and to give the first Party reasonable assistance and authority to file and prosecute the suit. In each case relating to infringement of a patent under this Sectionextent its Sole Patent Rights, each Party shall bear the costs of its enforcement of such Joint Patent Rights or other proprietary rights discussed in this section and retain for its own account any amounts received from Third Partiesare being challenged.

Patent Enforcement. In As between DURECT and PTI, DURECT shall have the event either first right, but not the duty, to institute infringement actions against Third Parties based on any DURECT Patent Rights or DURECT Technology in the Territory. If DURECT does not institute an infringement proceeding against an offending Third Party becomes aware based on DURECT’s Patent Rights or DURECT Technology relating to the manufacture, use or sale of any interferenceproducts incorporating any Opioid Drug intended for the oral route comprising a Controlled Release Carrier in the Field in the Territory within [* * *] months after receipt of written notice from PTI, opposition, or request for reexamination, or similar proceedings, involving a ***CONFIDENTIAL TREATMENT REQUESTED patent application or patent filed in accordance with Section 5.2(a) or 5.2(b), it shall promptly notify the other Party hereto, and the Parties shall agree on the steps which shall be taken to protect the pertinent patent. In the event either Party becomes aware of any possible infringement of a patent filed in accordance with Section 5.2(a) or 5.2(b) or misappropriation of an invention within the Collaboration, it shall promptly notify the other Party hereto, providing a written description of the potentially infringing or misappropriation activities. SGX PTI shall have the right, but not the obligation to institute, prosecute and control any action or proceeding with respect to infringement of patents within SGX Background Technology. Roche shall have the right, but not the obligationduty, to instituteinstitute such an action, prosecute and control provided, however, that notwithstanding the foregoing, if DURECT notifies PTI during such [* * *] month period that it disputes in good faith whether such Third Party is infringing DURECT Patent Rights or DURECT Technology by the manufacture, use, sale or importation of products incorporating any action Opioid Drug intended for the oral route comprising a Controlled Release Carrier in the Field in the Territory, then the Parties shall refer such matter to a mutually acceptable independent patent counsel. The patent counsel will be asked to render his or proceeding with respect to infringement of patents her opinion on the matter within Roche Background Technology or compounds within Early Lead Series'. If a Party given the right to enforce a patent pursuant to this Section fails to bring an action or proceeding, or take other actions (e.g., commence settlement discussions) against a suspected infringer within a period of ninety (90) [* * *]days after having notice of such infringementreferral. In the event the patent counsel renders an opinion, based on all facts available to him or her, that the other Third Party shall have is so infringing the right to bring DURECT Technology and control DURECT Patents in the Field in the Territory, then PTI may, at its election, initiate an action against such infringer Third Party. If the patent counsel renders an opinion, based on all facts available to him or her, that the Third Party is not so infringing the DURECT Technology and DURECT Patents in the Field in the Territory, then PTI may not initiate an action against such Third Party. The Party against whom the opinion is rendered shall bear all costs of the patent counsel in rendering such opinion. The costs and expenses of any infringement action (including fees of attorneys and other professionals) brought against a Third Party under this Section 12.3 shall be borne by counsel the Party instituting the action, or, if the Parties elect to cooperate in instituting and maintaining such action, such costs and expenses shall be borne by the Parties in such proportions as they may agree in writing. Each Party shall execute all necessary and proper documents and take such actions as shall be appropriate to allow the other Party to institute and prosecute such infringement actions. Any award paid by Third Parties as a result of its own choicesuch an infringement action (whether by way of settlement ***Material has been omitted pursuant to a request for confidential treatment and such material has been filed separately with the SEC. or otherwise), shall be used first to reimburse the Party(ies) initiating and maintaining such action for the costs and expenses (including attorneys’ and professional fees) incurred in connection with such action, and the non-enforcing Party remainder of the recovery shall have be (to the right extent the same represents damages from manufacture, use, sales or importation of products incorporating any Opioid Drug intended for the oral route comprising a Controlled Release Carrier within the Field) treated as Net Sales (i.e., paid to or retained by PTI, as applicable, less the applicable royalty as calculated in accordance with Section 9.5 to be represented in retained by or paid to DURECT, as applicable) and any such action by counsel remainder (i.e., that remaining portion, if any, that does not represent damages from manufacture, use, sales or importation of its own choice at its own expense. The Party controlling an action involving products incorporating any infringement of Opioid Drug within the Field intended for the oral route comprising a patent under this Section Controlled Release Carrier) shall consider in good faith the interests of the other Party in so doing, and shall not settle or consent be paid to an adverse judgment in any such action which would have a material adverse effect on the rights or interests of the other Party without the prior express written consent of such other Party. If one Party brings any such action or proceeding, the other Party agrees to be joined as a Party plaintiff if necessary to prosecute the action and to give the first Party reasonable assistance and authority to file and prosecute the suit. In each case relating to infringement of a patent under this Section, each Party shall bear the costs of its enforcement of such rights discussed in this section and retain for its own account any amounts received from Third PartiesDURECT.

Patent Enforcement. In As between DURECT and PTI, DURECT shall have the event either first right, but not the duty, to institute infringement actions against Third Parties based on any DURECT Patent Rights or DURECT Technology in the Territory. If DURECT does not institute an infringement proceeding against an offending Third Party becomes aware based on DURECT’s Patent Rights or DURECT Technology relating to the manufacture, use or sale of any interferenceproducts incorporating any Opioid Drug intended for the oral route comprising a Controlled Release Carrier in the Field in the Territory within [* * *] months after receipt of written notice from PTI, opposition, or request for reexamination, or similar proceedings, involving a ***CONFIDENTIAL TREATMENT REQUESTED patent application or patent filed in accordance with Section 5.2(a) or 5.2(b), it shall promptly notify the other Party hereto, and the Parties shall agree on the steps which shall be taken to protect the pertinent patent. In the event either Party becomes aware of any possible infringement of a patent filed in accordance with Section 5.2(a) or 5.2(b) or misappropriation of an invention within the Collaboration, it shall promptly notify the other Party hereto, providing a written description of the potentially infringing or misappropriation activities. SGX PTI shall have the right, but not the obligation to institute, prosecute and control any action or proceeding with respect to infringement of patents within SGX Background Technology. Roche shall have the right, but not the obligationduty, to instituteinstitute such an action, prosecute and control provided, however, that notwithstanding the foregoing, if DURECT notifies PTI during such [* * *] month period that it disputes in good faith whether such Third Party is infringing DURECT Patent Rights or DURECT Technology by the manufacture, use, sale or importation of products incorporating any action Opioid Drug intended for the oral route comprising a Controlled Release Carrier in the Field in the Territory, then the Parties shall refer such matter to a mutually acceptable independent patent counsel. The patent counsel will be asked to render his or proceeding with respect to infringement of patents her opinion on the matter within Roche Background Technology or compounds within Early Lead Series'. If a Party given the right to enforce a patent pursuant to this Section fails to bring an action or proceeding, or take other actions (e.g., commence settlement discussions) against a suspected infringer within a period of ninety (90) [* * *] days after having notice of such infringementreferral. In the event the patent counsel renders an opinion, based on all facts available to him or her, that the other Third Party shall have is so infringing the right to bring DURECT Technology and control DURECT Patents in the Field in the Territory, then PTI may, at its election, initiate an action against such infringer Third Party. If the patent counsel renders an opinion, based on all facts available to him or her, that the Third Party is not so infringing the DURECT Technology and DURECT Patents in the Field in the Territory, then PTI may not initiate an action against such Third Party. The Party against whom the opinion is rendered shall bear all costs of the patent counsel in rendering such opinion. The costs and expenses of any infringement action (including fees of attorneys and other professionals) brought against a Third Party under this Section 12.3 shall be borne by counsel the Party instituting the action, or, if the Parties elect to cooperate in instituting and maintaining such action, such costs and expenses shall be borne by the Parties in such proportions as they may agree in writing. Each Party shall execute all necessary and proper documents and take such actions as shall be appropriate to allow the other Party to institute and prosecute such infringement actions. Any award paid by Third Parties as a result of its own choicesuch an infringement action (whether by way of settlement ***Material has been omitted pursuant to a request for confidential treatment and such material has been filed separately with the SEC. or otherwise), shall be used first to reimburse the Party(ies) initiating and maintaining such action for the costs and expenses (including attorneys’ and professional fees) incurred in connection with such action, and the non-enforcing Party remainder of the recovery shall have be (to the right extent the same represents damages from manufacture, use, sales or importation of products incorporating any Opioid Drug intended for the oral route comprising a Controlled Release Carrier within the Field) treated as Net Sales (i.e., paid to or retained by PTI, as applicable, less the applicable royalty as calculated in accordance with Section 9.5 to be represented in retained by or paid to DURECT, as applicable) and any such action by counsel remainder (i.e., that remaining portion, if any, that does not represent damages from manufacture, use, sales or importation of its own choice at its own expense. The Party controlling an action involving products incorporating any infringement of Opioid Drug within the Field intended for the oral route comprising a patent under this Section Controlled Release Carrier) shall consider in good faith the interests of the other Party in so doing, and shall not settle or consent be paid to an adverse judgment in any such action which would have a material adverse effect on the rights or interests of the other Party without the prior express written consent of such other Party. If one Party brings any such action or proceeding, the other Party agrees to be joined as a Party plaintiff if necessary to prosecute the action and to give the first Party reasonable assistance and authority to file and prosecute the suit. In each case relating to infringement of a patent under this Section, each Party shall bear the costs of its enforcement of such rights discussed in this section and retain for its own account any amounts received from Third PartiesDURECT.

Patent Enforcement. In As between DURECT and PTI, DURECT shall have the event either first right, but not the duty, to institute infringement actions against Third Parties based on any DURECT Patent Rights or DURECT Technology in the Territory. If DURECT does not institute an infringement proceeding against an offending Third Party becomes aware based on DURECT’s Patent Rights or DURECT Technology relating to the manufacture, use or sale of any interferenceproducts incorporating any Opioid Drug intended for the oral route comprising a Controlled Release Carrier in the Field in the Territory within [* * *] months after receipt of written notice from PTI, opposition, or request for reexamination, or similar proceedings, involving a ***CONFIDENTIAL TREATMENT REQUESTED patent application or patent filed in accordance with Section 5.2(a) or 5.2(b), it shall promptly notify the other Party hereto, and the Parties shall agree on the steps which shall be taken to protect the pertinent patent. In the event either Party becomes aware of any possible infringement of a patent filed in accordance with Section 5.2(a) or 5.2(b) or misappropriation of an invention within the Collaboration, it shall promptly notify the other Party hereto, providing a written description of the potentially infringing or misappropriation activities. SGX PTI shall have the right, but not the obligation to institute, prosecute and control any action or proceeding with respect to infringement of patents within SGX Background Technology. Roche shall have the right, but not the obligationduty, to instituteinstitute such an action, prosecute and control provided, however, that notwithstanding the foregoing, if DURECT notifies PTI during such [* * *] month period that it disputes in good faith whether such Third Party is infringing DURECT Patent Rights or DURECT Technology by the manufacture, use, sale or importation of products incorporating any action Opioid Drug intended for the oral route comprising a Controlled Release Carrier in the Field in the Territory, then the Parties shall refer such matter to a mutually acceptable independent patent counsel. The patent counsel will be asked to render his or proceeding with respect to infringement of patents her opinion on the matter within Roche Background Technology or compounds within Early Lead Series'. If a Party given the right to enforce a patent pursuant to this Section fails to bring an action or proceeding, or take other actions (e.g., commence settlement discussions) against a suspected infringer within a period of ninety (90) [* * *] days after having notice of such infringementreferral. In the event the patent counsel renders an opinion, based on all facts available to him or her, that the other Third Party shall have is so infringing the right to bring DURECT Technology and control DURECT Patents in the Field in the Territory, then PTI may, at its election, initiate an action against such infringer Third Party. If the patent counsel renders an opinion, based on all facts available to him or her, that the Third Party is not so infringing the DURECT Technology and DURECT Patents in the Field * * * Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been granted with respect to the omitted portions. in the Territory, then PTI may not initiate an action against such Third Party. The Party against whom the opinion is rendered shall bear all costs of the patent counsel in rendering such opinion. The costs and expenses of any infringement action (including fees of attorneys and other professionals) brought against a Third Party under this Section 12.3 shall be borne by counsel the Party instituting the action, or, if the Parties elect to cooperate in instituting and maintaining such action, such costs and expenses shall be borne by the Parties in such proportions as they may agree in writing. Each Party shall execute all necessary and proper documents and take such actions as shall be appropriate to allow the other Party to institute and prosecute such infringement actions. Any award paid by Third Parties as a result of its own choicesuch an infringement action (whether by way of settlement or otherwise), shall be used first to reimburse the Party(ies) initiating and maintaining such action for the costs and expenses (including attorneys’ and professional fees) incurred in connection with such action, and the non-enforcing Party remainder of the recovery shall have be (to the right extent the same represents damages from manufacture, use, sales or importation of products incorporating any Opioid Drug intended for the oral route comprising a Controlled Release Carrier within the Field) treated as Net Sales (i.e., paid to or retained by PTI, as applicable, less the applicable royalty as calculated in accordance with Section 9.5 to be represented in retained by or paid to DURECT, as applicable) and any such action by counsel remainder (i.e., that remaining portion, if any, that does not represent damages from manufacture, use, sales or importation of its own choice at its own expense. The Party controlling an action involving products incorporating any infringement of Opioid Drug within the Field intended for the oral route comprising a patent under this Section Controlled Release Carrier) shall consider in good faith the interests of the other Party in so doing, and shall not settle or consent be paid to an adverse judgment in any such action which would have a material adverse effect on the rights or interests of the other Party without the prior express written consent of such other Party. If one Party brings any such action or proceeding, the other Party agrees to be joined as a Party plaintiff if necessary to prosecute the action and to give the first Party reasonable assistance and authority to file and prosecute the suit. In each case relating to infringement of a patent under this Section, each Party shall bear the costs of its enforcement of such rights discussed in this section and retain for its own account any amounts received from Third PartiesDURECT.