Common use of PATENTING Clause in Contracts

PATENTING. 12.1 ProTides acknowledges that BioMed will be entitled at any time and in its sole discretion to prepare and file: 12.1.1 in the name of ProTides, [***] (“Compound Divisionals”); and 12.1.2 in its own name, patent applications for any patentable inventions comprised within the Research IP. 12.2 ProTides will promptly: 12.2.1 on BioMed’s request [***] provide (and ensure that all inventors named on the Compound Patents or the Research Patents (as the case may be) provide) to BioMed all information, documentation and assistance (including executing documents) which BioMed may reasonably require to enable it to file any Compound Divisionals and/ or the Research Patents; 12.2.2 on BioMed’s request [***] provide (and use reasonable endeavours to ensure that all inventors named on the Compound Patents or the Research Patents (as the case may be) provide) to BioMed all information, documentation and assistance (including executing documents) which BioMed may reasonably require to enable it to prosecute any Compound Divisionals and/ or the Research Patents; and. 12.2.3 following the Commencement Date [***] take all steps necessary to (in so far as not already undertaken prior to the Commencement Date): (a) obtain written confirmatory assignments from each inventor named on the patent applications listed in Part 1 of the Schedule of all rights in and to such patent applications; and (b) record and register the assignation of the whole right, title and interest in and to the Compound Patents from [***] to ProTides at all appropriate patent offices. BioMed will on ProTides’ request use its [***] endeavours to assist ProTides to undertake the actions specified in paragraphs (a) and (b) above, however the responsibility for fulfilling the obligations remains solely with ProTides. 12.3 ProTides will keep BioMed regularly informed regarding its progress with its obligations under this Clause and will promptly confirm to BioMed in writing once these obligations have been fulfilled. 12.4 BioMed will subject to ProTides timeously fulfilling its obligations under Clause 12.2 during the period of this Agreement at [***]: 12.4.1 prosecute and maintain [***]; 12.4.2 use its [***] endeavours to obtain the maximum possible protection [***]; 12.4.3 as and when appropriate file applications for supplementary protection certificates and other extensions of term [***]; and 12.4.4 ensure that all filing and renewal fees necessary to prosecute and maintain [***] are paid timeously. 12.5 ProTides acknowledges that subject to [***], BioMed will have sole discretion and control in relation to the patenting strategy for the Research Patents and/ or Compound Patents and any decision which requires to be taken with regard to filing, prosecution and maintenance of the Research Patents and/ or the Compound Patents in all relevant countries and territories. 12.6 BioMed will: 12.6.1 [***]; 12.6.2 [***]; and 12.6.3 [***]. 12.7 BioMed will during the period of this Agreement have the right (but not the obligation) to take any action, legal or otherwise (including commencing and conducting relevant court proceedings in its own name or in the joint names of the parties), as may be necessary or expedient to prevent or stop any infringement of the Agreement IP and/or to defend the Agreement IP against any challenge to validity or ownership. Unless otherwise agreed with ProTides, all costs associated with BioMed’s taking any action or commencing or conducting any proceedings under this Clause 12.7 will be paid by BioMed. If BioMed commences or becomes involved in any action pursuant to this Clause 12.7 it will use reasonable endeavours to pursue and complete the proceedings to the extent reasonably possible in a manner which protects the commercial interests of both parties. 12.8 Each party will notify the other party of any: 12.8.1 actual, threatened or suspected infringement of the Agreement IP; and 12.8.2 proceedings commenced against it in which the validity or ownership of any of the Compound Patents or Research Patents is challenged, and provide all details relating thereto in its possession, as soon as reasonably practicable after it becomes aware of such matters. 12.9 ProTides will on BioMed’s request and [***] provide to BioMed all information, documentation and assistance (including executing documents) which BioMed may reasonably require to enable it to take any action or commence or conduct any proceedings pursuant to Clause 12.7. 12.10 BioMed will: 12.10.1 [***]; and 12.10.2 [***]. 12.11 Any monies received by or sums awarded to BioMed in settlement of or as compensation, costs or damages as a result of taking any action or commencing or conducting any proceedings under Clause 12.7 will belong solely to BioMed with the exception of monies or sums: 12.11.1 designated by the court in the relevant award or allocated in the relevant settlement agreement as representing lost royalties or an account of profits which will be regarded for the purpose of Clause 10.5 as Net Sales generated by BioMed in [***] in which the relevant monies or sums were actually received by BioMed; and 12.11.2 in respect of attorney’s fees and costs relating to such actions or proceedings which shall be shared between BioMed and ProTides pro rata based upon the amount of attorney’s fees and costs incurred by each of them (in ProTides’ case, to the extent such fees and costs have not previously been reimbursed to ProTides by BioMed and provided that such fees have been previously agreed with BioMed). 12.12 If BioMed does not take any action to prevent or stop any infringement of the Agreement IP and/or to defend the Agreement IP against any challenge to validity or ownership within [***] following the written notice pursuant to Clause 12.8 or at least [***] prior to the deadline for taking action in the relevant proceedings, whichever deadline occurs earlier, ProTides will have the right to take such action or defend such challenge at its own expense, in which case, ProTides will be entitled to retain all amounts recovered in taking such action and BioMed will comply with the terms of Clause 12.10 as if the names of the parties in that Clause had been swapped.