Precision Patents Clause Samples
Precision Patents. (a) Each Party shall promptly notify the other Party in writing of any alleged or threatened infringement of the Precision Patents by a Third Party of which such Party becomes aware (including alleged or threatened infringement based on the development or commercialization of, or an application to market, a Licensed Product), subject in each case to any confidentiality obligations of the applicable Party owed to the Third Party who made such Party aware of such infringement. Neither Party shall prosecute any Competitive Infringement of the Precision Patents prior to [***]. Thereafter, Gilead shall have the first right, but not the obligation, to prosecute any Competitive Infringement of the Precision Patents, at [***] cost and expense, and Gilead shall retain control of the prosecution of such suit. At all times, Precision shall have the sole right, but not the obligation, to prosecute any Other Infringement of the Precision Patents at [***] cost and expense, and Precision shall retain control of the prosecution of such suit. [***] Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
(b) In the event that Gilead decides not to prosecute any Competitive Infringement of the Precision Patents following [***], Gilead shall provide reasonable prior written notice to Precision of such intention (which notice shall, where reasonably practical, be given no later than [***] prior to the next deadline for any action that may be taken with respect to such Patent), and Precision shall thereupon have the option to assume the control and direction of the prosecution of the Competitive Infringement, at [***] cost and expense; provided that, in deciding whether to exercise its option, and in prosecuting such infringement, Precision shall take into consideration Gilead’s business reasons for deciding not to prosecute the infringement of such Precision Patent.
(c) In the event a Party prosecutes infringement of a Precision Patent against Competitive Infringement pursuant to this Section 6.3.1, the Non-Prosecuting Party shall have the right to join as a party to such claim, suit, or proceeding and participate with its own counsel at [***] cost and expense; provided that the Prosecuting Party shall retain control of the prosecution of such claim, suit, or proceeding. During any such claim, suit, or proceeding, the Prosecuting Party s...
Precision Patents. (a) Subject to Section 6.2.4, Precision shall have the first right, but not the obligation, through the use of internal or outside counsel, to prepare, file, prosecute, and maintain the Precision Patents worldwide, at [***] sole cost and expense [***]. Precision shall keep Gilead consulted in a timely fashion with respect to the strategy of such preparation, filing, prosecution and maintenance, and in the event of a disagreement with respect to such strategy in relation to a Precision HBV Patent, Gilead shall have final decision-making authority in accordance with Section 6.2.4 and subject to Section 6.2.5; provided, however, that Gilead may relinquish such final decision-making authority with respect thereto, in which case Gilead shall no longer be obligated to pay for such activities with respect to the applicable Patent.
(b) In the event that Precision decides not to prepare, file, prosecute, or maintain a Precision Patent pursuant to Section 6.2.1(a), Precision shall provide reasonable prior written notice to Gilead of such intention (which notice shall, in any event, be given no later than [***] prior to the next deadline for any action that may be taken with respect to such Patent). Gilead shall thereupon have the option, in its sole discretion, to assume the control and direction of the preparation, filing, prosecution, and maintenance of such Patent (unless Precision’s decision to allow the lapse of any provisional patent application, or abandonment of any patent application, is intended to be in favor of trade secret protection or in favor of a continuation), at [***] cost and expense. The rights and obligations of the Parties shall not otherwise be affected by such assumption of control by Gilead. For the purpose of this ARTICLE 6, “prosecution” shall include any post-grant proceeding including supplemental examination, post grant review proceeding, inter parties review proceeding, patent interference proceeding, opposition proceeding and re-examination.
Precision Patents. If a Precision Patent becomes the subject of any proceeding commenced by a Third Party in the Territory in connection with an opposition, reexamination request, action for declaratory judgment, nullity action, interference, inter partes review or other attack upon the validity, title or enforceability thereof, then Precision shall have the first right, but not the obligation, to control such defense at its sole cost and expense. Precision shall permit Baxalta to participate in the proceeding to the extent permissible under applicable Laws, and to be represented by its own counsel in such proceeding, at Baxalta’s sole cost and expense. If Precision decides that it does not wish to defend against such action, then Baxalta shall have a right to assume defense of such Third Party action.