Common use of Product-Specific Patents Clause in Contracts

Product-Specific Patents. Santarus shall have the right, at its sole discretion, on its own behalf, to institute, prosecute and control any action or proceeding to restrain infringement of any Product-Specific Patent in the Territory by a Third Party, other than the Impax Litigation or any such action or proceeding for which Santarus does not have standing to so institute or prosecute. In any instance in which Santarus does not have such standing, or to the extent the Impax Litigation continues following the Effective Date, Shore shall, under Santarus’ direction and control and expense (except with respect to the Impax Litigation, the cost and expense for which CHRP and/or Shore shall be solely responsible), institute or prosecute such action or proceeding to restrain infringement. The Parties which are not party to such an action or proceeding agree to be joined, and shall request that LifeCycle join, as a party plaintiff if necessary or appropriate, and shall provide all reasonable cooperation, at Santarus’ expense, required to prosecute such action. Santarus shall have sole control of any such action and all negotiations for its settlement or compromise and shall have the sole right to settle or compromise any such action (or direct such settlement or compromise), provided that no party shall settle or ***Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. compromise any such action or enter into any consent order for the settlement or compromise of such action that may materially negatively impact the rights or interests of LifeCycle and/or Shore without the prior written consent of LifeCycle and/or Shore, as applicable, such consent by Shore not to be unreasonably withheld, conditioned or delayed; and provided further, however, that Santarus shall keep Shore reasonably informed of the status of any such action and provide Shore and LifeCycle reasonable opportunities to consult with Santarus regarding such action. If, prior to the expiration of [***] from an Infringement Notice regarding infringement of any Product-Specific Patent, Santarus has not obtained a discontinuance of the alleged infringement or brought an infringement action or proceeding or otherwise taken appropriate action to xxxxx such infringement, then Shore and LifeCycle shall each have the right, but not the obligation, to institute, prosecute and control any action or proceeding to restrain such infringement. In such event, Shore or LifeCycle, as applicable, shall have control of any such action and all negotiations for its settlement or compromise and shall have the sole right to settle or compromise any such action (or direct such settlement or compromise), provided that Shore shall not settle or compromise any such action or enter into any consent order for the settlement or compromise of such action that may materially negatively impact the rights or interests of Santarus without the prior written consent of Santarus, such consent not to be unreasonably withheld, conditioned or delayed; and provided further, however, that Shore shall (if a party to such action), or shall request LifeCycle, if applicable, to keep Santarus reasonably informed of the status of any such action and provide Santarus reasonable opportunities to consult with Shore or LifeCycle regarding such action.

Product-Specific Patents. Santarus As between the Parties, Lilly shall have the right, at its sole discretion, on its own behalf, to institute, prosecute and control any action or proceeding to restrain infringement of any Product-Specific Patent in the Territory by a Third Party, other than the Impax Litigation or any such action or proceeding for which Santarus does not have standing to so institute or prosecute. In any instance in which Santarus does not have such standing, or to the extent the Impax Litigation continues following the Effective Date, Shore shall, under Santarus’ direction and control and expense (except with respect to the Impax Litigation, the cost and expense for which CHRP and/or Shore shall be solely responsible), institute or prosecute such action or proceeding to restrain infringement. The Parties which are not party to such an action or proceeding agree to be joined, and shall request that LifeCycle join, as a party plaintiff if necessary or appropriate, and shall provide all reasonable cooperation, at Santarus’ expense, required to prosecute such action. Santarus shall have sole control of any such action and all negotiations for its settlement or compromise and shall have the sole right to settle or compromise any such action (or direct such settlement or compromise), provided that no party shall settle or ***Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. compromise any such action or enter into any consent order for the settlement or compromise of such action that may materially negatively impact the rights or interests of LifeCycle and/or Shore without the prior written consent of LifeCycle and/or Shore, as applicable, such consent by Shore not to be unreasonably withheld, conditioned or delayed; and provided further, however, that Santarus shall keep Shore reasonably informed of the status of any such action and provide Shore and LifeCycle reasonable opportunities to consult with Santarus regarding such action. If, prior to the expiration of [***] from an Infringement Notice regarding infringement of any Product-Specific Patent, Santarus has not obtained a discontinuance of the alleged infringement or brought an infringement action or proceeding or otherwise taken appropriate action to xxxxx such infringement, then Shore and LifeCycle shall each have the first right, but not the obligation, to institute, prosecute Prosecute and control Maintain any action or proceeding to restrain such infringementProduct-Specific Patents at Lilly’s sole cost and expense. In such event, Shore or LifeCycle, as applicable, Lilly shall have control of any such action and all negotiations for its settlement or compromise and shall have the sole right to settle or compromise any such action (or direct such settlement or compromise), provided that Shore shall not settle or compromise any such action or enter into any consent order for the settlement or compromise of such action that may materially negatively impact the rights or interests of Santarus without the prior written consent of Santarus, such consent not to be unreasonably withheld, conditioned or delayed; and provided further, however, that Shore shall (if a party to such action), or shall request LifeCycle, if applicable, to keep Santarus ProQR reasonably informed of the status of all Product-Specific Patents and shall promptly provide ProQR with all material correspondence received from any patent authority in connection therewith. In addition, Lilly shall promptly provide ProQR with drafts of all proposed material filings and correspondence to any patent authority with respect to any Product-Specific Patents for ProQR’s review and comment prior to the submission of such proposed filings and correspondences, and Lilly shall consider ProQR’s reasonable comments in good faith. Lilly shall notify ProQR of its intention to suspend or cease any Prosecution and Maintenance of any Product-Specific Patent. Lilly shall provide such notice at least [***] prior to any filing or payment due date, or any other due date that requires action, in connection with such Product-Specific Patent. In such event, Lilly shall permit ProQR, at ProQR’s discretion and at its sole expense, to continue Prosecution and Maintenance of such Product-Specific Patent, subject to the foregoing information sharing obligation and review and comment rights applied mutatis mutandis; provided that ProQR shall not continue such Prosecution and Maintenance if Lilly objects to such Prosecution or Maintenance consistent with Lilly’s strategic decision-making rights. The Parties shall in good faith cooperate through the JPC (or as otherwise agreed to by the Parties) to communicate and determine (and, in any event, ProQR shall notify Lilly, including through the JPC) which future ProQR Patents may reasonably become Product-Specific Patents, and any such action ProQR Patents shall be subject to the foregoing information sharing obligation and provide Santarus reasonable opportunities review and comment rights applied mutatis mutandis, as well as Section 9.7.5. Lilly shall have no obligation to consult defend against any patent oppositions existing or filed as of the Effective Date, including those listed on Exhibit 10.2, regardless of whether or not any of the patents involved in the oppositions could be considered Product-Specific Patents. Further, Lilly’s election not to defend against patent oppositions existing as of the Effective Date shall not prevent Lilly from exercising any of the remaining rights to Prosecute and Maintain any Product-Specific Patent that it wishes to control in accordance with Shore or LifeCycle regarding such actionthis Agreement.