Enforcement of Intellectual Property Rights Contract Clauses (36)
Grouped Into 1 Collection of Similar Clauses From Business Contracts
This page contains Enforcement of Intellectual Property Rights clauses in business contracts and legal agreements. We have organized these clauses into groups of similarly worded clauses.
Enforcement of Intellectual Property Rights. Each Party will promptly notify the other Party, in writing, of any (i) known Violation of any Licensed IPA by a third party within the Field of Use and will provide the other Party with available information relating to such Violation, and (ii) any allegation or action by a third party indicating that any Licensed IPA is invalid or unenforceable (e.g., a declaratory judgment action, a post-grant review action, or a communication from the third party) and will provide the other Party with availa...ble information relating to such allegations or action. 7.2. Licensor will have exclusive rights to initiate and control any enforcement proceeding with respect to a Violation of Licensed IPA (such enforcement proceeding, an "Action") outside the Field of Use at its own expense. Licensee will not have a right to initiate, participate in, or share recovery from, an Action outside the Field of Use. 7.3. Licensee will have the first right to initiate and control any Action in the Field of Use at its own expense. If Licensee does not bring any such Action within 120 days following notice of the alleged Violation or 30 days before the time limit, if any, set forth in the appropriate laws and regulations for filing of such Action, whichever comes first, then Licensor will have the right, to initiate and control such Action at its own expense. 7.4. Each Party will cooperate with the other Party in an Action brought by that other Party, at that other Party's expense, including but not limited to providing materials and information reasonably requested as being reasonably necessary for purposes of the Action. 7.5. For an Action in the Field of Use brought by either Party in accordance with this Section 7 that is fully participated in by both Parties, the Parties will share Costs and recoveries as follows: any recovery will first be applied equally to reimburse those Costs agreed to be shared between the Parties in writing before such Costs were incurred (any other Costs will be at the expense of the Party incurring them); and then any remaining recovery will be shared equally. For Actions in the Field of Use brought by either Party in 5 accordance with this Section 7 and not fully participated in by both Parties: any recovery will first be applied to reimburse the Costs of the Party that brought and controlled such Action and then to reimburse the Costs of the other Party; then any recovery remaining after such reimbursement will be allocated 75% to the Party bringing the Action and 25% to the other Party or as otherwise agreed between the Parties. For the purposes of this Section 7, "fully participated in" means being actively involved in a material manner in most or all aspects of the Action and "Costs" refers to costs, fees, and expenses (including attorney fees) incurred in participating in the Action. 7.6. Any Action brought in accordance with this Section 7 will be controlled by the Party bringing the Action; the other Party may be represented by counsel of its choice. 7.7. For any non-cash settlement or non-cash cross-license, Licensee and Licensor will negotiate in good faith an appropriate monetary value of such settlement or cross-license to use when calculating the recovery from an Action when the recovery is to be shared. 7.8. Licensee will not settle, compromise, or discharge any Action brought in accordance with this Section 7 without prior written consent of Licensor; provided, that, written consent of Licensor will not be required for a settlement, compromise or discharge of such Action that does not admit the invalidity or unenforceability of Licensed IPA or have a material adverse effect on Licensor. 7.9. Licensee will not make any statement disparaging, or admitting the invalidity or unenforceability of, any Licensed IPA. 7.10. Licensee and its Sublicensees will not challenge in any forum or any jurisdiction the validity or enforceability of any Licensed IPA; any such challenge will be void ab initio. Upon the occurrence of such a challenge, Licensor will have the right to terminate this Agreement immediately upon notice. Licensee will reimburse all Costs that Licensor may incur addressing any such challenge (whether under contract law, patent law, or any other law).View More
Enforcement of Intellectual Property Rights. Each Party will promptly notify the other Party, in writing, of (i) any (i) known Violation of any Licensed IPA Patent by a third party within the Field of Use and will provide the other Party with available information relating to such Violation, and (ii) any allegation or action by a third party indicating that any Licensed IPA Patent is invalid or unenforceable (e.g., a declaratory judgment action, a post-grant review action, or a communication from the third party) and will provide the other... Party with available information relating to such allegations allegation or action. 7.2. 9.2. Licensee and its Sublicensees will not inform a third party of a potential Violation of any Licensed Patent within the Field of Use. 9.3. Licensor will have exclusive rights to initiate and control any enforcement proceeding with respect to a Violation of a Licensed IPA Patent (such enforcement proceeding, an "Action") within the Field of Use, and will be entitled to all recoveries obtained therefrom; provided that, if any recoveries were received with respect to infringement of a patent claim requested by Licensee under Section 8.2, then such recoveries will be shared equally between the Parties. For any non-cash settlement or non-cash cross-license, Licensee and Licensor will negotiate in good faith an appropriate monetary value of such settlement or cross-license to use when calculating the recovery from an Action when the recovery is to be shared. 9.4. In the event that Licensor elects to initiate any Action outside the Field of Use, Licensor will deliver notice of such election to Licensee under Section 16 (Notices) at least sixty (60) days prior to initiation of such Action; if Licensee can reasonably prove that the Action would be in a field for which Licensee is actively engaged in activities towards Exploiting a Licensed Product, Licensor must obtain Licensee's consent before initiating such Action. 9.5. Licensee must request consent from Licensor to initiate an Action. Such request must be in writing and must include reasonable evidence of the Violation of the Licensed Patents and damage therefrom to Licensee or its Sublicensee. Licensor will not unreasonably withhold, condition, delay, or deny consent for such Action if the Violation occurred outside the Field of Use at its own expense. during the period and in a jurisdiction where Licensee had a license under this Agreement. Licensee will not have a right be entitled to initiate, participate in, or share recovery from, an Action outside the Field of Use. 7.3. Licensee will have the first right to initiate and control any Action in the Field of Use at its own expense. If Licensee does not bring any all recoveries obtained from such Action within 120 days following notice of the alleged Violation or 30 days before the time limit, if any, set forth in the appropriate laws and regulations for filing of such Action, whichever comes first, then Licensor will have the right, to initiate and control such Action at its own expense. 7.4. Action. 4 9.6. Each Party will cooperate with the other Party in an Action brought by that other Party, at that other Party's expense, including but not limited to providing materials and information reasonably requested as being reasonably necessary for purposes of the Action. 7.5. For an Action in the Field of Use brought by either Party in accordance with this Section 7 that is fully participated in by both Parties, the Parties will share Costs and recoveries as follows: any recovery will first be applied equally to reimburse those Costs agreed to be shared between the Parties in writing before such Costs were incurred (any other Costs will be at the expense of the Party incurring them); and then any remaining recovery will be shared equally. For Actions in the Field of Use brought by either Party in 5 accordance with this Section 7 and not fully participated in by both Parties: any recovery will first be applied to reimburse the Costs of the Party that brought and controlled such Action and then to reimburse the Costs of the other Party; then any recovery remaining after such reimbursement will be allocated 75% to the Party bringing the Action and 25% to the other Party or as otherwise agreed between the Parties. For the purposes of this Section 7, "fully participated in" means being actively involved in a material manner in most or all aspects of the Action and "Costs" refers to costs, fees, and expenses (including attorney fees) incurred in participating in the Action. 7.6. Any Action brought in accordance with this Section 7 will be controlled by the Party bringing the Action; the other Party may be represented by counsel of its choice. 7.7. For any non-cash settlement or non-cash cross-license, Licensee and Licensor will negotiate in good faith an appropriate monetary value of such settlement or cross-license to use when calculating the recovery from an Action when the recovery is to be shared. 7.8. 9.7. Licensee will not settle, compromise, or discharge any Action brought in accordance with this Section 7 9 without prior written consent of Licensor; provided, that, written consent of Licensor will not be required for a settlement, compromise or discharge of any such Action that does not admit the invalidity or unenforceability of any Licensed IPA Patent or have a material adverse effect on Licensor. 7.9. 9.8. Licensee will not make any statement disparaging, or admitting the invalidity or unenforceability of, any Licensed IPA. 7.10. Licensee and its Sublicensees will not challenge in any forum or any jurisdiction the validity or enforceability of any Licensed IPA; any such challenge will be void ab initio. Upon the occurrence of such a challenge, Licensor will have the right to terminate this Agreement immediately upon notice. Licensee will reimburse all Costs that Licensor may incur addressing any such challenge (whether under contract law, patent law, or any other law). Patent. 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