Provision Language
Definitions
“Major Territory” means any and all of the United States of America, any member state of the European Patent Convention, Canada,Australia and Japan.
“Patent Action” means the preparation, filing, prosecution and maintenance of patent applications and patents in the Patent Rights, including reexaminations, interferences, oppositions, inventorship related matters, and any other ex parte or inter partes matters (e.g., inter partes review petitions) originating or conducted in a patent office.
“Patent Rights” means The Regents’ interest in: (i) the patents and patent applications expressly identified in Appendix A and their foreign counterparts; (ii) any patent applications claiming priority to those identified in subpart (i) above such as utility filings, divisionals, continuations and continuations-in-part (but with respect to continuations and continuations-in-part solely to the extent of those claims that are both entirely supported by the specification and entitled to the priority date of any patent application or patent identified in subpart (i) above); and (iii) any patents issuing from any patent application identified in subparts (i)-(ii), including reissues, re-examinations, and substitutions, as well as any applicable patent extensions or term adjustments, and supplementary protection certificates (“SPCs”).
11. PATENT FILING, PROSECUTION AND MAINTENANCE
11.1 Ownership and Prosecution. The Patent Rights will be held in the name of The Regents and obtained with counsel of The Regents’ choice. The Regents will instruct its outside counsel to provide Licensee copies of all correspondence filed with and received in relation to the Patent Rights from the applicable patent office (e.g., patent applications, office actions, office action responses, etc.) during the term of the Agreement. Licensee will hold such information confidential and use such information provided by The Regents or its counsel only for the purpose of advancing the Patent Rights. While The Regents will control all Patent Actions and all decisions with respect to Patent Actions, it will work closely with Licensee to incorporate any reasonable comments or suggestions provided by Licensee with respect thereto, e.g., to amend any patent application under the Patent Rights to include claims reasonably requested by Licensee to protect the products contemplated to be sold by Licensee under this Agreement. Licensee has the right to provide instructions regarding Patent Actions via a written request to The Regents thirty (30) days prior to the deadline set by the patent office in the territory such Patent Action is to take place (a “Patent Prosecution Request”).
11.2 Past & Ongoing Patent Costs. Licensee will bear all out-of-pocket costs incurred by The Regents for Patent Actions (“Patent Costs”).Licensee must reimburse to The Regents Patent Costs incurred prior to the term of this Agreement (“Past Patent Costs”) within thirty (30) days of Licensee’s receipt of an invoice from The Regents. As of February 17, 2022, these Past Patent Costs are approximately Twenty Thousand Four Hundred and Fifty Three US Dollars ($20,453). With respect to Patent Costs incurred during the term of this Agreement (“Ongoing Patent Costs”), such Ongoing Patent Costs will be directly billed to Licensee by The Regents’ patent counsel; to the extent the parties have not already entered into a direct billing agreement, then concurrently with execution of this Agreement Licensee, The Regents and The Regents’ patent counsel will enter into a direct billing agreement. At The Regents’ sole discretion, rather than requiring Licensee to pay such amounts pursuant to a direct billing agreement, The Regents may (1) bill Licensee for Ongoing Patent Costs after such amounts are incurred, in which case payment will be due to The Regents within thirty (30) days of Licensee’s receipt of an invoice from The Regents, or (2) require Licensee to pay in advance The Regents’ patent counsel’s estimated costs for undertaking Patent Actions that occur during the term of this Agreement before The Regents authorizes its patent counsel to proceed (“Advanced Payment”).
11.3 Obligations, Termination & Rights. Licensee may terminate its license with respect to any or all of Patent Rights by providing written notice to The Regents (“Patent Termination Notice”). Termination of Licensee’s obligations with respect to such patent application or patent will be effective ninety (90) days after receipt of such Patent Termination Notice by The Regents. In addition, if Licensee fails to timely (i) provide a Patent Prosecution Request pursuant to Section 11.1, or (ii) pay for any Patent Costs as required by Section 11.2 (including as required per the terms of a direct billing agreement), then such failure will be deemed to be an election by Licensee not to secure the applicable patent application(s) and patent(s) and The Regents will have the right to immediately terminate this Agreement with respect to the applicable patent application(s) and patent(s) (i.e., Licensee will not have the right to cure such breach pursuant to Section 8.4), unless such failure to pay is with respect to Past Patent Costs owed in which case Licensee will have the right to cure such breach pursuant to Section 8.4. For the avoidance of doubt immediately effective upon such termination, Licensee will have no further right or license to such patent applications and patents and Licensee will remain liable for any Patent Costs incurred prior to such termination with respect to such patent applications and patents.
11.4 Licensee’s Patent Filings. Licensee agrees to disclose to The Regents any patent application Licensee intends to file naming a UCLA employee as an inventor prior to filing.
11.5 Patent Extensions. Licensee will apply for an extension of the term of any patent included within the Patent Rights, if appropriate, under the Drug Price Competition and Patent Term Restoration Act of 1984 and/or European, Japanese and other foreign counterparts. Licensee will prepare all documents and The Regents agrees to execute the documents and to take additional action as Licensee reasonably requests in connection therewith. Licensee will be liable for all costs relating to such application.
13. PATENT INFRINGEMENT
13.1 Infringement Notice. In the event either party learns of infringement of potential commercial significance of any Patent Right, such party will provide the other party with written notice, including evidence of such infringement, if available (“Infringement Notice”). Licensee will not notify such infringer regarding such potential infringement until receiving The Regents’ written permission. For the avoidance of doubt, if Licensee breaches the foregoing restriction and a declaratory judgment action is filed by such infringer against The Regents, then Licensee will reimburse The Regents for The Regents’ out of pocket costs in defending the Patent Rights as a result of such declaratory judgment. Both The Regents and Licensee will use their diligent efforts to cooperate with each other to terminate such infringement without litigation.
13.2 Licensee-Initiated Suit and The Regents’ Joinder. If infringing activity of potential commercial significance by the infringer has not been abated within ninety (90) days following the date the Infringement Notice takes effect, then so long as Licensee’s license under Section 2.1 remains exclusive and such infringement falls within the scope of the license granted to Licensee pursuant to this Agreement, Licensee may institute suit for patent infringement against the infringer. The Regents may voluntarily join such suit but may not otherwise commence suit against the infringer for the acts of infringement that are the subject of Licensee’s suit or any judgment rendered in that suit. Licensee may not join The Regents as a party in a suit initiated by Licensee without The Regents’ prior written consent. If The Regents joins a suit initiated by Licensee, then Licensee will pay any costs incurred by The Regents arising out of such suit, including but not limited to, any legal fees of counsel that The Regents selects and retains to represent it in the suit.
Licensee may not join The Regents as a party in a suit initiated by Licensee without The Regents’ prior written consent. If The Regents refuses to join a suit instituted by Licensee in a Major Territory despite being deemed a necessary party by a court of competent jurisdiction in such Major Territory, all payments due The Regents under this Agreement (except those pertaining to patent cost reimbursement), including all royalties (but only to the extent of royalties due on sales that took place in such Major Territory), milestones and other payments, shall be reduced by fifty percent (50%) for so long as the infringement by the third party continues unabated in such Major Territory but only to the extent that such infringement in such Major Territory materially and adversely affects the business of Licensee in such Major Territory relating to the Licensed Products.
13.3 The Regents-Initiated Suit. If, within a hundred and twenty (120) days following the date the Infringement Notice takes effect, infringing activity of potential commercial significance by the infringer has not been abated and if Licensee has not brought suit against the infringer, then The Regents may institute suit for patent infringement against the infringer. If The Regents institutes such suit, then Licensee may not join such suit without The Regents’ consent and may not thereafter commence suit against the infringer for the acts of infringement that are the subject of The Regents’ suit or any judgment rendered in that suit.
13.4 Cooperation. Any litigation proceedings will be controlled by the party bringing the suit, except that The Regents may be represented by counsel of its choice in any suit brought by Licensee. The Regents and Licensee agree to be bound by all final and non-appealable determinations of patent infringement, validity and enforceability (but no other issue) resolved by any adjudicated judgment in a suit brought in compliance with this Section 13 (Patent Infringement). Any agreement made by Licensee for purposes of settling litigation or other dispute will comply with the requirements of Section 3 (Sublicenses) of this Agreement.
13.5 Costs & Recovery. Each party will cooperate with the other in litigation proceedings instituted hereunder but at the expense of the party who initiated the suit (unless such suit is being jointly prosecuted by the parties, in which case the parties will agree in advance of initiating the suit how they will share in such expenses). Any recovery or settlement received in connection with any suit will first be shared by The Regents and Licensee equally to cover any litigation costs each incurred and next will be paid to The Regents or Licensee to cover any litigation costs it incurred in excess of the litigation costs of the other. In any suit initiated by Licensee, The Regents will receive twenty-five percent (25%) of any recovery in excess of litigation costs and Licensee will receive the remaining seventy-five percent (75%). In any suit initiated by The Regents, one hundred percent (100%) of any recovery in excess of litigation costs will belong to The Regents. Notwithstanding the foregoing, if Licensee joins such suit at The Regents’ request or is involuntarily joined, The Regents will receive seventy-five percent (75%) of any recovery and Licensee will receive the remaining twenty-five percent (25%).