Provision Language
7. Intellectual Property, Infringement and Prosecution.
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7.6 Prosecution and Maintenance of Licensed Patents. VALNEVA shall, at its own judgment and expense and in its sole discretion, control the preparation, filing, prosecution and maintenance and conduct any other matters relating to the Licensed Patents.
7.7 Third Party Infringement with respect to Licensed Technology. In the event that during the Term of this Agreement and thereafter SIIPL obtains actual knowledge that a Third Party is infringing in the SIIPL Territory any Licensed Patent licensed under this Agreement, it shall promptly notify VALNEVA thereof, setting forth the facts of which it has knowledge in reasonable detail. VALNEVA shall have the first right to effect termination of such infringement, including bringing suit or other proceedings against the infringer in its own name, and shall keep SIIPL informed of the progress of such proceedings. VALNEVA shall bear all its costs incurred in connection with any such lawsuit or other proceeding which it may institute, including the reasonable out of pocket expenses incurred by SIIPL in providing any assistance which VALNEVA may request, and VALNEVA shall be entitled to collect and retain for its own account any damages or profits as may be awarded as a result of such lawsuit or other proceeding. In case VALNEVA elects, in its sole discretion, not to pursue the infringer, SIIPL may, in its discretion, bring suit or other proceedings against the infringer in its own name and at its own cost; however, in no event shall SIIPL, through any court action or proceeding, any settlement arrangement or any proceeding, filing or communication with any patent office, admit to the abandonment, invalidity or unenforceability of, or otherwise impair VALNEVA’s rights in, any Licensed Patents, without VALNEVA’s prior written consent. Under no circumstances shall SIIPL agree to restrict or take any actions that would be to the detriment of any Licensed Technology in a potential settlement agreement with any infringer. Should SIIPL wish to cease the prosecution of an infringer of such Licensed Technology, SIIPL shall promptly notify VALNEVA thereof and VALNEVA shall, in its sole discretion, be entitled to continue to pursue or not pursue the infringer. For clarity, nothing in this Agreement shall be construed as obligating either Party to proceed against an infringer.
7.8 Infringement Actions. Subject to Section 7.6-7.7, the Party exercising any enforcement rights:
(i) shall have full control over the conduct of the action; and
(ii) shall keep the other Party reasonably informed of the progress of and developments in any proceedings against infringers.
7.9 Defense of Licensed Technology. VALNEVA shall have, at its own judgment and expense and in its sole discretion, sole control the defense of the Licensed Patents and/or Licensed Manufacturing Know How. However, VALNEVA agrees that SIIPL can also have the same defense on any SIIPL Results, Know-How and Intellectual Property Rights generated under this Agreement.
9. Trade Name and Trademarks.
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9.3 Third Party Infringement. Each Party shall promptly notify the other Party in writing upon learning of any actual, alleged or threatened infringement of the other Party’s trade name and/or trademark(s), Each Party shall be responsible, at its sole cost and expense, to take actions and bring suit or other proceedings against such Third Party infringer, and shall keep other Party reasonably informed on the status of such actions and proceedings.