Provision Language
8.0 OWNERSHIP OF TECHNOLOGY / IMPROVEMENTS
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8.2 No Impeachment. The Company shall neither impeach, contest or otherwise attack, directly or indirectly, the validity, enforceability or ownership of the Patents or any Intellectual Property rights held by Canada, or Canada’s right, title and interest in and to the Licensed Rights nor assist, counsel or procure any third party to do the same.
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10.0 PATENT PROTECTION & REGULATORY REQUIREMENTS
10.1 Patent Costs. The Company shall pay all costs related to and maintaining Patents (and shall reimburse Canada for any of these costs that Canada may pay during any term of the License Agreement), as they are incurred, and within thirty (30) days of being invoiced for such costs. Canada shall have the first right to prosecute and maintain any of the Patents. However, if Canada decides not to do so, Canada shall provide a notice to the Company under Article 20 in a timely manner. The Company or its sub-licensee Merck (or its affiliates or sub-licensees) may then prosecute and maintain such Patents in the name of Canada and Canada shall provide reasonable assistance and cooperation to the Company in connection therewith (including, without limitation, providing the necessary authorizations to the Company or other relevant documents). If the Company, or its sub-licensee Merck (or its affiliates or sub-licensees) prosecute or maintain such Patents, then the Company shall provide a notice to Canada under Article 20 in a timely manner.
10.2 Right to Patent and Patent Term Extensions. Nothing in the License Agreement shall limit or restrict Canada from seeking to patent Improvements made by Canada or the Company from seeking to patent Improvements made by the Company. In addition, the Company or its sub-licensee Merck (or its affiliates or sub-licensees) shall have the right to file for patent term extensions and supplementary protections certificates (or equivalents thereof) (hereinafter “PTR(s)“) for any Licensed Products in its discretion. Canada shall provide reasonable assistance and cooperation to the Company or its sub-licensee Merck (or its affiliates or sub-licensees) in connection with any PTR and shall provide all necessary authorizations for a PTR application. Any such application shall request that any PTR certificate granted shall reflect Canada as the patent owner. Canada shall assume the costs associated with its reasonable assistance and cooperation but all other costs for a PTR application shall be borne by the Company or its sub-licensee Merck (or its affiliates or sub-licensees). If the Company, or its sub-licensee Merck (or its affiliates or sub-licensees) file PTRs, then the Company shall provide a notice to Canada under Article 20 in a timely manner.
14.0 INFRINGEMENT
14.1 Third Party Suit. Subject to Article 13 (Indemnification), in the event of any threatened or actual suit against the Company in consequence of the exercise of any rights and licenses granted herein, the Company shall promptly inform Canada and the Parties will jointly decide on the steps to be taken in the circumstances. In any event, the Company will always have the sole right to defend itself as it determines against any suit or other action brought against the Company or its employees or agents.
14.2 Infringement Uncovered. Each Party will notify the other promptly in writing when any infringement of the Licensed Rights or Patents is uncovered or suspected.
14.3 Company May Sue. The Company or its sub-licensee Merck (or its affiliates or sub-licensees) shall have the right to enforce the Patents against any infringement or alleged infringement thereof, and shall at all times keep Canada informed as to the status thereof. The Company or its sub-licensee Merck (or its affiliates or sub-licensees) may, at its own expense, institute suit against any such infringer or alleged infringer and prosecute such suit in a manner consistent with the terms and provisions hereof. Canada shall reasonably cooperate in any such litigation at the Company’s expense, and the Company shall keep Canada apprised in a timely manner of all litigation activities. In any litigation under this article, the Company or its sub-licensee Merck (or its affiliates or sub-licensees) shall not have the right to settle or otherwise compromise Canada’s position as a licensor or owner of the Patents without Canada’s prior written consent; provided that Canada shall act reasonably in considering any request for such consent and shall not unreasonably withhold, condition or delay such consent.
14.4 Distribution of Company’s Recovery. In the event of a recovery by the Company of punitive and non-punitive damages (net of legal fees and out of pocket costs of the action) under paragraph 14.3 for royalty-bearing products, the Company shall pay to Canada [*] of such recovery.
14.5 Canada May Sue. If the Company or its sub-licensee Merck (or its affiliates or sub-licensees) elects not to enforce the Patents as to any infringement or alleged infringement thereof, then the Company shall so notify Canada in writing within one (1) month of receiving notice that an infringement exists, and Canada may, in its sole judgment and at its own expense, take steps to enforce the Patents against such infringement or alleged infringement and control, settle, and defend such suit in a manner consistent with the terms and provisions hereof, and recover for its own account any damages, awards or settlements resulting therefrom.