Provision Language
Definitions
“AlCana Collaboration IP” means the collective reference to AlCana Program Developments and AlCana’s interest in Joint Program Developments.
“Program Development” means any (a) Program Technology and (b) any Patent Rights that disclose or claim Program Technology.
“UBC Collaboration IP” means the collective reference to UBC Program Developments and UBC’s interest in Joint Program Developments.
“UBC Controlled IP” means the collective reference to UBC Program Developments, UBC’s interest in Joint Program Developments, and the AlCana Collaboration IP assigned to UBC in accordance with Section 8.1.
7. Program Developments and Program Materials
7.4 Patent Filings
7.4.1 Prosecution and Maintenance. Subject to Sections 7.4.2, 7.4.3 and 7.4.5, all patent applications necessary to protect the interests of the Parties in any Program Developments will be prepared, filed, prosecuted, maintained, defended and paid for by Alnylam. Alnylam will use Commercially Reasonable Efforts to diligently prosecute and maintain such patent applications, however, nothing in this Agreement shall be construed to require Alnylam to prepare, file, prosecute, maintain, defend or pay for any patent applications covering Program Developments outside the Field of Use. Through the Joint IP Committee and the procedures described in Section 3.1(d) or such other mutually agreeable procedures as the Parties may adopt from time to time, Alnylam will provide AlCana and UBC with copies of all material documents received or prepared by or on behalf of Alnylam in the prosecution and maintenance of such patents and patent applications with respect to UBC Controlled IP, and shall provide such copies in a timely manner to allow AlCana and UBC a reasonable opportunity to comment and request changes. Alnylam agrees to include all reasonable comments of AlCana and UBC; provided, however, that [**] shall have the right to make any final determination in the event of any dispute between Alnylam and AlCana or UBC relating to any decision in connection with the preparation, filing, prosecution or maintenance of any such patent application or patent.
7.4.2 Contingent Rights. If Alnylam elects not to file or thereafter prosecute a particular Program Development within the UBC Controlled IP in any country, Alnylam will promptly notify UBC in writing, and UBC will have the right, but not the obligation, to file and prosecute the affected patent application, and/or maintain the affected patent in the applicable country(ies), at its expense. If UBC elects not to file or thereafter prosecute a particular Program Development within the AlCana Collaboration IP (other than any AlCana Collaboration IP that is also UBC Collaboration IP) in any country, UBC will promptly notify AlCana in writing, and AlCana will have the right, but not the obligation, to file and prosecute the affected patent application, and/or maintain the affected patent in the applicable country(ies), at its expense.
7.4.3 Infringement. Subject to Sections 7.4.4 and 7.4.5, Alnylam shall within the Field of Use have the exclusive right, but not the obligation, to initiate and maintain, at its expense, an appropriate suit anywhere in the world against any Third Party who at any time is suspected of infringing or using without proper authorization all or any portion of UBC Controlled IP, and shall control any such action for which it exercises such right. Subject to Section 7.4.4, AlCana and UBC agree to cooperate with Alnylam in such action, and Alnylam shall reimburse AlCana and UBC for any reasonable costs such Parties incur as a result of cooperating with such action. Alnylam shall have the right to recover [**] times its legal costs specifically relating to such infringement suit and any costs that AlCana or UBC incur during such suit for which they have received reimbursement from Alnylam, from any amounts obtained from a Third Party as a result of such suit, including without limitation, any costs that AlCana or UBC incur during such suit for which they have received reimbursement from Alnylam. Any amounts obtained in excess of such amount for the infringement of UBC Controlled IP will be divided between the Parties such that Alnylam receives [**] percent ([**]%), and AlCana and UBC each receive [**] percent ([**]%). In the event that damages are awarded for the infringement of multiple patents, some of which are UBC Controlled IP and some of which are not, the Parties shall agree on a reasonable allocation of the damages award to UBC Controlled IP and make the payments described above in accordance with such allocation. Each of AlCana and UBC may bring suit for infringement or unauthorized use of UBC Controlled IP in the Field of Use, at its own expense, if Alnylam elects not to commence suit under this Section within [**] days of notice of such alleged infringement from UBC or AlCana. If AlCana or UBC elects to bring suit in accordance with this Section, then Alnylam may thereafter join that suit at its own expense. The Party bringing the suit shall have the right to recover [**] times its legal costs specifically relating to such infringement suit and any costs that AlCana or UBC incur during such suit for which they have received
Any costs that the other Parties incur during such suit for which such other Parties have received reimbursement from the Party bringing the suit. Any amounts obtained in excess of such amount for the infringement of UBC Controlled IP will be divided between the Parties such that the Party bringing the suit receives [**] percent ([**]%), and the other two Parties will each receive [**] percent ([**]%). All Parties agree to be bound by the outcome of a suit for infringement under this Section.
7.4.4 Infringement Suits Naming AlCana or UBC as Plaintiff. Notwithstanding the provisions of Section 7.4.3, if there is an alleged infringement in which AlCana or UBC would be required to be a named plaintiff, then Alnylam may during the Agreement Term, and on first receiving the prior written consent of AlCana or UBC, as the case may be, such consent not to be unreasonably withheld, prosecute litigation designed to enjoin such infringers. Provided that it has first granted its prior written consent, AlCana and UBC agree to reasonably co–operate to the extent of signing all necessary documents and to vest in Alnylam the right to start the litigation, provided that all the direct and indirect costs and expenses (including reasonable costs of UBC and AlCana) of bringing and conducting the litigation or settlement are paid by Alnylam. All amounts recovered by Alnylam as the result of such litigation will first go to Alnylam to recover an amount equal to [**] its legal costs specifically relating to such litigation. Any amounts obtained in excess of Alnylam’s legal costs will be divided between the Parties such that Alnylam receives [**] percent ([**]%), and AlCana and UBC each receive [**] percent ([**]%). In the event that AlCana or UBC, as the case may be, withhold their consent unreasonably (or reasonably, but influenced by considerations outside this Agreement) with respect to a reasonable request by Alnylam in accordance with this Section 7.4.4, then any milestones or royalties owed by Alnylam or its Related Parties to Payee pursuant to Section 8.4 on behalf of the Party refusing such consent shall be reduced to [**] percent ([**]%) of the amount that was otherwise due.
7.4.5 Third Party Complaints. If during the Agreement Term any Third Party gives notice of a complaint alleging infringement of any patent or other proprietary rights to Alnylam or its Related Parties regarding the use of the UBC Controlled IP, then the following procedure will be adopted:
(a) Alnylam will promptly notify UBC and AlCana on receipt of the complaint and will keep UBC and AlCana fully informed of the actions and positions taken by the complainant and taken or proposed to be taken by Alnylam on behalf of itself or a Related Party;
(b) except as provided in subsection (d) below, all costs and expenses incurred by Alnylam or its Related Parties in investigating, resisting, litigating and settling the complaint, including the payment of any award of damages and/or costs to any Third Party, will be paid by Alnylam or its Related Parties, as the case may be;
(c) no decision or action concerning or governing any final disposition of the complaint which admits guilt on the part of UBC or AlCana or which would result in any material detriment to UBC or AlCana, will be taken without full consultation with, and approval by, UBC and AlCana; and
(d) UBC and AlCana may elect to participate as a party in any litigation involving the complaint to the extent that the court may permit, but any additional expenses generated by such participation will be paid by UBC and AlCana (as the case may be) subject to the possibility of recovery of some or all of the additional expenses from the complainant.