Provision Language
6. INTELLECTUAL PROPERTY
6.1 Ownership of Collaboration IP
(a) All Collaboration IP which is made, developed or conceived jointly by employees, consultants or agents of both Parties or their respective Affiliates, subcontractors or sublicensees will be jointly owned by both Parties and if any part of such Collaboration IP is patentable, both Parties, through the Alliance Managers, shall select by mutual agreement in writing the Party which will file and prosecute the relevant Patents, in its own name and at its own cost (“the Filing Party”) and the other Party (“the Non–Filing Party”) will assign to the Filing Party all its rights, title and interest in and to the Collaboration IP and will agree to provide the Filing Party with all consents and assistance as may be reasonably requested by the Filing Party to perfect its rights in the relevant Patents in return for the Filing Party granting the other Party a license according to section 4.
(b) All Collaboration IP which is made, developed or conceived solely by employees, consultants or agents of either Party or its Affiliates, subcontractors or sublicensees shall be solely owned by such Party (“DNDi Collaboration IPR” or “BDSI Collaboration IPR”), and if any part is patentable, such Party shall be solely entitled to file and prosecute any relevant Patent, in its own name and at its own cost, provided that the non–Filing Party will be automatically granted a license to such Collaboration IP according to section 4.
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6.3 Prosecution and Maintenance of Patents. Subject to the provisions of Section 4 and 6.1, the Filing Party will have the sole right and authority to prepare, file, prosecute, and maintain any Patent in the Collaboration IP defined in Section 6.1 throughout the world at its own expense. The Non–Filing Party will provide the Filing Party at its own request with all reasonable assistance and cooperation, including providing any necessary powers of attorney and executing any other required documents or instruments. If the Filing Party determines in its sole discretion to abandon or not maintain any Patent in the Territory, it shall promptly provide the Non– Filing Party with reasonable prior written notice of such determination, which shall in any event not be less than thirty (30) days prior to any abandonment or pending action date, along with copies of all material filings and correspondence with the applicable patent offices and any other relevant information regarding pending deadlines. The Non–Filing Party shall then have the right, at its expense, to assume responsibility for prosecuting and maintaining such Patent, provided that it shall not file any patent application claiming priority to such Patent without the prior written consent of the Filing Party, which in their sole discretion they may approve or deny for any reason. If the Non–Filing Party decides to assume such responsibilities, it shall so inform the Filing Party in writing, and the Filing Party shall use commercially reasonable efforts to cooperate with the Non–Filing Party to transfer such responsibilities to the Non– Filing Party and assign such Patent to the Non–Filing Party, at the Non–Filing Party’s expense.
6.4 Enforcement of Patents
(a) DNDi will promptly notify BDSI in writing upon learning of any alleged or threatened infringement of any Patent forming part of BDSI Background IP or BDSI owned Collaboration IP and BDSI will have the sole right to bring an appropriate suit or other action against any person or entity engaged in such alleged or threatened infringement, at its own expense. DNDi will provide all reasonable assistance to BDSI in such enforcement, including, without limitation, furnishing a power of attorney or joining such action as a necessary party, at BDSI’s reasonable expense. BDSI will retain any and all recoveries realized as a result of such litigation.
(b) Either Party will promptly notify the other Party in writing upon learning of any alleged or threatened infringement of any Patent forming part of the jointly owned Collaboration IP defined in Section 6.1 and the Parties, through the Alliance Managers, will decide which Party or whether both Parties shall bring an appropriate suit or other action against any person or entity engaged in such alleged or threatened infringement, and how any such action will be funded. The other Party will provide all reasonable assistance in such enforcement, including, without limitation, furnishing a power of attorney or joining such action as a necessary party, at the other Party’s reasonable expense. The Party bringing suit and funding the action will retain any and all recoveries realized as a result of such litigation.
6.5 Defense of Third Party Infringement Claims. If the manufacture, use, Distribution, or importation of CAMB pursuant to this Agreement results in any claim, suit, or proceeding by a Third Party alleging that such activities infringe a Third Party Patent, or if a Third Party threatens such a claim, suit or proceeding, the Party first having notice of the claim will promptly notify the other Party thereof, and the Parties, through their respective Alliance Managers, will promptly consult to discuss the claim and to agree in writing upon the actions to be taken to defend or settle such claim, the cost allocation for the defense or settlement, and the responsibilities of each Party in relation thereto. Neither Party shall enter into any settlement that affects the other Party’s rights or interests without first obtaining such other Party’s written consent, not to be unreasonably withheld or delayed.