“Licensed Patents” means all Brazilian patent applications and patents including, without limitation, any continuations, continuations-in-part and divisions of any such patents or patent applications, any patents issuing from any of the foregoing, any extensions or supplementary patent certificates thereto, in each case such patents or patent applications that may be necessary for the Regulatory Activity, Manufacture or Supply of the Licensed Product that are controlled by AstraZeneca or any of its Affiliates or which AstraZeneca has the right to sublicense under the Head License (as applicable) as of the Effective Date and during the Term of the Agreement. As of the Effective Date, the Licensed Patents are those that are set forth on Schedule A [schedule redacted]. Schedule A may be amended from time to time to include new additional Licensed Patents required for the Regulatory Activity, Manufacture or Supply of the Licensed Product, upon notice to Licensees within thirty (30) business days upon the filing of a patent application or the license of patents that are relevant in Territory by AstraZeneca, and by means of an amendment executed by the parties. Within two (2) Business Days as of the Effective Date, AstraZeneca shall provide Licensees with a list of all the patents and patent applications that cover or protect the Licensed Technology, as well as the full content of such documents, even if they are still under the secrecy period, that AstraZeneca or its licensors have filed for or intend to file for patent protection in Brazil.
9. Trademarks; Prosecution, Maintenance and Infringement of the Licensed Rights
9.02 Prosecution and Maintenance
As between the Parties, AstraZeneca would be responsible for the filing, prosecution and maintenance of the Licensed Patents, and, during the Term, would take into account any reasonable comments and suggestions of Licensees in relation to the filing, prosecution and maintenance of such patents.
9.03 Notification of Infringement
Either Party shall promptly notify the other Party with such details as it has in its possession of any Infringement as and when it becomes aware of an Infringement.
As between the Parties, AstraZeneca shall have the sole right, but not the obligation, to bring at its own expense, an infringement action against any Infringer. AstraZeneca shall be entitled to name either or both of the Licensees as a party to any such infringement action in the Territory if required to do so by law or with Licensees’ prior written consent.
9.05 Infringement Actions
The Party exercising any enforcement rights under Section 9.04:
a) shall have full control over the conduct of the action;
b) shall keep the other Party reasonably informed of the progress of and developments in any proceedings against Infringers; and
c) may negotiate settlements with Infringers.
9.06 Reasonable Assistance
Licensee shall provide AstraZeneca and the Head Licensor, as applicable, with such assistance as reasonably requested in connection with any proceedings against Infringers related to the performance of this Agreement. In case AstraZeneca requests such assistance shall pay Licensees’ reasonable out-of-pocket expenses properly incurred in providing the required assistance.
If an Infringer counterclaims for revocation of any of Licensed Patents, then Section 9.05 shall apply in respect of such counterclaims.
9.08 Other Enforcement of Licensed Technology
As between the Parties, AstraZeneca shall have the sole right (but not the obligation) to bring proceedings against any Entity that infringes any of the Licensed Technology in relation to products other than vaccines for the prevention of SARS-CoV-2 in humans.
11. Term and Termination
11.02 Registration with Brazilian Patent and Trademark Office
AstraZeneca will be responsible for submitting this Agreement for registration with the Brazilian Patent and Trademark Office (INPI) in thirty (30) days after the Effective Date, and the Parties must cooperate to comply with the requirements necessary for due registration of the Agreement. AstraZeneca will notify Licensees of any requirements for registration of the Agreement and will immediately notify Licensees upon approval and registration of the Agreement by the INPI.