AND MAINTENANCE
OF THE VERTEX PATENTS WORLDWIDE AND OF THE JOINT PATENTS IN THE VERTEX
TERRITORY.
MITSUBISHI SHALL BE RESPONSIBLE FOR PAYING ITS COSTS INCURRED FOR
PREPARATION, FILING, PROSECUTION AND MAINTENANCE OF THE MITSUBISHI PATENTS
WORLDWIDE AND OF THE JOINT PATENTS IN THE TERRITORY.
EITHER PARTY MAY AT ANY
TIME ELECT, BY WRITTEN NOTICE TO THE OTHER PARTY, TO DISCONTINUE SUPPORT FOR ONE
OR MORE JOINT PATENTS (A "DISCONTINUED PATENT") AND SHALL NOT BE RESPONSIBLE FOR
ANY COSTS RELATING TO A DISCONTINUED PATENT WHICH ARE INCURRED MORE THAN SIXTY
(60) DAYS AFTER RECEIPT OF THAT NOTICE BY THE OTHER PARTY.
IN SUCH CASE, THE
OTHER PARTY MAY ELECT AT ITS SOLE DISCRETION TO CONTINUE PREPARATION, FILING,
PROSECUTION OR MAINTENANCE OF THE DISCONTINUED PATENT AT ITS SOLE EXPENSE.
THE
PARTY SO CONTINUING SHALL OWN ANY SUCH DISCONTINUED PATENT, AND THE PARTY
ELECTING TO DISCONTINUE SUPPORT SHALL EXECUTE SUCH DOCUMENTS OF TRANSFER OR
ASSIGNMENT AND PERFORM SUCH ACTS AS MAY
31
Information redacted pursuant to a confidential treatment request.
An
unredacted version of this
exhibit has been filed separately with the Commission.
BE REASONABLY NECESSARY TO TRANSFER SOLE OWNERSHIP OF THE DISCONTINUED PATENT TO
THE OTHER PARTY AND ENABLE THAT PARTY TO FILE OR TO CONTINUE PROSECUTION OR
MAINTENANCE OF THE DISCONTINUED PATENT, IF THE OTHER PARTY ELECTS TO DO SO.
DISCONTINUATION MAY BE ON A COUNTRY-BY-COUNTRY BASIS OR FOR A PATENT SERIES IN
TOTAL.
7.4
INFRINGEMENT CLAIMS BY THIRD PARTIES.
7.4.1
NOTICE.
IF THE MANUFACTURE, IMPORT, USE, OFFER TO
SELL OR SALE OF BULK DRUG SUBSTANCE, A COMPOUND AND/OR A DRUG PRODUCT RESULTS IN
A CLAIM OR REASONABLE APPREHENSION OF A CLAIM AGAINST A PARTY FOR PATENT
INFRINGEMENT OR FOR INDUCING OR CONTRIBUTING TO PATENT INFRINGEMENT
("INFRINGEMENT CLAIM"), THE PARTY FIRST HAVING NOTICE OF AN INFRINGEMENT CLAIM
SHALL PROMPTLY NOTIFY THE OTHER IN WRITING.
THE NOTICE SHALL SET FORTH THE
FACTS OF THE INFRINGEMENT CLAIM IN REASONABLE DETAIL.
THE PARTIES SHALL DISCUSS
HOW TO RESPOND TO SUCH INFRINGEMENT CLAIM.
7.4.2
THIRD-PARTY LICENSES.
IF PRACTICING THE VERTEX
TECHNOLOGY IN CONNECTION WITH THE IMPORT, USE, OFFER TO SELL OR SALE OF A
COMPOUND AND/OR A DRUG PRODUCT IN ANY COUNTRY IN THE TERRITORY WOULD REQUIRE A
LICENSE UNDER A THIRD PARTY'S PATENT, THEN VERTEX WILL USE REASONABLE EFFORTS TO
OBTAIN A LICENSE, WITH A RIGHT TO SUBLICENSE TO MITSUBISHI, UNDER THE THIRD
PARTY'S PATENT, UNDER TERMS REASONABLY ACCEPTABLE TO BOTH VERTEX AND
MITSUBISHI.
VERTEX SHALL GRANT A SUBLICENSE TO MITSUBISHI UNDER SUCH THIRD
PARTY'S PATENT, SUBJECT TO THE FINANCIAL OBLIGATION SET FORTH IN THIS
SECTION 7.4.2.
VERTEX AND MITSUBISHI WILL EQUALLY BEAR ANY FINANCIAL OBLIGATION
PAYABLE PURSUANT TO THE LICENSE OF A THIRD-PARTY PATENT IN THE TERRITORY;
PROVIDED, HOWEVER, THAT VERTEX SHALL NOT BE REQUIRED TO BEAR ANY FINANCIAL
OBLIGATION UNDER ANY LICENSE OF SUCH THIRD-PARTY PATENTS THAT TOGETHER WITH ANY
OTHER SUCH LICENSE AND WITH ANY FINANCIAL OBLIGATION PURSUANT TO ANY VOLUNTARY
FINAL DISPOSITION OF AN ACTION UNDER SECTION 7.4.3 WOULD EFFECTIVELY RESULT IN
AN AGGREGATE REDUCTION OF THE ROYALTIES ON