KNOW-HOW.
Article III
INTELLECTUAL PROPERTY PROTECTION AND RELATED MATTERS
SECTION 3.1
PROSECUTION AND MAINTENANCE OF
LICENSED PATENT RIGHTS.
(A)
RIGHT TO PROSECUTE AND MAINTAIN.
ACUSPHERE
SHALL HAVE THE FIRST RIGHT AND OPTION TO FILE AND PROSECUTE ANY PATENT
APPLICATIONS AND TO MAINTAIN ANY PATENTS INCLUDED IN THE LICENSED PATENT
RIGHTS.
ACUSPHERE SHALL , WITH RESPECT TO THOSE LICENSED PATENT RIGHTS THAT
CONSTITUTE PATENT APPLICATIONS, (I) PROVIDE ALL DRAFT PATENT APPLICATIONS TO
CEPHALON SUFFICIENTLY IN ADVANCE OF FILING FOR CEPHALON TO HAVE A REASONABLE
OPPORTUNITY TO COMMENT THEREON AND SHALL TAKE SUCH COMMENTS INTO CONSIDERATION
IN THE APPLICATION FILED; (II) PROMPTLY FURNISH CEPHALON WITH COPIES OF ALL
SUBSTANTIVE COMMUNICATIONS BETWEEN ACUSPHERE AND APPLICABLE PATENT OFFICES
RELATING TO SUCH PATENT APPLICATIONS, AND TAKE CEPHALON'S COMMENTS AND
SUGGESTIONS INTO CONSIDERATION WHEN FRAMING RESPONSES AND SUBMISSIONS TO SUCH
PATENT OFFICES; (III) KEEP CEPHALON ADVISED OF THE STATUS OF ACTUAL AND
PROSPECTIVE PATENT FILINGS INCLUDED IN THE LICENSED PATENT RIGHTS.
ACUSPHERE
SHALL GIVE CEPHALON THE OPPORTUNITY TO PROVIDE COMMENTS UPON AND MAKE REQUESTS
OF ACUSPHERE CONCERNING THE PREPARATION, FILING, PROSECUTION, PROTECTION AND
MAINTENANCE OF THOSE LICENSED PATENT RIGHTS CONSTITUTING PATENT APPLICATIONS,
AND SHALL CONSIDER SUCH COMMENTS AND REQUESTS IN GOOD FAITH; PROVIDED, HOWEVER,
THAT FINAL DECISION-MAKING AUTHORITY SHALL VEST IN ACUSPHERE.
IF ACUSPHERE
DECLINES THE OPTION TO FILE AND PROSECUTE ANY SUCH PATENT APPLICATIONS OR
MAINTAIN ANY SUCH PATENTS, IT SHALL GIVE CEPHALON REASONABLE NOTICE TO THIS
EFFECT, SUFFICIENTLY IN ADVANCE TO PERMIT CEPHALON TO UNDERTAKE SUCH FILING,
PROSECUTION AND/OR MAINTENANCE WITHOUT A LOSS OF RIGHTS.
THEREAFTER CEPHALON
MAY NOTIFY ACUSPHERE THAT IT WISHES TO ACQUIRE SUCH PATENT AND/OR PATENT
APPLICATIONS, IN WHICH CASE, ACUSPHERE SHALL, FOR NO ADDITIONAL CONSIDERATION,
ASSIGN ALL OF ITS RIGHTS, TITLE AND INTEREST IN AND TO SUCH PATENT AND/OR
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PATENT APPLICATION TO CEPHALON, AND CEPHALON MAY FILE AND PROSECUTE SUCH PATENT
APPLICATIONS AND/OR MAINTAIN SUCH PATENT IN ITS SOLE DISCRETION.
(B)
COSTS AND EXPENSES.
EACH PARTY SHALL BEAR
ITS OWN COSTS AND EXPENSES IN PREPARING, FILING, PROSECUTING AND MAINTAINING
LICENSED PATENT RIGHTS.
(C)
COOPERATION.
EACH PARTY AGREES TO
COOPERATE WITH THE OTHER WITH RESPECT TO THE FILING, PROSECUTION AND MAINTENANCE
OF PATENTS AND PATENT APPLICATIONS PURSUANT TO THIS SECTION 5.1, INCLUDING
WITHOUT LIMITATION:
(I)
THE EXECUTION OF ALL SUCH DOCUMENTS AND
INSTRUMENTS AND THE PERFORMANCE OF SUCH ACTS AS MAY BE REASONABLY NECESSARY IN
ORDER TO PERMIT THE OTHER PARTY TO FILE, PROSECUTE OR MAINTAIN PATENTS AND
PATENT APPLICATIONS AS PROVIDED FOR IN SECTION 4.1(A); AND
(II)
MAKING ITS EMPLOYEES, AGENTS AND
CONSULTANTS REASONABLY AVAILABLE TO THE OTHER PARTY (OR TO THE OTHER PARTY'S
AUTHORIZED ATTORNEYS, AGENTS OR REPRESENTATIVES), TO THE EXTENT REASONABLY
NECESSARY TO ENABLE THE PROSECUTING PARTY TO FILE, PROSECUTE OR MAINTAIN PATENTS
AND PATENT APPLICATIONS AS PROVIDED FOR IN SECTION 4.1(A).
SECTION 3.2
THIRD PARTY INFRINGEMENT.
(A)
NOTIFICATIONS OF COMPETITIVE INFRINGEMENT.
EACH PARTY AGREES TO NOTIFY THE OTHER PARTY WHEN IT BECOMES AWARE OF THE
REASONABLE PROBABILITY OF INFRINGEMENT OF THE LICENSED PATENT RIGHTS IN THE
FIELD ("COMPETITIVE INFRINGEMENT").
(B)
INFRINGEMENT ACTION.
WITHIN FORTY-FIVE (45)