SEPRACOR
WILL NOTIFY GSK OF SUCH ELECTION WITH AT LEAST THIRTY (30) DAYS' PRIOR WRITTEN
NOTICE, IDENTIFYING THE SPECIFIC SEPRACOR PATENT(S) TO WHICH SUCH ELECTION
PERTAINS AND GSK WILL BE, AT ITS OWN EXPENSE AND DISCRETION, ENTITLED TO FILE,
PROSECUTE AND/OR MAINTAIN SUCH SEPRACOR PATENT(S) IN THE GSK TERRITORY IN THE
NAME OF SEPRACOR, GSK, OR BOTH GSK AND SEPRACOR, AS THE CASE MAY BE.
(B)
PATENT TERM EXTENSIONS. THE PARTIES WILL DISCUSS AND RECOMMEND FOR
WHICH, IF ANY, OF THE PATENTS WITHIN THE SEPRACOR PATENTS IN THE GSK TERRITORY
SHOULD SEEK PATENT TERM EXTENSIONS. SEPRACOR SHALL HAVE THE FINAL
DECISION-MAKING AUTHORITY WHETHER, AT ITS OWN EXPENSE, TO FILE ALL APPLICATIONS
AND TAKE ACTIONS NECESSARY TO OBTAIN PATENT TERM EXTENSIONS WITH RESPECT TO THE
PRODUCT PURSUANT TO STATUTES IN THE GSK TERRITORY, WHICH EXTENSIONS SHALL BE
OWNED BY SEPRACOR. IF SEPRACOR DECLINES TO PURSUE SUCH PATENT TERM EXTENSIONS IN
THE GSK TERRITORY, THEN GSK SHALL HAVE THE RIGHT AT ITS OWN EXPENSE ON BEHALF OF
SEPRACOR TO FILE ALL SUCH APPLICATIONS AND TAKE ALL SUCH ACTIONS NECESSARY TO
OBTAIN SUCH PATENT TERM EXTENSIONS WITH RESPECT TO THE PRODUCT. IN EACH CASE,
THE PARTIES SHALL PROVIDE REASONABLE COOPERATION TO THE OTHER PARTY WHICH IS
SEEKING TO OBTAIN SUCH EXTENSIONS AND ADDITIONAL PROTECTION. IN THE EVENT THAT
GSK HAS EXERCISED THE RIGHT TO FILE, PROSECUTE AND/OR MAINTAIN ANY SEPRACOR
PATENTS PURSUANT TO SECTION 12.2(A) ABOVE, THE DECISION AS TO WHETHER TO PURSUE
PATENT TERM EXTENSIONS ON SUCH SEPRACOR PATENTS SHALL BE AT GSK'S SOLE
DISCRETION.
12.3.
PATENT ENFORCEMENT. IN THE EVENT THAT SEPRACOR OR GSK
BECOMES AWARE OF (I) AN ACTUAL OR THREATENED INFRINGEMENT OR MISAPPROPRIATION OF
ANY SEPRACOR TECHNOLOGY IN THE GSK TERRITORY BY THE MANUFACTURE, SALE, OFFER FOR
SALE OR USE OF ANY PRODUCT ("INFRINGING PRODUCT"), OR (II) AN ACTUAL OR
THREATENED CHALLENGE TO ANY SEPRACOR PATENTS WITHIN THE GSK TERRITORY, THAT
PARTY SHALL PROMPTLY NOTIFY THE OTHER PARTY IN WRITING. SEPRACOR SHALL HAVE THE
FIRST RIGHT, BUT NOT THE OBLIGATION, TO INITIATE PROCEEDINGS OR TAKE OTHER
APPROPRIATE ACTION, AT ITS OWN
CONFIDENTIAL
EXPENSE, AGAINST ANY THIRD PARTY TAKING OR THREATENING TO TAKE SUCH ACTION. IF
SEPRACOR DOES NOT INITIATE PROCEEDINGS OR TAKE OTHER APPROPRIATE ACTION WITHIN
[**] OF A REQUEST BY GSK TO INITIATE AN ENFORCEMENT PROCEEDING OR DEFENSE TO A
CHALLENGE TO THE SEPRACOR PATENTS THEN GSK SHALL BE ENTITLED, WITHOUT
OBLIGATION, TO INITIATE INFRINGEMENT PROCEEDINGS OR TAKE OTHER APPROPRIATE
ACTION AGAINST AN INFRINGING PRODUCT OR SEPRACOR PATENT CHALLENGE AT ITS OWN
EXPENSE AND TO INCLUDE SEPRACOR AS A NOMINAL PARTY PLAINTIFF. THE PARTY
CONDUCTING SUCH ACTION SHALL HAVE FULL CONTROL OVER ITS CONDUCT, INCLUDING
SETTLEMENT THEREOF; PROVIDED, HOWEVER, THAT THE PARTY CONDUCTING SUCH ACTION MAY
NOT SETTLE ANY SUCH ACTION, OR MAKE ANY ADMISSIONS OR ASSERT ANY POSITION IN
SUCH ACTION, IN A MANNER THAT WOULD MATERIALLY ADVERSELY AFFECT THE RIGHTS OR
INTERESTS OF THE OTHER PARTY WHETHER WITHIN OR OUTSIDE THE JURISDICTION IN WHICH
THE ACTION IS BROUGHT, WITHOUT THE PRIOR WRITTEN CONSENT OF THE