TRADEMARKS SOLELY IN CONNECTION WITH
PRODUCTS DEVELOPED AND COMMERCIALIZED BY SCHERING PURSUANT TO THIS AGREEMENT.
TITLE TO AND OWNERSHIP OF THE VALENTIS TRADEMARKS SHALL REMAIN WITH VALENTIS.
SCHERING SHALL NOT TAKE ANY ACTION INCONSISTENT WITH VALENTIS' OWNERSHIP OF THE
VALENTIS TRADEMARKS, AND ANY BENEFITS ACCRUING FROM USE OF SUCH MARK SHALL
AUTOMATICALLY VEST IN VALENTIS.
SCHERING SHALL NOT CREATE ANY COMBINATION MARKS
WITH THE VALENTIS TRADEMARKS.
VALENTIS MAY TERMINATE THE FOREGOING LICENSE TO
USE THE VALENTIS TRADEMARKS IF, IN ITS REASONABLE DISCRETION, SCHERING'S USE OF
THE VALENTIS TRADEMARKS TARNISHES, BLURS OR DILUTES THE QUALITY ASSOCIATED WITH
THE VALENTIS TRADEMARKS OR THE ASSOCIATED GOODWILL AND SUCH USE IS NOT
DISCONTINUED WITHIN TEN (10) DAYS OF SCHERING' S RECEIPT OF NOTICE TO SUCH
EFFECT FROM VALENTIS.
16.3.6
INFRINGEMENT OF VALENTIS TRADEMARKS.
ONLY VALENTIS WILL BE
AUTHORISED TO INITIATE AT ITS OWN DISCRETION, LEGAL PROCEEDINGS AGAINST ANY
INFRINGEMENT OR THREATENED INFRINGEMENT OF A VALENTIS TRADEMARK.
29
17
REPRESENTATIONS, WARRANTIES AND COVENANTS
17.1
Representations and Warranties.
17.1.1
EACH OF THE PARTIES HEREBY REPRESENTS AND WARRANTS TO THE OTHER
PARTY THAT (I) IT IS A CORPORATION DULY ORGANIZED VALIDLY EXISTING UNDER THE
LAWS OF DELAWARE (IN THE CASE OF VALENTIS) OR UNDER THE LAWS OF GERMANY (IN THE
CASE OF SCHERING); AND (II) THE EXECUTION, DELIVERY AND PERFORMANCE OF THIS
AGREEMENT HAVE BEEN DULY AUTHORIZED BY ALL NECESSARY CORPORATE ACTION ON ITS
PART.
17.1.2
VALENTIS HEREBY REPRESENTS AND WARRANTS TO SCHERING AS FOLLOWS:
(1)
VALENTIS HAS NOT GRANTED, AND DURING THE TERM OF THE AGREEMENT
WILL NOT GRANT, ANY RIGHT TO ANY THIRD PARTY RELATING TO THE VALENTIS
INTELLECTUAL PROPERTY WHICH WOULD CONFLICT WITH THE RIGHTS GRANTED TO SCHERING
HEREUNDER.
(2)
AS OF THE EFFECTIVE DATE, THE INFORMATION PROVIDED BY VALENTIS TO
SCHERING IS FAIR, ACCURATE AND REPRESENTATIVE OF ALL THE INFORMATION IN ITS
POSSESSION CONCERNING EFFICACY, SIDE EFFECTS, INJURY, TOXICITY OR SENSITIVITY,
REACTION AND INCIDENTS OF SEVERITY THEREOF, ASSOCIATED WITH ANY CLINICAL USE,
STUDIES, INVESTIGATION OR TESTS WITH THE VALENTIS DELIVERY TECHNOLOGIES, WHETHER
OR NOT DETERMINED TO BE ATTRIBUTABLE TO THE VALENTIS DELIVERY TECHNOLOGIES.
(3)
AS OF THE EFFECTIVE DATE, EXCEPT AS IT MAY HAVE PREVIOUSLY
DISCLOSED TO SCHERING IN WRITING, VALENTIS HAS NOT RECEIVED ANY NOTICES OF
INFRINGEMENT OR ANY WRITTEN COMMUNICATIONS RELATING IN ANY WAY TO A POSSIBLE
INFRINGEMENT WITH RESPECT TO THE VALENTIS DELIVERY TECHNOLOGIES AND ANY
POTENTIAL PRODUCTS, AND THAT VALENTIS IS NOT AWARE THAT THE MANUFACTURE, USE OR
SALE OF THE PRODUCTS INFRINGE ANY VALID THIRD PARTY PATENT RIGHTS.
(4)
AS OF THE EFFECTIVE DATE, VALENTIS IS NOT AWARE OF ANY PRIOR ACT
OR ANY FACT WHICH CAUSES IT TO CONCLUDE THAT ANY VALENTIS PATENT IS INVALID OR
UNENFORCEABLE.
(5)
VALENTIS HAS COMPLIED IN ALL MATERIAL RESPECTS WITH THE TERMS OF
EACH THIRD PARTY LICENSE LISTED ON APPENDIX 2.2 HERETO RELATING TO THE PRODUCTS,
AND DURING THE TERM HEREOF WILL COMPLY IN ALL MATERIAL RESPECTS, AND USE ALL
REASONABLE EFFORTS TO KEEP IN FULL FORCE AND EFFECT EACH SUCH LICENSE FOR SUCH
TIME AS THE APPLICABLE SUBLICENSE TO