UNREASONABLY WITHHELD, DELAYED, OR CONDITIONED.
EXCEPT AS SET FORTH IN THIS SECTION 7.4(B), BELOW, THE PARTIES SHALL SHARE
EQUALLY THE COSTS OF THE PREPARATION, FILING, PROSECUTION, AND MAINTENANCE OF
ALL JOINT PATENT RIGHTS, PURSUANT TO A MUTUALLY AGREED PLAN FOR SUCH ACTIVITIES
AND A BUDGET THEREFOR (WHICH PLAN SHALL INCLUDE, WITHOUT LIMITATION, A LISTING
OF COUNTRIES IN WHICH SUCH JOINT PATENT RIGHTS WILL BE FILED, PROSECUTED, AND
MAINTAINED).
EACH PARTY'S ONE HALF UNDIVIDED INTEREST IN AND TO ALL JOINT
PATENT RIGHTS SHALL BE INCLUDED IN THE DEPOMED PATENTS AND THE SOLVAY PATENTS,
AS APPLICABLE.
IF DEPOMED DOES NOT WISH TO FILE, PROSECUTE, OR
26
Confidential Information, indicated by [***] has been omitted from this filing
and filed separately with the Securities Exchange Commission
MAINTAIN ANY JOINT PATENT RIGHTS OR MAINTAIN OR DEFEND SUCH A PATENT IN A
PARTICULAR COUNTRY, DEPOMED HEREBY GRANTS SOLVAY ANY NECESSARY AUTHORITY TO
FILE, PROSECUTE, AND MAINTAIN SUCH JOINT PATENT RIGHTS OR MAINTAIN OR DEFEND
SUCH JOINT PATENT RIGHTS IN THE NAME OF BOTH PARTIES IF SOLVAY SO REQUESTS.
IF
EITHER PARTY ELECTS NOT TO PAY ITS PORTION OF ANY SHARED COSTS FOR JOINT PATENT
RIGHTS, IT SHALL SO NOTIFY THE OTHER PARTY, IN WHICH CASE THE OTHER PARTY MAY
PROCEED WITH RESPECT TO SUCH JOINT PATENT RIGHTS IN ITS OWN NAME AND AT ITS SOLE
EXPENSE.
IN SUCH CASES, THE PARTY ELECTING NOT TO PAY ITS SHARE OF COSTS SHALL
ASSIGN ITS ENTIRE RIGHT, TITLE, AND INTEREST IN AND TO SUCH JOINT PATENT RIGHTS
TO THE OTHER PARTY, AND SUCH INVENTION SHALL BECOME AN INVENTION SOLELY OWNED BY
THE OTHER PARTY.
7.5
ENFORCEMENT.
(A)
DESIGNATED PATENT RIGHTS.
"DESIGNATED
PATENT RIGHTS" SHALL MEAN (I) THE SOLVAY PATENTS, AND (II) THE DEPOMED PATENTS,
IN EACH CASE CLAIMING INVENTIONS THAT, IN THE ABSENCE OF OWNERSHIP THEREOF OR AN
APPROPRIATE LICENSE THERETO, WOULD BE INFRINGED BY THE MANUFACTURE (INCLUDING
WITHOUT LIMITATION THROUGH USE OF FORMULATION TECHNOLOGY IN SUCH MANUFACTURE),
USE, IMPORT, OFFER FOR SALE OR SALE OF A PRODUCT IN THE FIELD.
(B)
NOTICE.
EACH PARTY SHALL NOTIFY THE OTHER
PARTY IN WRITING OF ANY ALLEGED OR THREATENED INFRINGEMENT OF THE DESIGNATED
PATENT RIGHTS AND/OR JOINT PATENT RIGHTS OF WHICH IT BECOMES AWARE WITHIN THIRTY
(30) DAYS OF THE DATE SUCH PARTY BECOMES AWARE OF SUCH INFRINGEMENT (OR, IN THE
CASE OF AN ACTION UNDER THE DRUG PRICE COMPETITION AND PATENT TERM RESTORATION
ACT OF 1984 (THE "HATCH-WAXMAN ACT"), FIVE (5) DAYS).
THE NOTICE SHALL SET
FORTH THE FACTS OF SUCH INFRINGEMENT IN REASONABLE DETAIL.
(C)
INFRINGEMENT OF DESIGNATED PATENT RIGHTS
RELATING TO FORMULATION TECHNOLOGY AND/OR PRODUCT.
IF A THIRD PARTY IS
INFRINGING, OR EITHER PARTY REASONABLY BELIEVES A THIRD PARTY MAY BE INFRINGING,
ANY DESIGNATED PATENT RIGHT BY REASON OF THE MANUFACTURE, USE OR SALE OF THE
FORMULATION TECHNOLOGY AND/OR THE PRODUCT BY SUCH THIRD PARTY, DEPOMED SHALL
HAVE THE FIRST RIGHT, BUT NOT THE OBLIGATION, TO INSTITUTE, PROSECUTE, AND
CONTROL ANY ACTION OR PROCEEDING WITH RESPECT TO SUCH INFRINGEMENT BY COUNSEL OF
ITS OWN SELECTION, AT