FILING, PROSECUTION AND MAINTENANCE OF A DISCONTINUED PATENT THAT
IS AN ICAM-SPECIFIC PATENT IS LIMITED SOLELY TO THE EXTENT SUCH PATENT CLAIMS
ICAM-1.
9.1.5
COOPERATION.
EACH PARTY WILL COOPERATE REASONABLY IN THE
PREPARATION, FILING, PROSECUTION, AND MAINTENANCE OF THE ALICAFORSEN PATENTS AND
THE ICAM-1 SPECIFIC PATENTS (IF APPLICABLE), AND THE OTHER PARTY'S PATENTS WHICH
COVER AN ALICAFORSEN PRODUCT. SUCH COOPERATION INCLUDES (A) PROMPTLY EXECUTING
ALL PAPERS AND INSTRUMENTS AND REQUIRING EMPLOYEES TO EXECUTE SUCH PAPERS AND
INSTRUMENTS AS REASONABLE AND APPROPRIATE SO AS TO ENABLE SUCH OTHER PARTY, TO
FILE, PROSECUTE, AND MAINTAIN ITS PATENTS IN ANY COUNTRY; AND (B) PROMPTLY
INFORMING SUCH OTHER PARTY OF MATTERS THAT MAY AFFECT THE PREPARATION, FILING,
PROSECUTION, OR MAINTENANCE OF ANY SUCH PATENTS.
9.1.6
PATENT TERM EXTENSIONS.
THE PARTIES AGREE TO COOPERATE IN AN EFFORT
TO AVOID LOSS OF ANY OF THE PATENTS FORMING PART OF ALICAFORSEN PATENTS OR
ICAM-1 SPECIFIC PATENTS INCLUDING BY EXECUTING ANY DOCUMENTS AS MAY BE
REASONABLY REQUIRED.
IN PARTICULAR, THE PARTIES SHALL COOPERATE WITH EACH OTHER
IN OBTAINING PATENT TERM EXTENSION OR RESTORATION OR SUPPLEMENTAL PROTECTION
CERTIFICATE ("PATENT TERM EXTENSIONS") OR THEIR EQUIVALENTS IN ANY COUNTRY AND
REGION WHERE APPLICABLE.
IN PARTICULAR BUT WITHOUT LIMITING THE FOREGOING ISIS
SHALL PROVIDE REASONABLE ASSISTANCE TO ATLANTIC, INCLUDING BY EXECUTING ANY
REQUIRED DOCUMENTS AND PROVIDING ANY RELEVANT PATENT INFORMATION TO ATLANTIC, SO
THAT ATLANTIC, AS REGULATORY APPROVAL APPLICANT, MAY DEAL WITH THE APPLICABLE
REGULATORY AUTHORITY IN CONNECTION WITH OBTAINING SUCH PATENT TERM EXTENSION.
SECTION 9.2
ENFORCEMENT OF PATENTS
9.2.1
RIGHTS AND PROCEDURES.
IF ISIS OR ATLANTIC DETERMINES THAT ANY
PATENT LICENSED HEREUNDER IS BEING INFRINGED BY A THIRD PARTY'S ACTIVITIES AND
THAT SUCH INFRINGEMENT COULD AFFECT THE EXERCISE BY THE PARTIES OF THEIR
RESPECTIVE RIGHTS AND OBLIGATIONS UNDER THIS AGREEMENT, IT WILL PROMPTLY NOTIFY
THE OTHER PARTY IN WRITING.
EXCEPT FOR THE ALICAFORSEN PATENTS AND THE ICAM-1
SPECIFIC PATENTS WHICH ARE DISCUSSED BELOW, THE PARTY CONTROLLING THE
PATENT(S) WHICH ARE ALLEGEDLY BEING INFRINGED WILL HAVE THE SOLE RIGHT AND
OBLIGATION TO REMOVE SUCH INFRINGEMENT.
(A)
ALICAFORSEN PATENTS AND ICAM-1 SPECIFIC PATENTS.
WITH RESPECT TO
THE ALICAFORSEN PATENTS AND THE ICAM-1 SPECIFIC PATENTS (IF APPLICABLE AND
SOLELY TO THE EXTENT INFRINGED BY A THIRD PARTY WITH A PRODUCT TARGETING
ICAM-1), ATLANTIC WILL HAVE THE FIRST RIGHT, BUT NOT THE OBLIGATION, AT
ATLANTIC'S EXPENSE, TO REMOVE SUCH INFRINGEMENT. IN THE EVENT THAT ATLANTIC
FAILS TO TAKE COMMERCIALLY APPROPRIATE STEPS TO REMOVE ANY SUCH INFRINGEMENT
WITHIN 90 DAYS FOLLOWING NOTICE OF SUCH INFRINGEMENT, OR EARLIER NOTIFIES ISIS
IN WRITING OF ITS INTENT NOT TO TAKE SUCH STEPS, AND SUCH INFRINGEMENT IS LIKELY
TO HAVE A MATERIAL ADVERSE EFFECT ON
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THE ALICAFORSEN PRODUCT, SO LONG AS THE INFRINGEMENT IS NOT TAKING PLACE IN A
MAJOR MARKET AND SO LONG AS ATLANTIC DOES NOT INFORM ISIS THAT ATLANTIC
CONSIDERS, IN GOOD FAITH, THAT TO TAKE SUCH PROCEEDS WOULD (X) BE PREJUDICIAL TO
ITS LITIGATION STRATEGY IN A MAJOR MARKET AND (Y) BE COMMERCIALLY UNREASONABLE
UNDER THE CIRCUMSTANCES, (I) ISIS WILL HAVE THE RIGHT TO