EXCEPT AS PROVIDED IN SECTION 10.5.2 (A) AND (B), SYMYX SHALL HAVE THE
FIRST RIGHT, IN ITS DISCRETION AND AT ITS SOLE EXPENSE, TO PREPARE, FILE,
PROSECUTE AND MAINTAIN, IN CONSULTATION WITH TDCC, PATENT APPLICATIONS AND
PATENTS RELATING TO JOINT INVENTIONS WITHIN THE PROGRAM TECHNOLOGY THAT ARE
JOINTLY-OWNED BY TDCC AND SYMYX, AND TO CONDUCT ANY INTERFERENCES,
RE-EXAMINATIONS, REISSUES, OPPOSITIONS OR REQUESTS FOR PATENT TERM EXTENSION OR
GOVERNMENTAL EQUIVALENTS THERETO.
IN THE EVENT THAT SYMYX DOES NOT FILE,
PROSECUTE OR MAINTAIN, OR CONDUCT SUCH OTHER ACTIVITIES DESCRIBED ABOVE, WITH
RESPECT TO ANY SUCH PATENT OR PATENT APPLICATION, TDCC WILL HAVE THE RIGHT, IN
ITS DISCRETION, TO ASSUME SUCH ACTIVITIES AT ITS OWN EXPENSE.
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10.6
COOPERATION IN PATENT FILING.
DURING THE PROGRAM
TERM AND FOR * THEREAFTER, TDCC AND SYMYX SHALL USE REASONABLE EFFORTS TO KEEP
EACH OTHER INFORMED AS TO THE STATUS OF PATENT MATTERS DESCRIBED IN THIS
ARTICLE 10 (OTHER THAN SECTION 10.4), INCLUDING WITHOUT LIMITATION, BY PROVIDING
THE OTHER THE OPPORTUNITY TO REVIEW AND COMMENT ON PATENT APPLICATION DRAFTS
PROVIDING THE BASIS FOR PROGRAM PATENTS CLAIMING INVENTIONS MADE IN THE COURSE
OF THE RESEARCH PROGRAM A REASONABLE TIME IN ADVANCE OF APPLICABLE FILING DATES,
AND PROVIDING THE OTHER PARTY WITH COPIES OF ANY SUBSTANTIVE DOCUMENTS THAT SUCH
PARTY RECEIVES FROM APPLICABLE PATENT OFFICES REGARDING APPLICATIONS FOR ANY
PROGRAM PATENT, AND/OR APPLICATIONS CLAIMING ANY JOINT INVENTIONS, PROMPTLY
AFTER RECEIPT, INCLUDING NOTICE OF ALL OFFICIAL ACTIONS, INTERFERENCES,
REISSUES, RE-EXAMINATIONS, OPPOSITIONS, POTENTIAL LITIGATION, OR REQUESTS FOR
PATENT TERM EXTENSIONS.
TDCC AND SYMYX SHALL EACH REASONABLY COOPERATE WITH AND
ASSIST THE OTHER AT ITS OWN EXPENSE IN CONNECTION WITH SUCH ACTIVITIES, AT THE
OTHER PARTY'S REQUEST.
THE RELEVANT RESEARCH COMMITTEE, EITHER DIRECTLY OR
THROUGH A PATENT COMMITTEE DESIGNATED BY THE RESEARCH COMMITTEE, WILL
(I) FACILITATE COMMUNICATION BETWEEN THE PARTIES REGARDING PATENTS AND PATENT
APPLICATIONS ARISING FROM INVENTIONS MADE IN THE COURSE OF THE RESEARCH PROGRAM,
AND (II) DISCUSS AND PROVIDE ADVICE ON PATENT STRATEGY RELATED TO SUCH PATENT
APPLICATIONS.
IT IS UNDERSTOOD AND AGREED THAT PROVISIONAL PATENT APPLICATIONS
MAY BE FILED BY A PARTY WITHOUT REVIEW AND COMMENT IN ORDER TO OBTAIN THE
EARLIEST POSSIBLE FILING DATE, BUT EACH PARTY WILL USE COMMERCIALLY REASONABLE
EFFORTS TO SEEK REVIEW AND COMMENT FROM THE OTHER PARTY PRIOR TO FILING SUCH
PROVISIONAL PATENT APPLICATIONS.
10.7
ENFORCEMENT.
10.7.1
NOTICE.
EACH PARTY SHALL PROMPTLY NOTIFY THE OTHER
PARTY IN WRITING IF IT BECOMES AWARE OF ANY ACTUAL OR THREATENED COMMERCIALLY
MATERIAL INFRINGEMENT OF THE PROGRAM PATENTS BY A THIRD PARTY.
10.7.2
INSIDE THE FIELDS.
TDCC SHALL HAVE THE INITIAL RIGHT,
BUT NOT THE OBLIGATION, TO TAKE APPROPRIATE LEGAL ACTION TO ENFORCE ANY PROGRAM
PATENTS AGAINST ANY INFRINGEMENT WITHIN * BY ANY THIRD PARTY, AT ITS SOLE COST
AND EXPENSE.
IF, WITHIN * FOLLOWING RECEIPT OF NOTICE FROM SYMYX OF ANY SUCH
INFRINGEMENT OF A JOINTLY-OWNED, ISSUED PATENT, TDCC DOES NOT TAKE SUCH ACTION
TO HALT SUCH INFRINGEMENT OR NOTIFY SYMYX OF ACTION IT PROPOSES TO TAKE TO ABATE
PATENT INFRINGEMENT IN A COMMERCIALLY REASONABLE