REQUEST FROM EPIX TO TAKE ACTION WITH RESPECT TO SUCH
INFRINGEMENT, THEN EPIX SHALL HAVE THE RIGHT (BUT NOT THE OBLIGATION), AT ITS
OWN EXPENSE, TO BRING SUIT (OR TAKE OTHER APPROPRIATE LEGAL ACTION) AGAINST SUCH
ACTUAL, ALLEGED OR THREATENED INFRINGEMENT, WITH LEGAL COUNSEL OF ITS OWN
CHOICE, BUT SHALL NOT BE PERMITTED TO SETTLE ANY SUCH SUIT WITHOUT THE PRIOR
CONSENT OF SCHERING, WHICH CONSENT SHALL NOT BE UNREASONABLY WITHHELD.
ANY
DAMAGES, MONETARY AWARDS OR OTHER AMOUNTS RECOVERED, WHETHER BY JUDGMENT OR
SETTLEMENT, PURSUANT TO ANY SUIT, PROCEEDING OR OTHER LEGAL ACTION TAKEN UNDER
THIS SECTION 9.5, SHALL APPLIED AS FOLLOWS:
(a)
First, to reimburse the Parties for their
respective costs and expenses (including reasonable attorneys' fees and costs)
incurred in prosecuting such enforcement action;
(b)
Second, to licensing Party in reimbursement
for lost sales (net of royalties) associated with Licensed Products and to the
licensor Party in reimbursement for lost royalties owing hereunder based on such
lost sales;
(c)
Third, any amounts remaining shall be
allocated as follows: (a) if SCHERING is the Party bringing such suit or
proceeding or taking such other legal action, one hundred percent (100%) to
SCHERING, (b) if EPIX is the Party bringing such suit or proceeding
26
or taking such other legal action, one hundred percent (100%) to EPIX, and (c)
if the suit is brought jointly, fifty percent (50%) to each Party.
9.5.4
NOTICE OF INFRINGEMENT.
IF EITHER PARTY LEARNS OF
ANY ACTUAL, ALLEGED OR THREATENED INFRINGEMENT BY A THIRD PARTY OF ANY PATENT
RIGHTS RELATED TO THE RESEARCH PROGRAM OR ANY LICENSE GRANTED UNDER THIS
AGREEMENT(THAT IS EPIX PATENT RIGHTS, SCHERING PATENT RIGHTS AND JOINT PATENT
RIGHTS), SUCH PARTY SHALL PROMPTLY NOTIFY THE OTHER PARTY AND SHALL PROVIDE SUCH
OTHER PARTY WITH AVAILABLE EVIDENCE OF SUCH INFRINGEMENT.
9.5.5
INFRINGEMENT OF KNOW-HOW.
SECTION 9.5 AND THE
PRINCIPLES AND MECHANISMS SET FORTH THEREIN SHALL APPLY ACCORDINGLY TO ANY
INFRINGEMENT OF UNPATENTED KNOW-HOW RELATED TO THE RESEARCH PROGRAM OR ANY
LICENSE GRANTED UNDER THIS AGREEMENT (THAT IS EPIX KNOW-HOW, SCHERING KNOW-HOW
AND JOINT KNOW-HOW.
9.6
COOPERATION.
IF A PARTY BRINGS ANY SUCH
ACTION OR PROCEEDING HEREUNDER, THE OTHER PARTY AGREES TO BE JOINED AS PARTY
PLAINTIFF IF NECESSARY TO PROSECUTE SUCH ACTION OR PROCEEDING, AND TO GIVE THE
PARTY BRINGING SUCH ACTION OR PROCEEDING REASONABLE ASSISTANCE AND AUTHORITY TO
FILE AND PROSECUTE THE SUIT; PROVIDED, HOWEVER, THAT NEITHER PARTY SHALL BE
REQUIRED TO TRANSFER ANY RIGHT, TITLE OR INTEREST IN OR TO ANY PROPERTY TO THE
OTHER PARTY OR ANY THIRD PARTY TO CONFER STANDING ON A PARTY HEREUNDER.
9.7
PATENT MANAGEMENT.
THE PARTIES AGREE TO
EXERCISE THEIR RESPECTIVE RIGHTS TO MANAGE THE FILING, PROSECUTION AND
MAINTENANCE OF PATENT RIGHTS UNDER THIS AGREEMENT IN A MANNER, INSOFAR AS
REASONABLY POSSIBLE, THAT MAXIMIZES THE VALUE OF SUCH PATENT RIGHTS WITHIN THE
FIELD.
10.
CONFIDENTIALITY
10.1
NONDISCLOSURE OBLIGATIONS.
10.1.1
GENERAL.
EXCEPT AS PROVIDED IN THIS ARTICLE 10, DURING
THE TERM AND FOR A PERIOD OF FIFTEEN (15) YEARS THEREAFTER, BOTH PARTIES SHALL
MAINTAIN IN