TO JOINT PATENT RIGHTS THE ABOVE MECHANISMS SHALL APPLY
ACCORDINGLY; PROVIDED, HOWEVER, THAT SCHERING SHALL HAVE THE FIRST RIGHT (BUT
NOT THE OBLIGATION) TO BRING SUIT.
(C)
MONETARY AWARDS.
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, SHALL
APPLIED AS FOLLOWS:
(I)
FIRST, TO REIMBURSE THE PARTIES FOR
THEIR RESPECTIVE COSTS AND EXPENSES (INCLUDING REASONABLE ATTORNEYS' FEES AND
COSTS) INCURRED IN PROSECUTING SUCH ENFORCEMENT ACTION;
(II)
SECOND, TO SCHERING IN REIMBURSEMENT FOR
LOST SALES (NET OF ROYALTIES) ASSOCIATED WITH SCHERING LICENSED PRODUCTS AND TO
EPIX IN REIMBURSEMENT FOR LOST ROYALTIES OWING HEREUNDER BASED ON SUCH LOST
SALES;
18
(III)
THIRD, ANY AMOUNTS REMAINING SHALL BE
ALLOCATED AS FOLLOWS:
(A) IF EPIX IS THE PARTY BRINGING SUCH SUIT OR PROCEEDING
OR TAKING SUCH OTHER LEGAL ACTION, ONE HUNDRED PERCENT (100%) TO EPIX, (B) IF
SCHERING IS THE PARTY BRINGING SUCH SUIT OR PROCEEDING OR TAKING SUCH OTHER
LEGAL ACTION, ONE HUNDRED PERCENT (100%) TO SCHERING, AND (C) IF THE SUIT IS
BROUGHT JOINTLY, FIFTY PERCENT (50%) TO EACH PARTY.
8.3.2.
DECLARATORY ACTIONS.
IN THE EVENT THAT A DECLARATORY
JUDGMENT ACTION ALLEGING INVALIDITY OR NON-INFRINGEMENT IN THE FIELD OF ANY OF
THE EPIX PATENT RIGHTS, OR JOINT PATENT RIGHTS, IN THE TERRITORY SHALL BE
BROUGHT AGAINST EITHER PARTY, THE PARTY AGAINST WHICH SUCH ACTION IS BROUGHT
SHALL PROMPTLY NOTIFY THE OTHER PARTY IN WRITING.
THE PARTY AGAINST WHICH SUCH
ACTION IS BROUGHT WILL DEFEND SAID ACTION USING COUNSEL SELECTED BY IT AND IN
THE CASE OF AN ACTION AGAINST SCHERING, APPROVED BY EPIX, SUCH APPROVAL NOT TO
BE UNREASONABLY WITHHELD OR DELAYED.
SCHERING MAY NOT ENTER INTO ANY
SETTLEMENT, CONSENT JUDGMENT OR OTHER VOLUNTARY FINAL DISPOSITION OF THE ACTION
WITHOUT THE CONSENT OF EPIX, SUCH CONSENT NOT TO BE UNREASONABLY WITHHELD OR
DELAYED.
THE COSTS OF ANY DEFENSE UNDER THIS SECTION 8.3.2 WILL BE THE
RESPONSIBILITY OF THE DEFENDING PARTY.
8.3.3.
FILING, PROSECUTION, MAINTENANCE, ENFORCEMENT AND
DEFENSE OF SCHERING PATENT RIGHTS.
DURING THE TERM OF THIS AGREEMENT, SCHERING
SHALL BE SOLELY RESPONSIBLE, AT ITS OWN EXPENSE FOR THE FILING, PROSECUTION AND
MAINTENANCE OF THE SCHERING LICENSED PATENT RIGHTS, KEEPING EPIX REASONABLY
INFORMED THEREOF AND ENFORCEMENT AND DEFENSE OF THE SCHERING LICENSED PATENT
RIGHTS DURING THE PROOF OF CONCEPT PERIOD AND EPIX ROYALTY TERM SHALL BE
CONDUCTED IN ACCORDANCE WITH THIS SECTION 8.3.
(A)
ABANDONMENT; FAILURE TO PAY.
IF SCHERING
FAILS TO UNDERTAKE (I) ANY FILING OF ANY PATENT APPLICATION OR SUBMISSION, (II)
MAKING ANY PAYMENT, OR (III) ANY OTHER ACTION NECESSARY TO OBTAIN OR MAINTAIN A
PATENT UNDER THE SCHERING PATENT RIGHTS THEN FOLLOWING WRITTEN NOTICE OF SUCH
INTENTION, WHICH NOTICE SHALL BE PROVIDED BY SCHERING TO EPIX, IF AT ALL, NOT
LESS THAN NINETY (90) DAYS PRIOR TO THE LAST DATE FOR MAKING THE APPLICABLE
FILING, SUBMISSION OR PAYMENT TO PRESERVE RIGHTS UNDER SUCH PATENT OR PATENT
APPLICATION, EPIX MAY UNDERTAKE SUCH FILING, SUBMISSION OR PAYMENT, AT ITS OWN
EXPENSE, IN SCHERING'S