applicable to the ROW
Territory. Vanda, through Novartis, shall have the right to comment on
Sanofi-Aventis' preparation, filing, prosecution and maintenance of
Sanofi-Aventis-Patent applications and Sanofi-Aventis-Patents, to the extent
applicable to the ROW Territory, and Sanofi-Aventis shall give due consideration
to Vanda's comments, but Sanofi-Aventis shall make all decisions regarding the
same.
8.2 If Sanofi-Aventis elects not to seek patent protection in countries
listed in Appendix F or to maintain patent protection on Sanofi-Aventis-Patents
listed in Appendix A in any country in the ROW Territory to the extent that
Sanofi-Aventis-Patents claim the Compound or the Product (or formulations, use
or manufacture thereof), Vanda shall have the right, at its option and at
Sanofi-Aventis' expense, which expense must be approved in advance by
Sanofi-Aventis (approval which shall not be unreasonably withheld), to file,
prosecute (including oppositions) and maintain any such Sanofi-Aventis-Patent
applications and Sanofi-Aventis-Patents in Sanofi-Aventis' name, and any
Sanofi-Aventis-Patent issued therefrom shall be owned by Sanofi-Aventis.
Novartis shall advise Vanda of Sanofi-Aventis' decision not to seek or maintain
patent protection in a reasonably timely manner. In the event that a
Sanofi-Aventis-Patent is issued covering the Compound or Product in any country
in the ROW Territory under the conditions of this Section 8.2, Vanda shall pay
directly to Sanofi-Aventis a * percent (*%) royalty on Net Sales of Product in
such country, for a period of five (5) years from the date of such patent
issuance in such country, in recognition of Sanofi-Aventis' Know-How and
manufacturing rights and the right to make and sell the Compound or Product in
such country. Legal fees and expenses, as confirmed by Sanofi-Aventis, incurred
by Vanda shall be deducted from the royalty paid to Sanofi-Aventis.
8.3 Except for the biomarker Patent listed in Annex 1 to Appendix A with
respect to which Novartis shall be responsible for the filing, prosecution
(including oppositions) and maintenance, Vanda shall be responsible for the
filing, prosecution (including oppositions) and maintenance of the Patents in
the ROW Territory owned by Novartis and licensed under Section 2.1 (hereinafter
"Novartis-Patents") at Vanda's expense. Vanda agrees to file and prosecute and
maintain the Novartis-Patents in the ROW Territory, provided that the foregoing
is subject to Vanda's reasonable business judgment. Novartis shall have the
right to comment
*
Certain information has been omitted and filed separately with the
Commission.
Confidential treatment has been requested with respect to the
omitted portions.
Page 49
on Vanda's preparation, filing, prosecution and maintenance of Novartis-Patent
applications and Novartis-Patents, and Vanda shall give due consideration to
Novartis' comments. If Vanda elects not to maintain patent protection on
Novartis-Patents in any country, Novartis shall have the right, at its option,
to file, prosecute and maintain any such Novartis-Patent. Vanda shall have the
right but not the obligation to enforce Novartis-Patents in the ROW Territory
against Third Parties at its cost, and if Vanda does not act, Novartis may in
its sole discretion take such enforcement action as Novartis deems necessary.
8.4 Each of Sanofi-Aventis, Titan, Novartis and Vanda shall