FILING, PROSECUTION AND MAINTENANCE OF THE VERTEX PATENTS
WORLDWIDE AND OF THE JOINT PATENTS IN THE VERTEX TERRITORY.
MITSUBISHI SHALL BE
RESPONSIBLE FOR PAYING ITS COSTS INCURRED FOR PREPARATION, FILING, PROSECUTION
AND MAINTENANCE OF THE MITSUBISHI PATENTS WORLDWIDE AND OF THE JOINT PATENTS IN
THE TERRITORY.
EITHER PARTY MAY AT ANY TIME ELECT, BY WRITTEN NOTICE TO THE
OTHER PARTY, TO DISCONTINUE SUPPORT FOR ONE OR MORE JOINT PATENTS (A
"DISCONTINUED PATENT") AND SHALL NOT BE RESPONSIBLE FOR ANY COSTS RELATING TO A
DISCONTINUED PATENT WHICH ARE INCURRED MORE THAN SIXTY (60) DAYS AFTER RECEIPT
OF THAT NOTICE BY THE OTHER PARTY.
IN SUCH CASE, THE OTHER PARTY MAY ELECT AT
ITS SOLE DISCRETION TO CONTINUE PREPARATION, FILING, PROSECUTION OR MAINTENANCE
OF THE DISCONTINUED PATENT AT ITS SOLE EXPENSE.
THE PARTY SO CONTINUING SHALL
OWN ANY SUCH DISCONTINUED PATENT, AND THE PARTY ELECTING TO DISCONTINUE SUPPORT
SHALL EXECUTE SUCH DOCUMENTS OF TRANSFER OR ASSIGNMENT AND PERFORM SUCH ACTS AS
MAY BE REASONABLY NECESSARY TO TRANSFER SOLE OWNERSHIP OF THE DISCONTINUED
PATENT TO THE OTHER PARTY AND ENABLE THAT PARTY TO FILE OR TO CONTINUE
PROSECUTION OR MAINTENANCE OF THE
[***]
INFORMATION REDACTED PURSUANT TO A CONFIDENTIAL
TREATMENT REQUEST.
AN UNREDACTED VERSION OF THIS EXHIBIT HAS BEEN FILED
SEPARATELY WITH THE COMMISSION.
31
DISCONTINUED PATENT, IF THE OTHER PARTY ELECTS TO DO SO.
DISCONTINUATION MAY BE
ON A COUNTRY-BY-COUNTRY BASIS OR FOR A PATENT SERIES IN TOTAL.
7.4
INFRINGEMENT CLAIMS BY THIRD PARTIES.
7.4.1
NOTICE.
IF THE MANUFACTURE, IMPORT, USE, OFFER TO SELL OR SALE OF
BULK DRUG SUBSTANCE, A COMPOUND AND/OR A DRUG PRODUCT RESULTS IN A CLAIM OR
REASONABLE APPREHENSION OF A CLAIM AGAINST A PARTY FOR PATENT INFRINGEMENT OR
FOR INDUCING OR CONTRIBUTING TO PATENT INFRINGEMENT ("INFRINGEMENT CLAIM"), THE
PARTY FIRST HAVING NOTICE OF AN INFRINGEMENT CLAIM SHALL PROMPTLY NOTIFY THE
OTHER IN WRITING.
THE NOTICE SHALL SET FORTH THE FACTS OF THE INFRINGEMENT
CLAIM IN REASONABLE DETAIL.
THE PARTIES SHALL DISCUSS HOW TO RESPOND TO SUCH
INFRINGEMENT CLAIM.
7.4.2
THIRD-PARTY LICENSES.
IF PRACTICING THE VERTEX TECHNOLOGY IN
CONNECTION WITH THE IMPORT, USE, OFFER TO SELL OR SALE OF A COMPOUND AND/OR A
DRUG PRODUCT IN ANY COUNTRY IN THE TERRITORY WOULD REQUIRE A LICENSE UNDER A
THIRD PARTY'S PATENT, THEN VERTEX WILL USE REASONABLE EFFORTS TO OBTAIN A
LICENSE, WITH A RIGHT TO SUBLICENSE TO MITSUBISHI, UNDER THE THIRD PARTY'S
PATENT, UNDER TERMS REASONABLY ACCEPTABLE TO BOTH VERTEX AND MITSUBISHI.
VERTEX
SHALL GRANT A SUBLICENSE TO MITSUBISHI UNDER SUCH THIRD PARTY'S PATENT, SUBJECT
TO THE FINANCIAL OBLIGATION SET FORTH IN THIS SECTION 7.4.2.
VERTEX AND
MITSUBISHI WILL EQUALLY BEAR ANY FINANCIAL OBLIGATION PAYABLE PURSUANT TO THE
LICENSE OF A THIRD-PARTY PATENT IN THE TERRITORY; PROVIDED, HOWEVER, THAT VERTEX
SHALL NOT BE REQUIRED TO BEAR ANY FINANCIAL OBLIGATION UNDER ANY LICENSE OF SUCH
THIRD-PARTY PATENTS THAT TOGETHER WITH ANY OTHER SUCH LICENSE AND WITH ANY
FINANCIAL OBLIGATION PURSUANT TO ANY VOLUNTARY FINAL DISPOSITION OF AN ACTION
UNDER SECTION 7.4.3 WOULD EFFECTIVELY RESULT IN AN AGGREGATE REDUCTION