PARTY,
MAY FILE OR CAUSE TO BE FILED SUCH PATENT APPLICATION.
(II)
IN THE EVENT THAT THE MEMBER PARTIES MUTUALLY AGREE IN WRITING
PURSUANT TO SECTION 11.2(C)(I) THAT A PATENT APPLICATION FOR A JOINT PATENT
CLAIMING A JOINT INVENTION SHOULD BE FILED, GILEAD SHALL HAVE THE SOLE RIGHT AND
OBLIGATION TO PREPARE, FILE, PROSECUTE AND MAINTAIN THE JOINT PATENTS IN THE
NAME OF THE JV IN SUCH COUNTRIES AS THE MEMBER PARTIES SHALL DETERMINE, AND THE
EXTERNAL, OUT-OF-POCKET COSTS, WITHOUT ANY MARKUP, WITH RESPECT THERETO SHALL BE
TREATED AS AUTHORIZED OTHER EXPENSES.
BMS SHALL COOPERATE FULLY IN GILEAD'S
PREPARATION, FILING, PROSECUTION, AND MAINTENANCE OF THE JOINT PATENTS (AND IN
ANY OTHER PROCEEDINGS BEFORE A PATENT OFFICIAL OR OFFICE WITH RESPECT THERETO).
SUCH COOPERATION SHALL INCLUDE, WITHOUT LIMITATION, (A) PROMPTLY EXECUTING ALL
PAPERS AND INSTRUMENTS OR REQUIRING EMPLOYEES TO EXECUTE SUCH PAPERS AND
INSTRUMENTS AS REASONABLE AND APPROPRIATE SO AS TO ENABLE GILEAD TO PREPARE,
FILE, PROSECUTE, AND MAINTAIN THE JOINT PATENTS IN ANY COUNTRY; AND (B) PROMPTLY
INFORMING GILEAD OF MATTERS THAT MAY AFFECT THE PREPARATION, FILING,
PROSECUTION, OR MAINTENANCE OF ANY SUCH JOINT PATENT, INCLUDING, WITHOUT
LIMITATION, PROVIDING A COPY OF ANY OFFICIAL CORRESPONDENCE RECEIVED BY BMS FROM
A PATENT OFFICE IN ANY COUNTRY WITH RESPECT TO JOINT PATENTS.
GILEAD SHALL KEEP
BMS ADVISED OF THE STATUS OF JOINT PATENT FILINGS AND UPON REQUEST OF BMS SHALL
PROVIDE COPIES OF ANY OFFICIAL CORRESPONDENCE OR OTHER DOCUMENTATION WITH
RESPECT TO OFFICIAL ACTIONS AND SUBMISSIONS RELATING TO THE PROSECUTION OR
MAINTENANCE OF SUCH JOINT PATENTS.
(III)
THE MEMBER PARTIES SHALL HAVE THE SOLE DISCRETION TO DETERMINE
(BY MUTUAL AGREEMENT) WHICH JOINT PATENTS, IF ANY, SHALL BE LISTED IN THE
"ORANGE BOOK" WITH RESPECT TO THE COMBINATION PRODUCT.
70
11.3
ENFORCEMENT OF PATENTS.
(A)
GILEAD PATENTS.
AS AMONG THE PARTIES, GILEAD SHALL HAVE THE SOLE
RIGHT AND OPTION, AT ITS SOLE COST AND EXPENSE, TO RESPOND TO ANY INFRINGEMENT
(AS DEFINED BELOW) WITH RESPECT TO ANY GILEAD PATENT BY APPROPRIATE STEPS,
INCLUDING, WITHOUT LIMITATION, BY FILING AN INFRINGEMENT SUIT OR TAKING OTHER
SIMILAR ACTION. GILEAD SHALL ALSO HAVE THE SOLE RIGHT AND OPTION NOT TO TAKE
ACTION TO RESPOND TO ANY SUCH INFRINGEMENT (AND IN SUCH EVENT NO OTHER PARTY
SHALL HAVE THE RIGHT TO TAKE ANY ACTION TO RESPOND TO ANY INFRINGEMENT WITH
RESPECT TO SUCH GILEAD PATENT).
AT GILEAD'S REQUEST, EACH OF BMS AND THE JV
SHALL, AT SUCH PARTY'S OWN EXPENSE, PROVIDE REASONABLE ASSISTANCE TO GILEAD IN
CONNECTION WITH ANY SUCH ACTION TO RESPOND TO INFRINGEMENT, INCLUDING, WITHOUT
LIMITATION, PROVIDING ACCESS TO RELEVANT DOCUMENTS AND OTHER EVIDENCE, MAKING
ITS EMPLOYEES AVAILABLE AT REASONABLE BUSINESS HOURS, AND JOINING (AND HAVING
THE JV JOIN) THE ACTION TO THE EXTENT NECESSARY TO ALLOW GILEAD TO MAINTAIN THE
ACTION.
FOR PURPOSES OF THIS SECTION 11.3, (I) "INFRINGEMENT" SHALL MEAN
INFRINGEMENT OR POTENTIAL INFRINGEMENT OF ONE (1) OR MORE GILEAD PATENTS AND/OR
ONE (1) OR MORE BMS PATENTS, AS THE CASE MAY BE, BY THE ACTIONS OF A THIRD PARTY
IN CONNECTION WITH