PATENT
APPLICATIONS AND PATENTS CONSTITUTING PATENT RIGHTS CLAIMING SANOFI-AVENTIS
IMPROVEMENTS.
SANOFI-AVENTIS (I) WILL PROVIDE IMMUNOGEN WITH A COPY OF ANY SUCH
PROPOSED PATENT APPLICATION FOR REVIEW AND COMMENT REASONABLY IN ADVANCE OF
FILING, AND (II) WILL KEEP IMMUNOGEN REASONABLY INFORMED OF THE STATUS OF SUCH
FILING, PROSECUTION AND MAINTENANCE, INCLUDING, WITHOUT LIMITATION, (A) BY
PROVIDING IMMUNOGEN WITH COPIES OF ALL COMMUNICATIONS RECEIVED FROM OR FILED IN
PATENT OFFICE(S) WITH RESPECT TO SUCH FILING, AND (B) BY PROVIDING IMMUNOGEN A
REASONABLE TIME PRIOR TO TAKING OR FAILING TO TAKE ANY ACTION THAT WOULD AFFECT
THE SCOPE OR VALIDITY OF ANY SUCH FILING (INCLUDING THE SUBSTANTIALLY NARROWING,
CANCELLATION OR ABANDONMENT OF ANY CLAIM(S) WITHOUT RETAINING THE RIGHT TO
PURSUE SUCH SUBJECT MATTER IN A SEPARATE APPLICATION, OR THE FAILURE TO FILE OR
PERFECT THE FILING OF ANY CLAIM(S) IN ANY COUNTRY), WITH PRIOR WRITTEN NOTICE OF
SUCH PROPOSED ACTION OR INACTION SO THAT IMMUNOGEN HAS A REASONABLE OPPORTUNITY
TO REVIEW AND COMMENT.
IF SANOFI-AVENTIS FAILS TO UNDERTAKE THE FILING(S) OF
ANY SUCH PATENT APPLICATION WITH RESPECT TO ANY SUCH INVENTION WITHIN [***]
([***]) DAYS AFTER RECEIPT OF WRITTEN NOTICE FROM IMMUNOGEN THAT IMMUNOGEN
BELIEVES FILING(S) OF SUCH AN APPLICATION BY SANOFI-AVENTIS IS APPROPRIATE,
IMMUNOGEN MAY UNDERTAKE SUCH FILING(S) AT ITS OWN EXPENSE, IN WHICH CASE
SANOFI-AVENTIS WILL ASSIGN ALL OF ITS RIGHTS TO SUCH IMPROVEMENTS TO IMMUNOGEN
AND ANY SUBSEQUENTLY ISSUED PATENT THEREON WILL BE OWNED SOLELY BY IMMUNOGEN.
6.2.3
COOPERATION.
EACH PARTY AGREES TO COOPERATE REASONABLY WITH THE
OTHER PARTY IN THE PREPARATION, FILING, AND PROSECUTION OF ANY PATENT
APPLICATIONS PURSUANT TO THIS SECTION 6.2.
SUCH COOPERATION INCLUDES, BUT IS
NOT LIMITED TO, EXECUTING ALL PAPERS AND INSTRUMENTS, OR REQUIRING ITS EMPLOYEES
OR AGENTS TO EXECUTE SUCH PAPERS AND INSTRUMENTS, SO AS TO EFFECTUATE THE
OWNERSHIP OF SUCH PATENT APPLICATIONS AND ANY PATENTS THEREON AND TO ENABLE THE
FILING AND PROSECUTION OF APPLICATIONS IN ANY COUNTRY.
6.3
INFRINGEMENT.
6.3.1
SANOFI-AVENTIS IMPROVEMENTS.
SANOFI-AVENTIS SHALL HAVE ALL RIGHTS,
AT ITS OWN EXPENSE, TO BRING SUIT (OR OTHER APPROPRIATE LEGAL ACTION) AGAINST
ANY ACTUAL OR SUSPECTED INFRINGEMENT OF PATENT RIGHTS CLAIMING SANOFI-AVENTIS
IMPROVEMENTS.
6.3.2
IMMUNOGEN TECHNOLOGY.
IMMUNOGEN SHALL HAVE ALL RIGHTS, AT ITS OWN
EXPENSE, TO BRING SUIT (OR OTHER APPROPRIATE LEGAL ACTION) AGAINST ANY ACTUAL OR
SUSPECTED INFRINGEMENT OF THE LICENSED PATENT RIGHTS.
6.4
COOPERATION.
EACH PARTY SHALL GIVE NOTICE TO THE OTHER PARTY OF
ANY POTENTIAL INFRINGEMENT OR ACTUAL INFRINGEMENT BY A THIRD PARTY OF ANY
PATENTS RIGHTS COVERING LICENSED TECHNOLOGY AND SHALL EXECUTE ALL PAPERS AND
PERFORM SUCH OTHER ACTS (OTHER THAN MONETARY) AS MAY BE REASONABLY REQUIRED TO
MAINTAIN ANY INFRINGEMENT SUIT BROUGHT IN ACCORDANCE WITH SECTION 6.3 ABOVE
(INCLUDING GIVING LEGAL CONSENT FOR BRINGING SUCH SUIT, AND AGREEING TO BE NAMED
AS A PLAINTIFF OR OTHERWISE JOINED IN SUCH SUIT), AND AT ITS OPTION AND EXPENSE,
MAY BE REPRESENTED IN SUCH SUIT BY COUNSEL OF ITS CHOICE.
IN ADDITION, THE
PARTIES SHALL REASONABLY COOPERATE WITH EACH OTHER IN OBTAINING PATENT TERM
RESTORATION OR SUPPLEMENTAL PROTECTION
13
CERTIFICATES OR