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8.1.5 Assignment Obligation. Each Party shall cause all Persons who perform Development activities, Manufacturing activities or regulatory activities for such Party under this Agreement to assign (or, if such Party is unable to cause such Person to assign despite such Party's using commercially reasonable efforts to ne... |
8.1.6 Ownership of Corporate Names. As between the Parties, Heptares shall retain all right, title and interest in and to its Corporate Names. |
8.2 Maintenance and Prosecution of Patents. |
8.2.1 Patent Prosecution and Maintenance of Heptares Platform Patents. Heptares shall have the sole right, but not the obligation, to prepare, file, prosecute, defend in any oppositions or post-grant proceedings, and maintain any and all Patents specifically relating to the Heptares Platform (excluding any Patents that... |
8.2.2 Prosecution and Maintenance of Patents Prior to License Option Effective Date. The following provisions shall apply with respect to Patent prosecution and maintenance prior to the License Option Effective Date: |
Patent Prosecution and Maintenance of Heptares Product Patents. In consultation with AbbVie, subject to Section 8.2.1, Heptares shall have the right, but not the obligation, through the use of internal or outside counsel reasonably acceptable to AbbVie, to prepare, file, prosecute, defend in any oppositions or post-gra... |
Patent Prosecution and Maintenance of Joint Patents. In consultation with Heptares, AbbVie shall have the sole right, but not the obligation, through the use of internal or outside counsel reasonably acceptable to Heptares, to prepare, file, prosecute, defend in any oppositions or post-grant proceedings, and maintain t... |
8.2.3 Prosecution and Maintenance of Patents on or after License Option Effective Date: Option Exercise. The following provisions shall apply with respect to Patent prosecution and maintenance on or after a License Option Effective Date in the event that AbbVie exercises the License Option: |
Patent Prosecution and Maintenance of Heptares Product Patents and Joint Patents. In consultation with Heptares, AbbVie shall have the right, but not the obligation, to prepare, file, prosecute, defend in any oppositions or post-grant proceedings, and maintain the Heptares Patents that claim the Licensed Compound, any ... |
Heptares Step-In Right for Patent Prosecution and Maintenance of Selected Heptares Patents. If AbbVie decides not to prepare, file, prosecute, defend in an opposition or post-grant proceeding, or maintain a Selected Heptares Patent in a country or other jurisdiction in the Territory, AbbVie shall provide reasonable pri... |
8.2.4 Prosecution and Maintenance of Patents after the Option Period: License Option not Exercised. The following provisions shall apply with respect to Patent prosecution and maintenance after the Option Period, in the event that AbbVie has not exercised the License Option: |
Patent Prosecution and Maintenance of Heptares Patents. Heptares shall have the sole right, but not the obligation, to prepare, file, prosecute, defend in any oppositions or post-grant proceedings, and maintain any and all Heptares Patents solely relating to the Option Target in the Designated Pharmacology for which th... |
Patent Prosecution and Maintenance of Joint Patents. In consultation with AbbVie, Heptares shall have the sole right, but not the obligation, through the use of internal or outside counsel reasonably acceptable to AbbVie, to prepare, file, prosecute, defend in any oppositions or post-grant proceedings, and maintain the... |
8.2.5 Cooperation. |
The Parties agree to cooperate fully in the preparation, filing, prosecution, defense in oppositions or post-grant proceedings, and maintenance of the Heptares Patents, Heptares Product Patents, Arising Heptares Platform Patents and Joint Patents in the Territory in accordance with Section 8.2.1 through 8.2.4. Cooperat... |
(a) executing all papers and instruments, or requiring its employees or contractors to execute such papers and instruments, so as to (i) effectuate the ownership of intellectual property set forth in Section 8.1.2; (ii) enable the other Party to apply for and to prosecute Patent applications in the Territory; and (iii)... |
(b) consistent with this Agreement, assisting in any license, transfer or assignment registration processes with applicable governmental authorities that may be available in the Territory for the protection of a Party's interests in this Agreement; and |
(c) promptly informing the other Party of any matters coming to such Party's attention that may materially affect the preparation, filing, prosecution, defense or maintenance of any such Heptares Patents, Heptares Product Patents and Joint Patents in the Territory. |
Without limitation to Section 8.2.5(i), within thirty (30) days of transfer of a Party's responsibility for preparation, filing, prosecution, defense and maintenance of a Patent as provided for in this Section 8.2, the then-current prosecuting Party shall promptly deliver to the other Party or its designee copies of al... |
8.2.6 Patent Term Extension and Supplementary Protection Certificate. With respect to any Licensed Compound or Licensed Product in relation to which the License Option has been exercised, AbbVie shall have the right to make decisions regarding patent term extensions, including supplementary protection certificates, ped... |
8.2.7 UPC Opt-Out and Opt-In. AbbVie shall have the first right to make decisions regarding the Opt-Out or Opt-In under the Article 83(4) of the Agreement on a Unified Patent Court between the participating Member States of the European Union (2013/C 175/01), with respect to any Selected Heptares Patents and Joint Pate... |
8.2.8 Patent Listings. With respect to any Licensed Compound or Licensed Product, AbbVie shall have the sole right to determine and make all filings and listings with Regulatory Authorities in the Territory with respect to Heptares Product Patents, Selected Heptares Patents, and Joint Patents, including as required or ... |
8.3 Enforcement of IP. |
8.3.1 Notice. Each Party shall promptly notify the other Party in writing of any alleged or threatened infringement or misappropriation of the Licensed Technology or Joint Intellectual Property Rights by a Third Party in the Territory of which such Party becomes aware based on the Exploitation of, or an application to ... |
8.3.2 Enforcement Prior to License Option Effective Date. Prior to the License Option Effective Date, Heptares shall have the first right, but not the obligation, to prosecute any Product Infringement to the extent relating to the Heptares Product Patents or Selected Heptares Patents in the Territory and AbbVie shall h... |
8.3.3 Enforcement After License Option Effective Date. Commencing on the License Option Effective Date and continuing thereafter, AbbVie shall have the sole right, but not the obligation, to prosecute any Product Infringement to the extent relating to any Selected Heptares Patent or corresponding Heptares Know-How or J... |
8.3.4 Generic Competition. Notwithstanding anything to the contrary in this Agreement, AbbVie shall have the sole right, but not the obligation, to prosecute and manage any litigation with respect to Generic Products or any application seeking the approval, license, registration, or authorization of any Regulatory Auth... |
8.3.5 Cooperation. The Parties agree to cooperate fully in any infringement action pursuant to this Section 8.3 (including any proceedings or litigation with respect to Generic Products or any application seeking the approval, license, registration, or authorization of any Regulatory Authority therefor). Where a Party ... |
8.3.6 Recovery. Except as otherwise agreed by the Parties, any recovery realized as a result of such litigation described in Section 8.3.2, 8.3.3 or 8.3.4 (whether by way of settlement or otherwise) shall be first allocated to reimburse the Parties for their costs and expenses in making such recovery (which amounts sha... |
8.4 Infringement Claims by Third Parties. |
8.4.1 Following the License Option Effective Date, if the Exploitation of a Licensed Compound or Licensed Product in the Territory pursuant to this Agreement results in, or may result in, any claim, suit, or proceeding by a Third Party alleging patent infringement by AbbVie (or its Affiliates or Sublicensees), AbbVie s... |
8.5 Invalidity or Unenforceability Defenses or Actions. |
8.5.1 Notice. Each Party shall promptly notify the other Party in writing of any alleged or threatened assertion of invalidity, unpatentability or unenforceability of any of the Selected Heptares Patents or Joint Patents by a Third Party, in each case in the Territory and of which such Party becomes aware. |
8.5.2 Heptares Patents prior to License Option Exercise Notice. Subject to the other terms and conditions of this Agreement, prior to the License Option Effective Date, Heptares shall have the first right, but not the obligation, to defend and control the defense of the validity, patentablity, and enforceability of the... |
8.5.3 Selected Heptares Patents and Joint Patents on or after License Option Effective Date. Subject to the other terms and conditions of this Agreement, after the License Option Effective Date, AbbVie shall have the first right, but not the obligation, to defend and control the defense of the validity, patentability a... |
8.5.4 Cooperation. Each Party shall assist and cooperate with the other Party as such other Party may reasonably request from time to time in connection with its activities set forth in this Section 8.5, including by being joined as a party in such action or proceeding when necessary, providing access to relevant docum... |
8.6 Third Party Licenses. |
8.6.1 Prior to the License Option Effective Date, if in the reasonable opinion of Heptares, the Exploitation of any Option Compound or Option Product by Heptares, any of its Affiliates, or any of its or their sublicensees infringes or misappropriates any Patent, trade secret, or other intellectual property right of a T... |
8.6.2 On or after the License Option Effective Date, if in the reasonable opinion of AbbVie, the Exploitation of any Licensed Compound or Licensed Product by AbbVie, any of its Affiliates, or any of its or their Sublicensees infringes or misappropriates any Patent, trade secret, or other intellectual property right of ... |
8.7 Product Trademarks. |
8.7.1 Ownership and Prosecution of Product Trademarks. AbbVie or its Affiliates shall own all right, title, and interest to the Product Trademarks in the Territory, and shall have the sole right, but not the obligation, to conduct the registration, prosecution, and maintenance thereof. AbbVie shall have the sole right,... |
8.7.2 Enforcement of Product Trademarks. AbbVie or its Affiliates shall have the sole right, but not the obligation, to take such action as AbbVie, after consultation with Heptares, deems necessary against a Third Party based on any alleged, threatened, or actual infringement, dilution, misappropriation, or other viola... |
8.7.3 Third-Party Claims. AbbVie or its Affiliates shall have the sole right, but not the obligation, to defend against any alleged, threatened, or actual claim by a Third Party that the use or registration of the Product Trademarks in the Territory infringes, dilutes, misappropriates, or otherwise violates any Tradema... |
8.7.4 Notice and Cooperation. Heptares shall provide to AbbVie prompt written notice of any actual or threatened infringement of the Product Trademarks in the Territory of which Heptares becomes aware and of any actual or threatened claim that the use of the Product Trademarks in the Territory violates the rights of an... |
8.8 Inventor's Remuneration. Each Party shall be solely responsible for any remuneration that may be due such Party's inventors under any applicable inventor remuneration laws. |
8.9 Common Interest. All information exchanged between the Parties regarding the prosecution, maintenance, enforcement and defense of Patents under this ARTICLE 8 will be deemed to be Confidential Information of the disclosing Party. In addition, the Parties acknowledge and agree that, with regard to such prosecution, ... |
ARTICLE 9 CONFIDENTIALITY AND NON-DISCLOSURE |
9.1 Product Information. Heptares recognizes that by reason of, inter alia, AbbVie's status as an exclusive licensee pursuant to the grants under Section 6.1, AbbVie has an interest in Heptares' maintaining the confidentiality of certain information of Heptares. Accordingly, during the Term, Heptares shall, and shall c... |
9.2 Confidentiality Obligations. At all times during the Term and for a period of ten (10) years following termination or expiration hereof in its entirety, each Party shall, and shall cause its officers, directors, employees and agents to, keep confidential and not publish or otherwise disclose to a Third Party and no... |
9.2.1 has been published by a Third Party or otherwise is or hereafter becomes part of the public domain by public use, publication, general knowledge or the like through no wrongful act, fault or negligence on the part of the receiving Party; |
9.2.2 have been in the receiving Party's possession prior to disclosure by the disclosing Party without any obligation of confidentiality with respect to such information; |
9.2.3 is subsequently received by the receiving Party from a Third Party without restriction and without breach of any agreement between such Third Party and the disclosing Party; |
9.2.4 that is generally made available to Third Parties by the disclosing Party without restriction on disclosure; or |
9.2.5 have been independently developed by or for the receiving Party without reference to, or use or disclosure of, the disclosing Party's Confidential Information. |
Specific aspects or details of Confidential Information shall not be deemed to be within the public domain or in the possession of the receiving Party merely because the Confidential Information is embraced by more general information in the public domain or in the possession of the receiving Party. Further, any combin... |
9.3 Permitted Disclosures. Each Party may disclose Confidential Information to the extent that such disclosure is: |
9.3.1 in the reasonable opinion of the receiving Party's legal counsel, required to be disclosed pursuant to law, regulation or a valid order of a court of competent jurisdiction or other supra-national, federal, national, regional, state, provincial and local governmental body of competent jurisdiction, (including by ... |
9.3.2 made by or on behalf of the receiving Party to the Regulatory Authorities as required in connection with any filing, application or request for any Regulatory Approval in accordance with the terms of this Agreement; provided, that reasonable measures shall be taken to assure confidential treatment of such Confide... |
9.3.3 made by or on behalf of the receiving Party to a patent authority as may be reasonably necessary or useful for purposes of preparing, obtaining, defending or enforcing a Patent in accordance with the terms of this Agreement; provided, that reasonable measures shall be taken to assure confidential treatment of suc... |
9.3.4 made to its or its Affiliates' financial and legal advisors who have a need to know such disclosing Party's Confidential Information and are either under professional codes of conduct giving rise to expectations of confidentiality and non-use or under written agreements of confidentiality and non-use, in each cas... |
9.3.5 made by the receiving Party or its Affiliates to potential or actual investors or acquirers as may be necessary in connection with their evaluation of such potential or actual investment or acquisition; provided, that such Persons shall be subject to obligations of confidentiality and non-use with respect to such... |
9.3.6 made by AbbVie or its Affiliates or Sublicensees to its or their advisors, consultants, clinicians, vendors, service providers, contractors, existing or prospective collaboration partners, licensees, sublicensees, or other Third Parties as may be necessary or useful in connection with the Exploitation of the Lice... |
9.3.7 made by Heptares or its Affiliates after receiving advanced approval from AbbVie, to its or their advisors, consultants, clinicians, vendors, service providers, contractors, and the like to the extent necessary in assisting with Heptares' activities contemplated by this Agreement; provided, that such Persons shal... |
9.4 Certain Disclosures. In the event of any proposed disclosure by AbbVie in accordance with Sections 9.3.3, 9.3.5, and 9.3.6 where the Confidential Information intended to be disclosed is Heptares' Confidential Information relating to the Heptares Platform, AbbVie must obtain Heptares' prior written consent, such con... |
9.5 Use of Name. Except as expressly provided herein, neither Party shall mention or otherwise use the name, logo, or Trademark of the other Party or any of its Affiliates (or any abbreviation or adaptation thereof) in any publication, press release, marketing and promotional material, or other form of publicity withou... |
9.6 Public Announcements. The Parties have agreed upon the content of a joint press release which shall be issued substantially in the form attached hereto as Schedule 9.5, the release of which the Parties shall coordinate in order to accomplish such release promptly upon execution of this Agreement. Neither Party shal... |
9.7 Publications. The Parties acknowledge that scientific publications must be strictly monitored to prevent any adverse effect from premature publication of results of the Research Plan Activities hereunder. Accordingly, prior to exercise of a License Option neither Party shall publish, present, or otherwise disclose,... |
9.8 Return of Confidential Information. Upon the effective date of the termination of this Agreement for any reason, either Party may request in writing, and the other Party shall either, with respect to Confidential Information (in the event of termination of this Agreement with respect to one (1) or more Terminated T... |
9.9 Survival. All Confidential Information shall continue to be subject to the terms of this Agreement for the period set forth in Section 9.2. |
ARTICLE 10 REPRESENTATIONS AND WARRANTIES |
10.1 Mutual Representations and Warranties. Heptares and AbbVie each represents and warrants to the other, as of the Effective Date, as follows: |
10.1.1 Organization. It is a corporation duly organized, validly existing, and in good standing under the laws of the jurisdiction of its organization, and has all requisite power and authority, corporate or otherwise, to execute, deliver, and perform this Agreement. |
10.1.2 Authorization. The execution and delivery of this Agreement and the performance by it of the transactions contemplated hereby have been duly authorized by all necessary corporate action, and do not violate (a) such Party's charter documents, bylaws, or other organizational documents, (b) in any material respect,... |
10.1.3 Binding Agreement. This Agreement is a legal, valid, and binding obligation of such Party enforceable against it in accordance with its terms and conditions, subject to the effects of bankruptcy, insolvency, or other laws of general application affecting the enforcement of creditor rights, judicial principles af... |
10.1.4 No Inconsistent Obligation. It is not under any obligation, contractual or otherwise, to any Person that conflicts with or is inconsistent in any material respect with the terms of this Agreement, or that would impede the diligent and complete fulfillment of its obligations hereunder. |
10.2 Additional Representations and Warranties of Heptares. Heptares further represents and warrants to AbbVie, as of the Effective Date, except as set forth in the corresponding section of Schedule 10.2 delivered prior to or on the Effective Date, as follows, except that all references to "Compounds" and "Products" in... |
10.2.1 All Heptares Patents existing as of the Effective Date that claim or cover the Heptares Platform are listed on Schedule 10.2.1 (the "Existing Patents"). |
10.2.2 All Existing Patents are subsisting and are not invalid or unenforceable, in whole or in part. |
10.2.3 There are no claims, judgments, or settlements against, or amounts with respect thereto, owed by Heptares or any of its Affiliates relating to the Existing Patents, or the Heptares Know-How. |
10.2.4 No claim or litigation has been brought or, to the Knowledge of Heptares, threatened by any Person alleging, and Heptares has no Knowledge of any claim, whether or not asserted, that (a) the Existing Patents or the Heptares Know-How are invalid or unenforceable, or (b) the Existing Patents, or the Heptares Know-... |
10.2.5 To the Knowledge of Heptares, the conception, discovery, development, and reduction to practice of any technology within the Heptares Platform, any Compound, Product, Heptares Patent, and Heptares Know-How did not violate, infringe, misappropriate, or otherwise conflict or interfere with any Patent or other inte... |
10.2.6 Heptares is (a) the sole and exclusive owner of the entire right, title and interest in the Existing Patents listed on Schedule 10.2.1, Part A (the "Owned Patents") and the Heptares Know-How and (b) the sole and exclusive licensee of the Existing Patents listed on Schedule 10.2.1, Part B (the "In-Licensed Patent... |
10.2.7 As of the Effective Date, none of Heptares, its Affiliates and any Third Party is in breach of any In-License Agreement and each In-License Agreement is in full force and effect. |
10.2.8 The Owned Patents and In-Licensed Patents constitute all of the Existing Patents. |
10.2.9 To the Knowledge of Heptares, Heptares has the right to use all Information and Patents necessary to conduct all Research Plan Activities which it is responsible for performing. |
10.2.10 The Existing Patents are being diligently prosecuted in the respective patent offices in the Territory in accordance with Applicable Law. |
10.2.11 The Existing Patents have been filed and maintained properly and correctly and all applicable fees have been paid on or before the due date for payment. |
10.2.12 Neither Heptares nor any of its Affiliates has previously entered into any agreement that is inconsistent with the rights and licenses granted to AbbVie under this Agreement, whether written or oral, with respect to the assignment, transfer, license, conveyance or encumbrance of, or otherwise assigned, transfer... |
10.2.13 To the Knowledge of Heptares, no Person is infringing or threatening to infringe or misappropriating or threatening to misappropriate the Existing Patents or the Heptares Know-How. |
10.2.14 True, complete, and correct copies (as of the Effective Date) of all In-License Agreements have been provided to AbbVie prior to the Effective Date; |
10.2.15 The information provided to AbbVie in respect of the Existing Patents is true, complete and correct; |
10.2.16 The conduct of (i) the Research Plan Activities that use or apply the Heptares Platform, and (ii) to the Knowledge of Heptares, all other Research Plan Activities and the Exploitation of the Compounds and the Products, in each case (i) and (ii), as contemplated herein, will not infringe or misappropriate any Pa... |
10.2.17 The conception, development, and reduction to practice of the Existing Patents, and Heptares Know-How existing as of the Effective Date have not constituted or involved the misappropriation of trade secrets or other rights or property of any Person. |
10.2.18 In respect of the pending patent applications included in the Existing Patents, Heptares and its Affiliates have presented all relevant references, documents, or information of which it and the inventors are aware to the relevant patent examiner at the relevant patent office. |
10.2.19 The Existing Patents represent all Patents within Heptares' or its Affiliates' ownership or Control relating to the Heptares Platform, the Compounds and the Products, or the Exploitation thereof, as of the Effective Date. |
10.2.20 Each of the Existing Patents properly identifies each and every inventor of the claims thereof as determined in accordance with the laws of the jurisdiction in which such Existing Patent is issued or such application is pending. |
10.2.21 Each Person who has or has had any rights in or to any Owned Patents or any Heptares Know-How, has assigned pursuant to Applicable Law or a contract of employment or has executed an agreement assigning its entire right, title, and interest in and to such Owned Patents and Heptares Know-How to Heptares. |
10.2.22 To the Knowledge of Heptares no rights or licenses are required under the Existing Patents or Heptares Know-How for conduct of the Research Plan Activities or for AbbVie to Exploit the Compounds and the Products as contemplated herein other than those granted under Section 6.1. |
10.2.23 All rights in all inventions and discoveries, made, developed, conceived or reduced to practice by any employee or independent contractor of Heptares or any of its Affiliates during the course of their employment (or other retention) by Heptares or such Affiliate, and relating to or included in Heptares Know-Ho... |
10.2.24 The Heptares Know-How has been kept confidential or has been disclosed to Third Parties only under terms of confidentiality. To the Knowledge of Heptares, no breach of such confidentiality has been committed by any Third Party. |
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