Fees and Royalties. The parties hereto understand that the fees and royalties payable by LICENSEE to UNIVERSITY under this Agreement are partial consideration for the license granted herein to LICENSEE under Patent Rights. LICENSEE shall pay UNIVERSITY: (a) a license issue fee of * dollars (US$*), within thirty ((30) days after the Effective Date; This Paragraph 3.l (a) will survive the termination, expiration or assignment of this Agreement. (b) license maintenance fees of * dollars (US$*) payable on the first anniversary of the Effective Date and * dollars (US$*) per year and payable on the second anniversary of the Effective Date and annually thereafter on each anniversary; provided however, that such maintenance fees will be creditable against earned royalties in any given payment period; [Material marked with an asterisk has been omitted from this document pursuant to a request for confidential treatment and has been filed separately with the Securities and Exchange Commission.] (c) LICENSEE shall pay UNIVERSITY the following milestone payments for Field 1: (i) IND submission for Licensed Product $* (ii) First patient dosed in Phase I Clinical Trial for Licensed Product $* (iii) First patient dosed in Phase II Clinical Trial for Licensed Product $* (iv) First patient dosed in Phase III Clinical Trial for Licensed Product $* (v) BLA (or NDA) submission to the FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY the following milestone payments for Field 2: (i) Completion of in vivo characterization and optimization of cell production for Licensed Product $* (ii) First commercial sale of Licensed Product $* (d) For Field 1: an earned royalty of * percent (*%) on Net Sales of Licensed Products For Field 2: an earned royalty of * percent (*%) on Net Sales of Licensed Products by LICENSEE, Sublicensees, and/or Affiliates, provided, however, that in the event LICENSEE is required to pay royalties to one or more third parties for patent rights necessary to make, use or sell Licensed Products, LICENSEE may deduct $* from the earned royalties payable to UNIVERSITY for every $* LICENSEE actually pays to said third parties; provided, however, in no event shall the amount payable to UNIVERSITY be less than * percent (*%) of the amount otherwise due; and (e) percent (*%) of all Sublicense fees received by LICENSEE from its Sublicensees that are not earned royalties. All fees and royalty payments specified in Paragraphs 3.l (a) through 3.l (e) above shall be paid by LICENSEE pursuant to Paragraph 4.3 and shall be delivered by LICENSEE to UNIVERSITY as noted in Paragraph 10.1.
Appears in 2 contracts
Samples: License Agreement (Creative Medical Technology Holdings, Inc.), License Agreement (Creative Medical Technology Holdings, Inc.)
Fees and Royalties. The parties hereto understand that the fees and royalties payable by LICENSEE to UNIVERSITY Cornell under this Agreement are partial consideration for the license granted herein to LICENSEE under Technology, and Patent Rights. LICENSEE shall pay UNIVERSITYCornell:
(a) in recognition of LICENSEE being a new start-up business, a license issue fee of * dollars (US$[*)**], of which [***] shall be paid in cash within thirty ((30) days after of Effective Date and [***] shall be paid in the form of a convertible promissory note attached herein as Appendix B and issued by LICENSEE to Cornell contemporaneously with the execution of this Agreement which shall be convertible into cash or shares of stock in LICENSEE upon either the completion of a Series B round of financing by LICENSEE which raises at least at [***] or one year from the Effective Date; This Paragraph 3.l (a) will survive the termination, expiration or assignment of this Agreementwhichever shall occur sooner.
(b) license maintenance fees of * dollars (US$*) payable on the first each anniversary of the Effective Date and * dollars (US$*) per year and payable on according to the second anniversary of the Effective Date and annually thereafter on each anniversaryfollowing schedule; provided however, that such LICENSEE's obligation to pay this fee shall end on the date when LICENSEE is commercially selling a Licensed Product in the first country of the Territory, and the license maintenance fees will fee payable shall be creditable against earned royalties pro-rated for the number of months remaining in any given payment period; that license year. Fee payable to Cornell Date [Material marked with an asterisk has been omitted from this document pursuant to ***] 1st - 3rd anniversaries of Effective Date [***] 4th anniversary of Effective Date [***] 5th anniversary of Effective Date [***] 6th anniversary of Effective Date and each subsequent anniversary thereafter, until the date of first commercial sale of a request for confidential treatment and has been filed separately with Licensed Product in the Securities and Exchange Commission.]first country of sale
(c) LICENSEE shall pay UNIVERSITY milestone payments in the amounts payable according to the following milestone payments for Field 1:
(i) schedule or events: Amount Date or Event [***] Filing of an IND submission for Licensed Product $[*
(ii) First patient dosed in Phase I Clinical Trial for Licensed Product $*
(iii) First patient dosed in *] Completion of a Phase II Clinical Trial for Licensed Product $clinical trial [*
(iv) First patient dosed in **] Completion of a Phase III Clinical Trial for Licensed Product $clinical trial [*
(v) BLA (or NDA) submission to **] Marketing approval from the US FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY first indication [***] Marketing approval in each non-US Major Market Region for first indication [***] Marketing approval from the following milestone payments US FDA for Field 2:
(i) Completion of additional indications [***] Marketing approval in vivo characterization and optimization of cell production each non-US Major Market Region for Licensed Product $*
(ii) First commercial sale of Licensed Product $*each additional indication
(d) For Field 1: an earned royalty (i) of * percent ([*%) on Net Sales of Licensed Products For Field 2: an earned royalty of * percent (*%) *] on Net Sales of Licensed Products by LICENSEELICENSEE and/or its Affiliate(s) in countries where the manufacture, Sublicenseesuse or sale of the Licensed Product is covered by a Valid Claim within the Patent Rights that exists in the country of sale and at the time of sale, and/or Affiliates, subject to the anti-stacking provisions set forth in sub-paragraph (iii) below but provided, however, that in the event LICENSEE is required to pay royalties to one or more third parties for patent rights necessary to make, use or sell Licensed Products, LICENSEE may deduct $* from the earned royalties payable to UNIVERSITY for every $* LICENSEE actually pays to said third parties; provided, however, in no event shall the amount payable to UNIVERSITY Cornell under this sub-paragraph 3.1(d)(i) be less than * percent ([*%) **] of the amount otherwise due; and
(e) percent (*%) of all Sublicense fees received by LICENSEE from its Sublicensees that are not earned royalties. All fees and royalty payments specified in Paragraphs 3.l (a) through 3.l (e) above shall be paid by LICENSEE pursuant to Paragraph 4.3 and shall be delivered by LICENSEE to UNIVERSITY as noted in Paragraph 10.1Net Sales.
Appears in 2 contracts
Samples: License Agreement (Adverum Biotechnologies, Inc.), License Agreement (Adverum Biotechnologies, Inc.)
Fees and Royalties. The parties Parties hereto understand that the fees and royalties payable by LICENSEE Licensee to UNIVERSITY Cornell under this Agreement are partial in consideration for the license granted herein to LICENSEE Licensee under Technology and Patent Rights. LICENSEE Licensee shall pay UNIVERSITYCornell:
(a) a an initial license issue fee of * dollars [***] (US$[***]) (“Initial License Fee”) and a materials fee of [***] ([***]) (“Materials Fee”), each within thirty ((30) days after the Effective Date; This Paragraph 3.l (a) will survive the termination, expiration or assignment of this Agreement.;
(b) annual license maintenance fees of * dollars (US$*) fees, payable on the first each anniversary of the Effective Date and * dollars (US$*) per year and payable on according to the second anniversary of the Effective Date and annually thereafter on each anniversaryfollowing schedule; provided however, that such maintenance fees will be creditable against earned royalties Licensee’s obligation to pay this fee shall end upon the first commercial sale of any Licensed Product in any given payment period; country in the Territory, whereupon the annual license maintenance fee shall be pro-rated for the number of months expired in that license year prior to such first commercial sale and be paid on the anniversary of the Effective Date. [Material marked with an asterisk has been omitted from this document pursuant to a request for confidential treatment ***] 1st anniversary [***] 2nd anniversary [***] 3rd anniversary [***] 4th anniversary [***] 5th anniversary [***] 6th anniversary [***] 7th anniversary [***] 8th anniversary [***] 9th and has been filed separately with the Securities and Exchange Commission.]each anniversary thereafter
(c) LICENSEE shall pay UNIVERSITY during the Royalty Term, milestone payments (“Milestone Payments”) in the amounts payable according to the following milestone payments schedule of events upon the specified date or achievement of the specified event: [***] [***] [***] [***] [***] [***] [***] [***] [***] [***] For the avoidance of doubt, the maximum, aggregate Milestone Payments due for Field 1:
(i) IND submission for each Licensed Product shall be $*
(ii) First patient dosed in Phase I Clinical Trial for Licensed Product $*
(iii) First patient dosed in Phase II Clinical Trial for Licensed Product $*
(iv) First patient dosed in Phase III Clinical Trial for Licensed Product $*
(v) BLA (or NDA) submission to the FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY the following milestone payments for Field 2:
(i) Completion of in vivo characterization and optimization of cell production for Licensed Product $*
(ii) First commercial sale of Licensed Product $*8,000,000.
(d) For Field 1: during the Royalty Term, on a per-Licensed-Product and country-by-country basis, an earned royalty of * percent (*%) on Net Sales of Licensed Products For Field 2: an earned royalty of * percent (*%) on Net Sales of Licensed Products by LICENSEELicensee and/or its Affiliate(s) and Sublicensees (“Earned Royalty”) as follows: A Short-acting Licensed Product, Sublicensees(including any Combination Product in which a Short-acting Licensed Product is sold with a Reversal Agent Licensed Product), and/or Affiliatesin countries where a Valid Claim Covers the applicable Licensed Product [***]% of Net Sales of the applicable Licensed Product A Short-acting Licensed Product (including any Combination Product in which a Short-acting Licensed Product is sold with a Reversal Agent Licensed Product), providedin countries where no Valid Claim Covers the applicable Licensed Product [***]% of Net Sales of the applicable Licensed Product An Intermediate-acting Licensed Product (including any Combination Product in which an Intermediate-acting Licensed Product is sold with a Reversal Agent Licensed Product), howeverin countries where a Valid Claim Covers the applicable Licensed Product [***]% of Net Sales of the applicable Licensed Product An Intermediate-acting Licensed Product (including any Combination Product in which an Intermediate-acting Licensed Product is sold with a Reversal Agent Licensed Product), that in countries where no Valid Claim Covers the applicable Licensed Product [***]% of Net Sales of the applicable Licensed Product A Reversal Agent Licensed Product, in countries where a Valid Claim Covers the applicable Licensed Product and solely where such Reversal Agent Licensed Product is sold as a stand-alone product and not as part of a Combination Product [***]% of Net Sales of the applicable Licensed Product A Reversal Agent Licensed Product, in countries where no Valid Claim Covers the applicable Licensed Product and solely where such Reversal Agent Licensed Product is sold as a stand-alone product and not as part of a Combination Product [***]% of Net Sales of the applicable Licensed Product In the event LICENSEE Licensee is required to pay royalties to one or more third parties for patent rights Patent Rights necessary to make, use or sell Licensed Products, LICENSEE and the total royalties payable by Licensee exceed [***], then Licensee may deduct $* [***]from the earned royalties Earned Royalties payable to UNIVERSITY Cornell for every $* LICENSEE 1.00 Licensee actually pays to said third partiesparties of the amount Licensee pays above the [***]; provided, however, in no event shall the amount payable to UNIVERSITY Cornell be less than * percent ([*%) **]% of the amount otherwise due. for every $1.00 Licensee actually pays to said third parties of the amount Licensee pays above the [***]; andprovided, however, in no event shall the amount payable to Cornell be less than [***]% of the amount otherwise due.
(e) percent (during the Royalty Term, Sublicense fees relating to amounts received from Sublicensees in an amount equal to [*%) **]; provided, however, that for purposes of all Sublicense this Paragraph 3.1(e), such fees received by LICENSEE Licensee from its Sublicensees shall be deemed reduced by the amount of any costs and expenses that Licensee is obligated, under the terms and conditions of the applicable Sublicense, to incur or pay with respect to the development of the applicable Licensed Product, and provided, further, that [***].
(f) during the Royalty Term, beginning the first full calendar year after the commercial sale of the first License Product by Licensee, its Sublicensee, or an Affiliate and if the total payments by Licensee under Paragraphs 3.1(d) to Cornell in any such year cumulatively are not earned royaltiesless than the amount (“Minimum Annual Royalty”) illustrated below: 1st [***] 2nd [***] 3rd [***] 4th and each year thereafter [***] Licensee shall pay to Cornell on or before February 28 following the last quarter of such year the difference between the Minimum Annual Royalty for the applicable calendar year and the total Earned Royalty amount paid by Licensee for such year under Paragraph 3.1(d); provided, however, that for the year of commercial sales of the first Licensed Product, and for any year in which a Licensed Product is removed from the market temporarily or permanently due to regulatory action, the Minimum Annual Royalty payable shall be pro-rated for the number of months remaining in that calendar year. All fees and royalty payments specified in Paragraphs 3.l (a3.1(a) through 3.l (e3.1(f) above shall be paid by LICENSEE Licensee pursuant to Paragraph 4.3 and shall be delivered by LICENSEE Licensee to UNIVERSITY Cornell as noted in Paragraph 10.1.
Appears in 1 contract
Fees and Royalties. The parties hereto understand that the fees and royalties payable by LICENSEE to UNIVERSITY Dartmouth under this Agreement are partial consideration for the license licenses granted herein to LICENSEE under Patent Rightsthis Agreement. LICENSEE shall pay UNIVERSITYAll payments made under this Agreement are non-refundable. Licensee shall:
(a) pay to Dartmouth a non-creditable license issue fee of * twenty-five thousand dollars (US$*), within thirty ((3025,000) days after upon the Effective Date; This Paragraph 3.l (a) will survive the termination, expiration or assignment of this Agreement.;
(b) pay to Dartmouth non-creditable annual license maintenance fees of * twenty-five thousand dollars (US$*) 25,000), payable on the first (1st) anniversary of the Effective Date and * dollars (US$*) per year and payable on the second anniversary of the Effective Date and annually thereafter on each anniversary; provided however, that such maintenance fees will be creditable against earned royalties in any given payment period; [Material marked with an asterisk has been omitted from this document pursuant to a request for confidential treatment and has been filed separately with anniversary thereafter until the Securities and Exchange Commission.]date of First Commercial Sale
(c) LICENSEE [deleted]
(d) pay to Dartmouth an earned royalty of two percent (2%) of Net Sales of Licensed Products and Licensed Services anywhere in the Territory by Licensee and its Affiliate(s);
(e) pay to Dartmouth an earned royalty of two percent (2%) of Net Sales of Licensed Products and Licensed Services anywhere in the Territory by any Sublicensee;
(f) [deleted]
(g) pay to Dartmouth fifteen percent (15%) of all Sublicense Consideration received by Licensee and each Affiliate under a Sublicense; and
(h) beginning as of the date of the First Commercial Sale, Licensee will pay to Dartmouth an annual minimum royalty (“Minimum Annual Royalty”) for each calendar year against which Licensee may credit earned royalties that become due and payable for Net Sales accrued during that calendar year; provided, however, that for the calendar year in which the First Commercial Sale occurs, the amount of Minimum Annual Royalty payable will be pro-rated for the number of months remaining in that calendar year. The first payment of the Minimum Annual Royalty will be due and payable with the royalty payment for the Royalty Reporting Period in which the First Commercial Sale occurred. Thereafter, the Minimum Annual Royalty is due and payable on January 1 of each calendar year. Minimum Annual Royalty payments shall pay UNIVERSITY be made according to the following milestone payments for Field 1schedule:
(i) IND submission for Licensed Product $*Calendar year in which the First Commercial Sale occurs (pro-rated by month)
(ii) First patient dosed in Phase I Clinical Trial for Licensed Product $*calendar year after First Commercial Sale $ 500,000;
(iii) First patient dosed in Phase II Clinical Trial for Licensed Product $*
(iv) First patient dosed in Phase III Clinical Trial for Licensed Product $*
(v) BLA (or NDA) submission to the FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY the following milestone payments for Field 2:
(i) Completion of in vivo characterization and optimization of cell production for Licensed Product $*
(ii) First commercial sale of Licensed Product $*
(d) For Field 1: an earned royalty of * percent (*%) on Net Sales of Licensed Products For Field 2: an earned royalty of * percent (*%) on Net Sales of Licensed Products by LICENSEE, Sublicensees, and/or Affiliates, provided, however, that in the event LICENSEE is required to pay royalties to one or more third parties for patent rights necessary to make, use or sell Licensed Products, LICENSEE may deduct $* from the earned royalties payable to UNIVERSITY for every $* LICENSEE actually pays to said third parties; provided, however, in no event shall the amount payable to UNIVERSITY be less than * percent (*%) of the amount otherwise due; and
(e) percent (*%) of all Sublicense fees received by LICENSEE from its Sublicensees that are not earned royalties. All fees and royalty payments specified in Paragraphs 3.l (a) through 3.l (e) above shall be paid by LICENSEE pursuant to Paragraph 4.3 and shall be delivered by LICENSEE to UNIVERSITY as noted in Paragraph 10.1.Second calendar year $ 1,000,000;
Appears in 1 contract
Samples: Intellectual Property License Agreement (Qrons Inc.)
Fees and Royalties. The parties hereto understand that the fees and royalties payable by LICENSEE to UNIVERSITY under this Agreement are partial In consideration for the license and option rights granted herein to LICENSEE, LICENSEE under Patent Rights. LICENSEE shall hereby agrees to pay UNIVERSITYto LICENSOR:
(a) a license issue fee [*] Fee of * dollars [*] (US$[*), ]) to be paid within thirty ((30) days [*] after the Effective Date; This Paragraph 3.l (a) will survive the termination, expiration or assignment of this Agreement.;
(b) license maintenance fees a [*] Fees of * dollars [*] (US$[*]) payable per [*] during the Term beginning on the first [*]. The [*] Fees shall be [*].
(c) an [*] Fee of [*] ([*]) per [*] during the Term, beginning on the [*] anniversary of the Effective Date and * dollars (US$until the [*] of:
i) per year and payable on [*] from the second anniversary Effective Date; or
ii) amendment to this Agreement under Section 2.3 or execution of a license agreement to all or part of the Effective Date and annually thereafter on each anniversary; provided however, that such maintenance fees will be creditable against earned royalties in any given payment period; [Material marked Option Field with an asterisk has been omitted from this document pursuant to a request for confidential treatment and has been filed separately with the Securities and Exchange Commissionthird party.]
(c) LICENSEE shall pay UNIVERSITY the following milestone payments for Field 1:
(i) IND submission for Licensed Product $*
(ii) First patient dosed in Phase I Clinical Trial for Licensed Product $*
(iii) First patient dosed in Phase II Clinical Trial for Licensed Product $*
(iv) First patient dosed in Phase III Clinical Trial for Licensed Product $*
(v) BLA (or NDA) submission to the FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY the following milestone payments for Field 2:
(i) Completion of in vivo characterization and optimization of cell production for Licensed Product $*
(ii) First commercial sale of Licensed Product $*
(d) For Each of the following Milestone Payments shall be payable by LICENSEE after the first occurrence of the relevant milestone event triggered by LICENSEE activities (including Sublicensees and designated third parties acting on behalf of LICENSEE) for a Licensed Method or Licensed Product in the Licensed Field covered by a Valid Claim. Activities by [*] including [*] sublicensees and approved third parties, or by LICENSOR shall not trigger any milestone hereunder, except if such activities have been approved in advance by LICENSEE. Milestones shall be due only once:
(1: ) [*].- [*]
(2) [*].- [*]
(3) [*].- [*]
(4) [*].- [*]
(e) an earned royalty of * percent ([*%) ]% based on Net Sales for annual sales of the Licensed Product, the sale or making of which but for the license would be an infringement of a Valid Claim in the country of sale or making ("Patent Royalty"). The term during which LICENSEE shall pay such Patent Royalty shall expire, on a country-by-country basis, upon expiration of the last to expire Valid Claim in such country that, but for the license, would be directly infringed by the use, sale, offer for sale, making or importation of Licensed Products For Field 2: an earned Product (the "Patent Royalty Term"). Royalties shall be subject to pro rata reductions if additional royalty of * percent (*%) on Net Sales of Licensed Products by LICENSEE, Sublicensees, and/or Affiliates, provided, however, that in the event LICENSEE is bearing licenses are required to pay royalties to one or more third parties for patent rights necessary to make, use or sell commercialize the Licensed Products, LICENSEE may deduct $* from i.e. the earned royalties royalty rate will be reduced by [*] of the amount of the royalty payable to UNIVERSITY for every $* LICENSEE actually pays to said third parties; providedunder such additional royalty bearing licenses, however, but in no event case shall the amount payable royalties due to UNIVERSITY LICENSOR be less than * [*]%. For any Licensed Product that was, but is no longer, subject to the Patent Royalty, LICENSEE's royalty obligation shall be reduced to [*]% of Net Sales (the "Know How Royalty"). In the event additional royalty bearing licenses are required to commercialize the Licensed Products pro rata reductions shall apply, but the Know How Royalty shall not be reduced to less than [*]%. On a country-by-country basis, LICENSEE's obligation to pay the Know How Royalty for a Licensed Product shall commence upon expiration of the Patent Royalty Term for that Licensed Product in such country and shall expire upon the [*] of the First Commercial Sale of a Licensed Product in such country. If a patent that, but for the license, would be infringed by the use, sale, offer for sale, or importation of a Licensed Product issues and is subsequently invalidated, and reinstatement of the patent can and is being diligently pursued, the Know How Royalty shall apply while the patent is deemed invalid, provided that if the patent is subsequently reissued or reinstated, the Patent Royalty as set forth above shall again apply as of the date of reissue or reinstatement and thereafter for the remaining life of the patent.
(f) [*] percent ([*%) of the amount otherwise due; and
(e) percent (*]%) of all Sublicense sublicense fees or any other payments received by LICENSEE from its Sublicensees that are not earned royalties. All fees and royalty payments specified in Paragraphs 3.l (a) through 3.l (e) above shall be paid by LICENSEE pursuant to Paragraph 4.3 and shall be delivered by LICENSEE to UNIVERSITY as noted in Paragraph 10.1.
Appears in 1 contract
Fees and Royalties. The parties hereto understand that the fees and royalties payable by LICENSEE to UNIVERSITY Cornell under this Agreement are partial consideration for the license granted herein to LICENSEE under Technology, and Patent Rights. LICENSEE shall pay UNIVERSITYCornell:
(a) a license issue fee of * dollars (US$*US$ ), within thirty ((30) days after the Effective Date; This Paragraph 3.l (a) will survive the termination, expiration or assignment of this Agreement.;
(b) license maintenance fees of * dollars (US$*) payable on the first anniversary of the Effective Date and * dollars (US$*US$ ) per year and payable on the second first anniversary of the Effective Date and annually thereafter on each anniversary; provided however, that such maintenance fees will be creditable against earned royalties in any given payment period; [Material marked with an asterisk has been omitted from LICENSEE's obligation to pay this document pursuant to fee shall end on the date when LICENSEE is commercially selling a request for confidential treatment and has been filed separately with the Securities and Exchange Commission.]Licensed Product;
(c) LICENSEE shall pay UNIVERSITY milestone payments in the amounts payable according to the following milestone payments for Field 1:schedule or events: Amount Date or Event
(i) IND submission for Licensed Product $*
(ii) First patient dosed in Phase I Clinical Trial for Licensed Product $*
(iii) First patient dosed in Phase II Clinical Trial for Licensed Product $*
(iv) First patient dosed in Phase III Clinical Trial for Licensed Product $*
(v) BLA (or NDA) submission to the FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY the following milestone payments for Field 2:
(i) Completion of in vivo characterization and optimization of cell production for Licensed Product $*
(ii) First commercial sale of Licensed Product $*. . .
(d) For Field 1: an earned royalty of * percent (*%) on Net Sales of Licensed Products For Field 2: an earned royalty of * percent (*( %) on Net Sales of Licensed Products by LICENSEE, Sublicensees, LICENSEE and/or Affiliates, provided, however, that in the event LICENSEE is required to pay royalties to one or more third parties for patent rights necessary to make, use or sell Licensed Products, LICENSEE may deduct $* from the earned royalties payable to UNIVERSITY for every $* LICENSEE actually pays to said third parties; provided, however, in no event shall the amount payable to UNIVERSITY be less than * percent (*%) of the amount otherwise due; andits Affiliate(s);
(e) fifty percent (*50%) of all Sublicense fees received by LICENSEE from its Sublicensees that are not earned royalties;
(f) on each and every Sublicense royalty payment received by LICENSEE from its Sublicensees on sales of Licensed Product by Sublicensee, the higher of (i) fifty percent (50%) of the royalties received by LICENSEE; or the (ii) royalties based on the royalty rate in Paragraph 3.1(d) as applied to Net Sales of Sublicensee;
(g) beginning the calendar year of commercial sales of the first License Product by LICENSEE, its Sublicensee, or an Affiliate and if the total earned royalties paid by LICENSEE under Paragraphs 3.1(d) and (f) to Cornell in any such year cumulatively amounts to less than Dollars ($ ) (“minimum annual royalty”), LICENSEE shall pay to Cornell a minimum annual royalty on or before February 28 following the last quarter of such year the difference between amount noted above and the total earned royalty paid by LICENSEE for such year under Paragraphs 3.1(d) and (f); provided, however, that for the year of commercial sales of the first Licensed Product, the amount of minimum annual royalty payable shall be pro-rated for the number of months remaining in that calendar year. All fees and royalty payments specified in Paragraphs 3.l (a3.1(a) through 3.l (e3.1(g) above shall be paid by LICENSEE pursuant to Paragraph 4.3 and shall be delivered by LICENSEE to UNIVERSITY Cornell as noted in Paragraph 10.1.
Appears in 1 contract
Samples: License Agreement
Fees and Royalties. The parties hereto understand that the fees and royalties payable by LICENSEE to UNIVERSITY the MRC under this Agreement are partial consideration considerations for the license granted herein to LICENSEE under Technology, and Patent Rights. LICENSEE shall pay UNIVERSITYthe MRC:
(ai) a license issue fee of * dollars Rands (US$*R ) upon execution of this Agreement; or
(i) a license issue fee of Rands (R ), within thirty ((30) days after the Effective Date; or
(i) in recognition of LICENSEE being a startup business and partially in lieu of cash, a license issue fee in the form of % [or shares] of the LICENSEE’S common stock authorized in the Shareholder’s Agreement of the LICENSEE (or authorized in the Article of Incorporation of the LICENSEE) dated , and a copy of which is attached to this Agreement as Exhibit A; or
(i) partially in lieu of cash, a license issue fee in the form of an option granted to the MRC to purchase for one Rand (R1.00) % [or shares] of the LICENSEE’S common stock authorized in the Shareholder’s Agreement of the LICENSEE (or authorized in the Article of Incorporation of the LICENSEE) dated , and a copy of which is attached to this Agreement as Exhibit A. The option period commences on Effective Date and shall terminate years thereafter. This Paragraph 3.l (a) will survive option, in whole or in part, can be exercised by the termination, expiration MRC or assignment of this Agreementtransferred by the MRC to the inventors any time during the option period.
(bii) license maintenance fees of * dollars Rand (US$*) payable on the first anniversary of the Effective Date and * dollars (US$*R ) per year and payable on the second first anniversary of the Effective Date and annually thereafter on each anniversary; provided however, that such maintenance fees will be creditable against earned royalties in any given payment period; [Material marked with an asterisk has been omitted from LICENSEE’s obligation to pay this document pursuant to fee shall end on the date when LICENSEE is commercially selling a request for confidential treatment and has been filed separately with the Securities and Exchange Commission.]
(c) LICENSEE shall pay UNIVERSITY the following milestone payments for Field 1:
(i) IND submission for Licensed Product $*
(ii) First patient dosed in Phase I Clinical Trial for Licensed Product $*Product;
(iii) First patient dosed milestone payments in Phase II Clinical Trial for Licensed Product $*the amounts payable according to the following schedule or events: Amount Date or Event
(1) (2) …………………
(iv) First patient dosed in Phase III Clinical Trial for Licensed Product $*
(v) BLA (or NDA) submission to the FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY the following milestone payments for Field 2:
(i) Completion of in vivo characterization and optimization of cell production for Licensed Product $*
(ii) First commercial sale of Licensed Product $*
(d) For Field 1: an earned royalty Royalty of * percent (*%) on Net Sales of Licensed Products For Field 2: an earned royalty of * percent (*( %) on Net Sales of Licensed Products by LICENSEE, Sublicensees, LICENSEE and/or Affiliates, provided, however, that in the event LICENSEE is required to pay royalties to one or more third parties for patent rights necessary to make, use or sell Licensed Products, LICENSEE may deduct $* from the earned royalties payable to UNIVERSITY for every $* LICENSEE actually pays to said third partiesits Affiliate(s); provided, however, in no event shall the amount payable to UNIVERSITY be less than * percent (*%) of the amount otherwise due; and
(e) percent (*%) of all Sublicense fees received by LICENSEE from its Sublicensees that are not earned royalties. All fees and royalty payments specified in Paragraphs 3.l (a) through 3.l (e) above shall be paid by LICENSEE pursuant to Paragraph 4.3 and shall be delivered by LICENSEE to UNIVERSITY as noted in Paragraph 10.1.or
Appears in 1 contract
Samples: Patent License Agreement
Fees and Royalties. The parties hereto understand that the fees and royalties payable by LICENSEE to UNIVERSITY Cornell and the provision of Nicotinamide Riboside to Xx. Xxxxxxx Xxxxx under this Agreement are partial consideration for the license granted herein to LICENSEE under Patent Rights. LICENSEE shall pay UNIVERSITY:shall
(ai) pay Cornell a license issue fee of * [*] dollars (US$[*]), within thirty [*] ((30[*]) days after the Effective Date; This Paragraph 3.l ;
(a) (ii) upon LICENSEE’s commencement of manufacturing, Xx. Xxxxxxx Xxxxx upon his written request will survive the termination, expiration or assignment be provided with up to [*]grams of this Agreement.Nicotinamide Riboside per year and purified to [*]% purity as determined by nuclear magnetic resonance spectroscopy;
(b) pay Cornell license maintenance fees of * initially [*] dollars (US$[*) payable on the first anniversary of the Effective Date and * dollars (US$*]) per year and payable on the second anniversary of the Effective Date and annually thereafter on each anniversaryanniversary according to the following schedule; provided however, that such maintenance fees will be creditable against earned royalties in any given payment periodLICENSEE’s obligation to pay this fee shall end on the date when LICENSEE is commercially selling a Licensed Product; Fee payable to Cornell: Date: $ [Material marked with an asterisk has been omitted from this document pursuant *] 2011 to a request for confidential treatment and has been filed separately with the Securities and Exchange Commission.]2012 $ [*] 2013 to 2015 $ [*] 2016 to 2018 $ [*] each year thereafter
(c) LICENSEE shall pay UNIVERSITY Cornell milestone payments in the amounts payable according to the following milestone payments schedule or events by Licensee or its customers: Amount Date or Event $[*] First sale of Licensed Product as a Cosmetic ingredient $[*] Submission of Notification for Field 1:
(i) New Dietary Ingredient for Licensed Product or GRAS self affirmation $[*] Submission of IND submission for Licensed Product $[*
(ii) First patient dosed in Phase I Clinical Trial for Licensed Product $*
(iii) First patient dosed in ] Initiation of Phase II Clinical Trial for Licensed Product $*
(iv) First patient dosed in Phase III Clinical Trial for Licensed Product $*
(v) BLA (or NDA) submission to the FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY the following milestone payments for Field 2:
(i) Completion of in vivo characterization and optimization of cell production for Licensed Product $*
(ii) First commercial sale of Licensed Product $[*] Initiation of Phase III Trial of Licensed Product $[*] FDA approval of Licensed Product
(d) For Field 1: pay Cornell an earned royalty of * [*] percent ([*%) on Net Sales of Licensed Products For Field 2: an earned royalty of * percent (*]%) on Net Sales of Licensed Products by LICENSEELICENSEE and/or its Affiliate(s) for any Licensed Product sold direct to consumers or to consumers through distributors, Sublicenseeswhether or not it is relabelled; pay Cornell an earned royalty of [*] percent ([*]%) on Net Sales of Licensed Products by LICENSEE and/or its Affiliate(s) for any Licensed Product sold to other businesses for incorporation into their products; PROVIDED, and/or Affiliates, provided, howeverHOWEVER, that in if, during the event term hereof, LICENSEE is required to pay royalties to one or more third parties for patent rights necessary to make, use use, sell, offer for sale, or sell import Licensed Products, then LICENSEE may deduct $* [*] from the earned royalties payable to UNIVERSITY Cornell for every $* [*] LICENSEE actually pays to said third parties; provided, howeverparties provided however that, in no event shall will the amount payable royalties paid to UNIVERSITY Cornell under this Section 3.1(d) be less than * [*]percent ([*]%) of the amount otherwise due; anddue under this Section 3.1(d).
(e) percent (*%) pay Cornell a percentage of all Sublicense fees received by LICENSEE from its Sublicensees that are not earned royaltiesroyalties according to the following schedule; Percentage of Sublicensee fee payable to Cornell Events achieved by LICENSEE prior to issuance of Sublicense by LICENSEE [*]% Prior to submission of Notification for New Dietary
(f) pay Cornell on each and every Sublicense royalty payment received by LICENSEE from its Sublicensees on sales of Licensed Product by Sublicensee, the higher of (i) [*]percent ([*]%) of the royalties received by LICENSEE; or the (ii) royalties based on the royalty rate in Paragraph 3.1(d) as applied to Net Sales of Sublicensee;
(g) pay Cornell beginning the calendar year of commercial sales of the first Licensed Product by LICENSEE, its Sublicensee, or an Affiliate and if the total earned royalties paid by LICENSEE under Paragraphs 3.1(d) and (f) to Cornell in any such year cumulatively are less than the amount (“minimum annual royalty”) illustrated below: Year of Commercial Sale Minimum Annual Royalty First $[*] Second $[*] Third and following $[*] LICENSEE shall pay to Cornell on or before February 28 following the last quarter of such year the difference between amount noted above and the total earned royalty paid by LICENSEE for such year under Paragraphs 3.1(d) and (f); provided, however, that for the year of commercial sales of the first Licensed Product, the amount of minimum annual royalty payable shall be pro-rated for the number of months remaining in that calendar year. All fees and royalty payments specified in Paragraphs 3.l (a3.1(a) through 3.l (e3.1(g) above shall be paid by LICENSEE pursuant to Paragraph 4.3 and shall be delivered by LICENSEE to UNIVERSITY Cornell as noted in Paragraph 10.1.
Appears in 1 contract
Samples: License Agreement (ChromaDex Corp.)
Fees and Royalties. The parties Parties hereto understand that the fees and royalties payable by LICENSEE Licensee to UNIVERSITY Cornell under this Agreement are partial in consideration for the license granted herein to LICENSEE Licensee under Technology and Patent Rights. LICENSEE Licensee shall pay UNIVERSITYCornell:
(a) a an initial license issue fee of * dollars [***] (US$[***]) (“Initial License Fee”) and a materials fee of [***] ([***]) (“Materials Fee”), each within thirty ((30) days after the Effective Date; This Paragraph 3.l (a) will survive the termination, expiration or assignment of this Agreement.;
(b) annual license maintenance fees of * dollars (US$*) fees, payable on the first each anniversary of the Effective Date and * dollars (US$*) per year and payable on according to the second anniversary of the Effective Date and annually thereafter on each anniversaryfollowing schedule; provided however, that such maintenance fees will be creditable against earned royalties Licensee’s obligation to pay this fee shall end upon the first commercial sale of any Licensed Product in any given payment period; country in the Territory, whereupon the annual license maintenance fee shall be pro-rated for the number of months expired in that license year prior to such first commercial sale and be paid on the anniversary of the Effective Date. [Material marked with an asterisk has been omitted from this document pursuant to a request for confidential treatment ***] 1st anniversary [***] 2nd anniversary [***] 3rd anniversary [***] 4th anniversary [***] 5th anniversary [***] 6th anniversary [***] 7th anniversary [***] 8th anniversary [***] 9th and has been filed separately with the Securities and Exchange Commission.]each anniversary thereafter
(c) LICENSEE shall pay UNIVERSITY during the Royalty Term, milestone payments (“Milestone Payments”) in the amounts payable according to the following milestone payments schedule of events upon the specified date or achievement of the specified event: [***] [***] [***] [***] [***] [***] [***] [***] [***] [***] For the avoidance of doubt, the maximum, aggregate Milestone Payments due for Field 1:
(i) IND submission for each Licensed Product shall be $*
(ii) First patient dosed in Phase I Clinical Trial for Licensed Product $*
(iii) First patient dosed in Phase II Clinical Trial for Licensed Product $*
(iv) First patient dosed in Phase III Clinical Trial for Licensed Product $*
(v) BLA (or NDA) submission to the FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY the following milestone payments for Field 2:
(i) Completion of in vivo characterization and optimization of cell production for Licensed Product $*
(ii) First commercial sale of Licensed Product $*8,000,000.
(d) For Field 1: during the Royalty Term, on a per-Licensed-Product and country-by-country basis, an earned royalty of * percent (*%) on Net Sales of Licensed Products For Field 2: an earned royalty of * percent (*%) on Net Sales of Licensed Products by LICENSEELicensee and/or its Affiliate(s) and Sublicensees (“Earned Royalty”) as follows: A Short-acting Licensed Product, Sublicensees(including any Combination Product in which a Short-acting Licensed Product is sold with a Reversal Agent Licensed Product), and/or Affiliatesin countries where a Valid Claim Covers the applicable Licensed Product [***]% of Net Sales of the applicable Licensed Product A Short-acting Licensed Product (including any Combination Product in which a Short-acting Licensed Product is sold with a Reversal Agent Licensed Product), providedin countries where no Valid Claim Covers the applicable Licensed Product [***]% of Net Sales of the applicable Licensed Product An Intermediate-acting Licensed Product (including any Combination Product in which an Intermediate-acting Licensed Product is sold with a Reversal Agent Licensed Product), howeverin countries where a Valid Claim Covers the applicable Licensed Product [***]% of Net Sales of the applicable Licensed Product An Intermediate-acting Licensed Product (including any Combination Product in which an Intermediate-acting Licensed Product is sold with a Reversal Agent Licensed Product), that in countries where no Valid Claim Covers the applicable Licensed Product [***]% of Net Sales of the applicable Licensed Product A Reversal Agent Licensed Product, in countries where a Valid Claim Covers the applicable Licensed Product and solely where such Reversal Agent Licensed Product is sold as a stand-alone product and not as part of a Combination Product [***]% of Net Sales of the applicable Licensed Product A Reversal Agent Licensed Product, in countries where no Valid Claim Covers the applicable Licensed Product and solely where such Reversal Agent Licensed Product is sold as a stand-alone product and not as part of a Combination Product [***]% of Net Sales of the applicable Licensed Product In the event LICENSEE Licensee is required to pay royalties to one or more third parties for patent rights Patent Rights necessary to make, use or sell Licensed Products, LICENSEE and the total royalties payable by Licensee exceed [***], then Licensee may deduct $* [***] from the earned royalties Earned Royalties payable to UNIVERSITY Cornell for every $* LICENSEE 1.00 Licensee actually pays to said third partiesparties of the amount Licensee pays above the [***]; provided, however, in no event shall the amount payable to UNIVERSITY Cornell be less than * percent ([*%) **]% of the amount otherwise due. for every $1.00 Licensee actually pays to said third parties of the amount Licensee pays above the [***]; andprovided, however, in no event shall the amount payable to Cornell be less than [***]% of the amount otherwise due.
(e) percent (during the Royalty Term, Sublicense fees relating to amounts received from Sublicensees in an amount equal to [*%) **]; provided, however, that for purposes of all Sublicense this Paragraph 3.1(e), such fees received by LICENSEE Licensee from its Sublicensees shall be deemed reduced by the amount of any costs and expenses that Licensee is obligated, under the terms and conditions of the applicable Sublicense, to incur or pay with respect to the development of the applicable Licensed Product, and provided, further, that [***].
(f) during the Royalty Term, beginning the first full calendar year after the commercial sale of the first License Product by Licensee, its Sublicensee, or an Affiliate and if the total payments by Licensee under Paragraphs 3.1(d) to Cornell in any such year cumulatively are not earned royaltiesless than the amount (“Minimum Annual Royalty”) illustrated below: 1st [***] 2nd [***] 3rd [***] 4th and each year thereafter [***] Licensee shall pay to Cornell on or before February 28 following the last quarter of such year the difference between the Minimum Annual Royalty for the applicable calendar year and the total Earned Royalty amount paid by Licensee for such year under Paragraph 3.1(d); provided, however, that for the year of commercial sales of the first Licensed Product, and for any year in which a Licensed Product is removed from the market temporarily or permanently due to regulatory action, the Minimum Annual Royalty payable shall be pro-rated for the number of months remaining in that calendar year. All fees and royalty payments specified in Paragraphs 3.l (a3.1(a) through 3.l (e3.1(f) above shall be paid by LICENSEE Licensee pursuant to Paragraph 4.3 and shall be delivered by LICENSEE Licensee to UNIVERSITY Cornell as noted in Paragraph 10.1.
Appears in 1 contract
Samples: License Agreement (Baudax Bio, Inc.)
Fees and Royalties. The parties hereto understand that the fees and royalties payable by LICENSEE to UNIVERSITY Cornell under this Agreement are partial consideration for the license granted herein to LICENSEE under Technology, and Patent Rights. LICENSEE shall pay UNIVERSITYCornell:
(a) a license issue fee of * dollars (US$*US$ ), within thirty ((30) days after the Effective Date; This Paragraph 3.l (a) will survive the termination, expiration or assignment of this Agreement.;
(b) license maintenance fees of * dollars (US$*) payable on the first anniversary of the Effective Date and * dollars (US$*US$ ) per year and payable on the second first anniversary of the Effective Date and annually thereafter on each anniversary; provided however, that such maintenance fees will be creditable against earned royalties in any given payment period; [Material marked with an asterisk has been omitted from LICENSEE's obligation to pay this document pursuant to fee shall end on the date when LICENSEE is commercially selling a request for confidential treatment and has been filed separately with the Securities and Exchange Commission.]Licensed Product;
(c) LICENSEE shall pay UNIVERSITY milestone payments in the amounts payable according to the following milestone payments for Field 1:schedule or events: Amount Date or Event
(i) IND submission for Licensed Product $*
(ii) First patient dosed in Phase I Clinical Trial for Licensed Product $*
(iii) First patient dosed in Phase II Clinical Trial for Licensed Product $*
(iv) First patient dosed in Phase III Clinical Trial for Licensed Product $*
(v) BLA (or NDA) submission to the FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY the following milestone payments for Field 2:
(i) Completion of in vivo characterization and optimization of cell production for Licensed Product $*
(ii) First commercial sale of Licensed Product $*. . .
(d) For Field 1: an earned royalty of * percent (*%) on Net Sales of Licensed Products For Field 2: an earned royalty of * percent (*( %) on Net Sales of Licensed Products by LICENSEE, Sublicensees, LICENSEE and/or Affiliates, provided, however, that in the event LICENSEE is required to pay royalties to one or more third parties for patent rights necessary to make, use or sell Licensed Products, LICENSEE may deduct $* from the earned royalties payable to UNIVERSITY for every $* LICENSEE actually pays to said third parties; provided, however, in no event shall the amount payable to UNIVERSITY be less than * percent (*%) of the amount otherwise due; andits Affiliate(s);
(e) fifty percent (*50%) of all Sublicense fees received by LICENSEE from its Sublicensees that are not earned royalties. ;
(f) on each and every Sublicense royalty payment received by LICENSEE from its Sublicensees on sales of Licensed Product by Sublicensee, the higher of (i) fifty percent (50%) of the royalties received by LICENSEE; or the (ii) royalties based on the royalty rate in Paragraph 3.1(d) as applied to Net Sales of Sublicensee;
(g) beginning the calendar year of commercial sales of the first License Product by LICENSEE, its Sublicensee, or an Affiliate and if the total earned royalties paid by LICENSEE under Paragraphs 3.1(d) and (f) to Cornell in any such year cumulatively amounts to less than Dollars ($ ) (“minimum annual All fees and royalty payments specified in Paragraphs 3.l (a3.1(a) through 3.l (e3.1(g) above shall be paid by LICENSEE pursuant to Paragraph 4.3 and shall be delivered by LICENSEE to UNIVERSITY Cornell as noted in Paragraph 10.1.
Appears in 1 contract
Samples: License Agreement
Fees and Royalties. The parties hereto Parties understand that the fees and royalties payable by LICENSEE to UNIVERSITY Cornell under this Agreement are partial consideration for the license License and for the right of reference granted herein to LICENSEE under Patent Rightsin Paragraph 2.5. LICENSEE shall pay UNIVERSITYCornell:
(a) (i) a license issue fee of * dollars [***], and (US$ii) an initial data transfer fee of [*)**], each paid [***] within thirty ((30) days after [***] of the Effective Date; This Paragraph 3.l and (aiii) will survive an annual data transfer fee of [***] paid [***] of the termination, expiration or assignment of this AgreementEffective Date until [***].
(b) license maintenance fees of * dollars (US$*) payable on the first each anniversary of the Effective Date and * dollars (US$*) per year and payable on according to the second anniversary of the Effective Date and annually thereafter on each anniversaryfollowing schedule; provided provided, however, that such LICENSEE’s obligation to pay this fee shall end on the date when LICENSEE is commercially selling a Licensed Product and the license maintenance fees will fee payable shall be creditable against earned royalties pro-rated for the number of months remaining in any given payment period; [Material marked with an asterisk has been omitted from this document pursuant to a request for confidential treatment and has been filed separately with the Securities and Exchange Commissionthat license year.]
(c) LICENSEE shall pay UNIVERSITY milestone payments in the amounts payable according to the following milestone payments for Field 1schedule of events:
(i) IND submission for each Licensed Product $*
Product, provided that each milestone payment identified as (A), (B) and (C) in the table shown in subparagraph 3.1(c)(i) below shall be payable only once per Licensed Product: ; and (ii) First patient dosed in Phase I Clinical Trial for one time on the first occurrence of the applicable event with respect to the first Licensed Product $*
(iii) First patient dosed in Phase II Clinical Trial for Licensed Product $*
(iv) First patient dosed in Phase III Clinical Trial for Licensed Product $*
(v) BLA (or NDA) submission to the FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY the achieve such milestone. The following milestone payments for Field 2shall each be payable up to one (1) time only, regardless of how many Licensed Products achieve the corresponding milestone:
(d) during the Royalty Term, on a per-Licensed Product and country-by-country basis, an earned royalty of:
(i) Completion of [***]on Net Sales in vivo characterization and optimization of cell production for countries where the Licensed Product $*is (A) is an Orphan Drug Product and (B) is Covered by a Valid Claim; and
(ii) First commercial sale of Licensed Product $[*
(d) For Field 1: an earned royalty of * percent (*%) *] on Net Sales of in countries where the Licensed Products For Field 2: Product is (A) is an earned royalty of * percent Orphan Drug Product and (B) not Covered by a Valid Claim.
(iii) in addition to the royalties in Paragraph 3.1(d)(i) and (ii), an additional [*%) **] on Net Sales of where the Licensed Products Product is an Orphan Drug Product if, and only if the Net Sales are by LICENSEE, Sublicensees, and/or Affiliates, provided, however, that a Sublicensee.
(iv) [***] on Net Sales in countries where the event LICENSEE Licensed Product (A) is required to pay royalties to one or more third parties for patent rights necessary to make, use or sell Licensed Products, LICENSEE may deduct $* from the earned royalties payable to UNIVERSITY for every $* LICENSEE actually pays to said third parties; provided, however, in no event shall the amount payable to UNIVERSITY be less than * percent not an Orphan Drug Product and (*%B) of the amount otherwise dueis Covered by a Valid Claim; and
(ev) percent [***] on Net Sales in countries where the Licensed Product (*%A) of all Sublicense fees received is not an Orphan Drug Product and (B) is not Covered by LICENSEE from its Sublicensees that are not earned royalties. All fees and royalty payments specified a Valid Claim; and
(vi) in Paragraphs 3.l (a) through 3.l (e) above shall be paid by LICENSEE pursuant addition to Paragraph 4.3 and shall be delivered by LICENSEE to UNIVERSITY as noted the royalties in Paragraph 10.13.1(d)(iv) and (v), an additional [***] on Net Sales where the Licensed Product is not an Orphan Drug Product if, and only if the Net Sales are by a Sublicensee.
Appears in 1 contract
Fees and Royalties. The parties hereto understand that the fees and royalties payable by LICENSEE to UNIVERSITY Cornell under this Agreement are partial consideration for the license granted herein to LICENSEE under Patent Rightsthe Technology and for the assignment and transfer of ownership and sponsorship of the IND to LICENSEE pursuant to the terms and conditions of Section 5.4(d). LICENSEE shall pay UNIVERSITYCornell:
(a) in recognition of LICENSEE being a new start-up business, a license issue fee and an assignment fee to have the IND assigned and transferred in the amount of * dollars (US$[*)**], of which [***] shall be paid in cash within thirty ((30) days after of Effective Date, and [***] shall be paid in cash upon the first anniversary of the Effective Date; This Paragraph 3.l (a) will survive , and the termination, expiration or assignment remaining [***] shall be paid in the form of a convertible promissory note attached herein as Appendix B and issued by LICENSEE to Cornell contemporaneously with the execution of this AgreementAgreement which shall be convertible into either cash or shares of stock in LICENSEE (at Cornell’s election) upon either the completion of a Series B round of financing by LICENSEE which raises at least at [***] or one year from the Effective Date, whichever shall occur sooner.
(b) license maintenance fees of * dollars (US$*) payable on the first each anniversary of the Effective Date and * dollars (US$*) per year and payable on according to the second anniversary of the Effective Date and annually thereafter on each anniversaryfollowing schedule; provided however, that such LICENSEE's obligation to pay this fee shall end on the date when LICENSEE is commercially selling the first Licensed Product in the first Major Market Region of the Territory, and the license maintenance fees will fee payable shall be creditable against earned royalties pro-rated for the number of months remaining in any given payment period; that license year. Fee payable to Cornell Date [Material marked with an asterisk has been omitted from this document pursuant to ***] 1st - 3rd anniversaries of Effective Date [***] 4th anniversary of Effective Date [***] 5th anniversary of Effective Date [***] 6th anniversary of Effective Date and each subsequent anniversary thereafter, until the date of first commercial sale of a request for confidential treatment and has been filed separately with Licensed Product in the Securities and Exchange Commission.]first Major Market Region
(c) LICENSEE shall pay UNIVERSITY milestone payments in the amounts payable according to the following milestone payments for Field 1:
(i) IND submission for Licensed Product $schedule or events: Amount Date or Event [*
(ii) First patient dosed in Phase I Clinical Trial for Licensed Product $*
(iii) First patient dosed in *] Completion of a Phase II Clinical Trial for Licensed Product $clinical trial [*
(iv) First patient dosed in **] Completion of a Phase III Clinical Trial for Licensed Product $clinical trial [*
(v) BLA (or NDA) submission to **] Marketing approval from the US FDA for Licensed Product $* LICENSEE shall pay UNIVERSITY first indication [***] Marketing approval in each non-US Major Market Region for first indication [***] Marketing approval from the following milestone payments US FDA for Field 2:
(i) Completion of additional indications [***] Marketing approval in vivo characterization and optimization of cell production each non-US Major Market Region for Licensed Product $*
(ii) First commercial sale of Licensed Product $*each additional indication
(d) For Field 1: an earned royalty (i) of * percent ([*%) on Net Sales of Licensed Products For Field 2: an earned royalty of * percent (*%) *] on Net Sales of Licensed Products by LICENSEE, Sublicensees, LICENSEE and/or Affiliates, provided, however, that its Affiliate(s) from the date of first commercial sale of the applicable Licensed Product in the event LICENSEE is required to pay royalties to one or more third parties for patent rights necessary to make, use or sell Licensed Products, LICENSEE may deduct $* from country of sale until the earned royalties payable to UNIVERSITY for every $* LICENSEE actually pays to said third parties; provided, however, in no event shall the amount payable to UNIVERSITY be less than * percent (*%) expiration of the amount otherwise due; and
(e) percent (*%) of all Sublicense fees received by LICENSEE from its Sublicensees that are Term, which is not earned royalties. All fees and subject to any anti-stacking relief for royalty payments specified in Paragraphs 3.l (a) through 3.l (e) above shall be paid by LICENSEE pursuant to Paragraph 4.3 and shall be delivered owed by LICENSEE to UNIVERSITY as noted in Paragraph 10.1a third party.
Appears in 1 contract