Fees and Royalties. 4.1 BBB shall pay RFUCMS milestone fees as follows: i) On entry into [***] of a Product for the treatment or prevention of disease, [***]; ii) On [***] for the treatment or prevention of any disease state [***]; iii) On [***] of a Product for the treatment or prevention of [***]; iv) On first commercial launch of the first Product for [***] that is formally registered under the laws and regulations of the government of any nation or area, [***]. 4.2 BBB shall pay to RFUCMS a percentage of lump-sum payments received by BBB as sub-licence fees as follows: i) For sub-licensees appointed [***] percent; ii) For sub-licensees appointed [***] percent. 4.3 BBB shall pay to RFUCMS royalties as a percentage of Net Sales Value of sales of Product by BBB, its distributors or sub-licensees as follows: *** Confidential treatment request pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission. i) In each territory where one or more Licensed Patents are in force, [***] of NSV for sales of therapeutic Products, [***] of NSV for sales of non-therapeutic Products, such royalties to be payable while at least one Licensed Patent remains in force. ii) In each territory where no Licensed Patent is in force, [***] of NSV for sales of therapeutic Products, and [***] of NSV for sales of non-therapeutic Products, such royalties to be payable for [***] from launch in the territory of the Product to which they relate. 4.4 Any lump-sum payment falling due hereunder shall be paid to RFUCMS not later than [***] from the date of the relevant milestone event or receipt by BBB of sub-licence fees as the case may be. Royalty payments shall be paid quarterly in arrears and shall become due and payable not later than [***] after the end of the calendar quarter to which they relate. 4.5 In the event that BBB is obliged to pay royalties on Products to a third party as a direct consequence of Xx Xxxx’x ceasing to be employed by RFUCMS, BBB shall be entitled to reduce royalty payable to RFUCMS under Article 4.3 above by a value equal to [***] percent of such third party royalty but in no circumstance shall the royalty payable to RFUCMS be reduced by more than [***] percent. 4.6 BBB shall be entitled to offset against royalties payable to RFUCMS under Article 4.3 above a sum equal to [***] percent of expenditure by BBB in prosecution of the Licensed Patents pursuant to Article 5.2 below, provided however that the combined effect of this Article 4.6 and of Article 4.5 above shall not reduce royalty payable to RFUCMS by a total of more than [***] percent of what would otherwise have been payable in any year. 4.7 For the avoidance of doubt, the parties are agreed that any reduction that BBB may be entitled to make shall not apply to any payment due to RFUCMS under Articles 4.1 and 4.2 above.
Appears in 1 contract
Samples: Collaboration and License Agreement (Acologix, Inc.)
Fees and Royalties. 4.1 BBB (a) The Company shall pay RFUCMS milestone fees as follows:to MAYO a [***] royalty fee on the first anniversary of the execution of this contract.
i(b) On entry into The Company shall pay to MAYO a [***] royalty fee on the second anniversary of the execution of this contract.
(c) The Company shall pay to MAYO a royalty fee of [***] within thirty (30) days of Company receiving regulatory approval for the first Licensed Product from the U.S. Food and Drug Administration ("FDA").
(d) The Company shall pay to MAYO a royalty fee of [***] within thirty (30) days of Company receiving regulatory approval of the first stent Licensed Product from the FDA.
(e) The Company shall pay to MAYO a royalty fee of [***] upon successful completion of the FDA phase 3 clinical trials for the first stent Licensed Product.
(f) The Company shall pay to MAYO a royalty fee of [***] within thirty (30) days of Company receiving FDA approval of each Licensed Product after the first stent Licensed Product.
(g) The Company shall pay to MAYO running royalties of [***] of a Product Net Sales for the treatment or prevention of disease, cumulative Net Sales which are less than [***];
ii) On . For the Company's cumulative Net Sales greater than [***] for the treatment or prevention of any disease state but less than [***];
iii) On , the running royalties due to MAYO from the Company shall be [***] of a Product for Net Sales. For the treatment or prevention of Company's cumulative Net Sales greater than [***];
iv) On first commercial launch of , the first Product for [***] that is formally registered under running royalties due to MAYO from the laws and regulations of the government of any nation or area, [***].
4.2 BBB Company shall pay to RFUCMS a percentage of lump-sum payments received by BBB as sub-licence fees as follows:
i) For sub-licensees appointed [***] percent;
ii) For sub-licensees appointed [***] percent.
4.3 BBB shall pay to RFUCMS royalties as a percentage of Net Sales Value of sales of Product by BBB, its distributors or sub-licensees as follows: *** Confidential treatment request pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
i) In each territory where one or more Licensed Patents are in force, be [***] of NSV for sales of therapeutic ProductsNet Sales.
(h) In the event the Company has granted sublicenses under this contract, the Company shall pay to MAYO [***] of NSV any and all Sublicense Revenues; provided, however, that for sales of non-therapeutic Products, such royalties Licensed Products that are stent products MAYO shall receive an amount equal to be payable while at least one Licensed Patent remains in force.
iithe greater of: (i) In each territory where no Licensed Patent is in force, [***] of NSV for sales of therapeutic Products, and Sublicense Revenues; or (ii) [***] of NSV for sales of non-therapeutic Products, such the amount that MAYO would have received if the sale by the sublicensee had been made by COMPANY and therefore considered "Net Sales" rather than "Sublicense Revenues."
(i) No royalties to shall be payable for [***] from launch in on Licensed Product sales between the territory Company and any Affiliate of the Product to Company, in which they relateevent the royalty shall be based upon the Net Sales of the Company's Affiliate.
4.4 Any lump-sum payment falling due hereunder (j) No multiple royalties shall be paid to RFUCMS not later than [***] from the date of the relevant milestone event or receipt by BBB of sub-licence fees as the case may be. Royalty payments shall be paid quarterly in arrears and shall become due and payable not later because any Licensed Product is covered by more than [***] after one patent that is within the end definition of Licensed Rights.
(k) MAYO agrees that no royalties shall be due for the use of the calendar quarter Licensed Products for research and commercial development purposes by the Company and its Affiliates or for use by third parties providing research and development activities on behalf of the Company; in seeking governmental and professional approvals, certifications or endorsements; or for training purposes, except where the Company or its Affiliate receives revenues for the sale of the Licensed Products to the organization using the device for such stated purposes.
(l) To the extent that the Company obtains, subsequent to the execution of this contract, licenses to third party patents or other intellectual property that are necessary to make, use, import or sell Licensed Products, the Company may deduct from the royalties due to MAYO fifty percent (50%) of the royalties due on such third party patents or intellectual property up to an amount equal to fifty percent (50%) of royalties due hereunder.
(m) For purposes of calculating royalties for a Combination Product one of the following methods will be used to determine the appropriate "Net Sales" to which they relate.to apply the applicable royalty rate:
4.5 1. By multiplying the net sales of the Combination Product during the applicable royalty accounting period ("accounting period") by a fraction, the numerator of which is the aggregate gross selling price of the Licensed Product contained in the Combination Product if sold separately, and the denominator of which is the sum of the gross selling price of the Licensed Product, and the Unlicensed Component(s) contained in the Combination Product if sold separately; or
2. In the event that BBB is obliged to pay royalties on Products to a third party as a direct consequence of Xx Xxxx’x ceasing to be employed by RFUCMS, BBB shall be entitled to reduce royalty payable to RFUCMS under Article 4.3 above by a value equal to [***] percent of no such third party royalty but in no circumstance shall the royalty payable to RFUCMS be reduced by more than [***] percent.
4.6 BBB shall be entitled to offset against royalties payable to RFUCMS under Article 4.3 above a sum equal to [***] percent of expenditure by BBB in prosecution separate sales are made of the Licensed Patents pursuant to Article 5.2 below, provided however that the combined effect of this Article 4.6 and of Article 4.5 above shall not reduce royalty payable to RFUCMS by a total of more than [***] percent of what would otherwise have been payable in any year.
4.7 For the avoidance of doubt, the parties are agreed that any reduction that BBB may be entitled to make shall not apply to any payment due to RFUCMS under Articles 4.1 and 4.2 above.Product or the
Appears in 1 contract
Fees and Royalties. 4.1 BBB shall pay RFUCMS milestone fees as follows:
i) On entry into [***] of a Product for the treatment or prevention of disease, [***];
ii) On [***] for the treatment or prevention of any disease state [***];
iii) On [***] of a Product for the treatment or prevention of [***];
iv) On first commercial launch of the first Product for [***] that is formally registered under the laws and regulations of the government of any nation or area, [***].
4.2 BBB shall pay to RFUCMS a percentage of lump-sum payments received by BBB as sub-licence fees as follows:
i) For sub-licensees appointed [***] percent;
ii) For sub-licensees appointed [***] percent.
4.3 BBB shall pay to RFUCMS royalties as a percentage of Net Sales Value of sales of Product by BBB, its distributors or sub-licensees as follows: *** Confidential treatment request pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
i) In each territory where one or more Licensed Patents are in force, [***] of NSV for sales of therapeutic Products, [***] of NSV for sales of non-therapeutic Products, such royalties to be payable while at least one Licensed Patent remains in force.
ii) In each territory where no Licensed Patent is in force, [***] of NSV for sales of therapeutic Products, and [***] of NSV for sales of non-therapeutic Products, such royalties to be payable for [***] from launch in the territory of the Product to which they relate.
4.4 Any lump-sum payment falling due hereunder shall be paid to RFUCMS not later than [***] from the date of the relevant milestone event or receipt by BBB of sub-licence fees as the case may be. Royalty payments shall be paid quarterly in arrears and shall become due and payable not later than [***] after the end of the calendar quarter to which they relate.
4.5 In the event that BBB is obliged to pay royalties on Products to a third party as a direct consequence of Xx Xxxx’x ceasing to be employed by RFUCMS, BBB shall be entitled to reduce royalty payable to RFUCMS under Article 4.3 above by a value equal to [***] percent of such third party royalty but in no circumstance shall the royalty payable to RFUCMS be reduced by more than ]
4.6 [***] percent.
4.6 BBB shall be entitled to offset against royalties payable to RFUCMS under Article 4.3 above a sum equal to [***] percent of expenditure by BBB in prosecution of the Licensed Patents pursuant to Article 5.2 below, provided however that the combined effect of this Article 4.6 and of Article 4.5 above shall not reduce royalty payable to RFUCMS by a total of more than [***] percent of what would otherwise have been payable in any year.]
4.7 For the avoidance of doubt, the parties are agreed that any reduction that BBB may be entitled to make shall not apply to any payment due to RFUCMS under Articles 4.1 and 4.2 above.
Appears in 1 contract
Samples: Collaboration and License Agreement (Acologix, Inc.)
Fees and Royalties. 4.1 BBB 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 Technology, and Patent Rights. LICENSEE shall pay RFUCMS milestone fees as followsUNIVERSITY:
i(a) On entry into in recognition of the consideration paid under the Previous Agreement, and the mutual promises and consideration recited in the contemporaneously-executed Common Interest Agreement, no license or issue fee is due under this Agreement;
(b) license maintenance fees of […***…] of a Product for the treatment per year, due and payable on or prevention of diseasebefore February 28, 2007, and annually thereafter on each anniversary through year 2013; provided however, that LICENSEE’s obligation to pay this fee shall […***…];.
ii(c) On an earned royalty of:
(i) […***…] for the treatment of Net Sales of Patent Products by LICENSEE, an Affiliate, or prevention a Sublicensee ; [By way of any disease state illustration, but not limitation, an example would be sale by LICENSEE (or an Affiliate or Sublicensee) of receptor kits where such kits infringe a claim under Patent Rights. In such event, UNIVERSITY is entitled to […***];
iii) On …] of LICENSEE’s Net Sales or, in the case of a Sublicense, to […***…] of a Product for the treatment or prevention Sublicensee’s Net Sales of such kits.]
(ii) […***];
iv…] of Net Sales of Technology Products by LICENSEE,an Affiliate, or a Sublicensee; [By way of illustration, but not limitation, an example would be sale by LICENSEE (or an Affiliate or Sublicensee) On first commercial launch of the first Product for receptor kits where such kits do not infringe a claim under Patent Rights but use Property Rights. In such event, UNIVERSITY is entitled to […***…] that is formally registered under of LICENSEE’s Net Sales or, in the laws and regulations case of the government of any nation or areaa Sublicense, to […***…] of Sublicensee’s Net Sales of such kits.].
4.2 BBB shall pay to RFUCMS a percentage of lump-sum payments received by BBB as sub-licence fees as follows:
i(iii) For sub-licensees appointed […***…] percent;
iiof Net Sales of Patent-Enabled Identified Products by LICENSEE, an Affiliate, or a Sublicensee; [By way of illustration, but not limitation, an example would be direct sale by LICENSEE (or an Affiliate or Sublicensee of Patent Rights) For sub-licensees appointed of a compound identified by LICENSEE (or, in the case of an Affiliate or Sublicensee, a compound identified by such Affiliate or Sublicensee) using the Patent Rights. In such event, UNIVERSITY is entitled to […***…] percentof LICENSEE’s Net Sales or, in the case of a Sublicense, to […***…] of Sublicensee’s Net Sales.]
4.3 BBB shall pay to RFUCMS royalties as a percentage (iv) […***…] of Net Sales Value of sales Technology-Enabled Identified Products by LICENSEE, an Affiliate, or a Sublicensee; [By way of Product illustration, but not limitation, an example would be direct sale by BBBLICENSEE (or direct sale by an Affiliate or Sublicensee of Property Rights) of a compound identified by LICENSEE (or, its distributors in the case of an Affiliate or sub-licensees as follows: *** Confidential treatment request pursuant Sublicensee, a compound identified by such Affiliate or Sublicensee) using the Technology Product. In such event, UNIVERSITY is entitled to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
i) In each territory where one or more Licensed Patents are in force, […***…] of NSV for sales LICENSEE’s Net Sales or, in the case of therapeutic Productsa Sublicense, to […***…] of NSV for sales of non-therapeutic Products, such royalties to be payable while at least one Licensed Patent remains in forceSublicensee’s Net Sales.]
ii(v) In each territory where no Licensed Patent is in force, […***…] of NSV Net Sales received by LICENSEE, an Affiliate or a Sublicensee from a third party for sales lease or license of therapeutic Patent-Enabled Identified Products; [By way of illustration, but not limitation, examples would be: (a) sale by a LICENSEE collaborator, which collaborator is not a Sublicensee of the Patent Rights or Property Rights, of a compound identified by LICENSEE using the Patent Rights; and (b) in the event of a Sublicense of Patent Rights or Property Rights, sale by a Sublicensee’s collaborator of a compound identified by Sublicensee using the Patent Rights. The parties acknowledge that the current agreements between LICENSEE and its collaborators fall under this royalty scheme and UNIVERSITY is entitled to […***…] of NSV for sales LICENSEE’s Net Sales (i.e. royalty revenue) to its collaborators. In the case of non-therapeutic Products(a) above, such royalties UNIVERSITY is entitled to be payable for […***…] from launch in the territory of the Product LICENSEE’s Net Sales to which they relate.
4.4 Any lump-sum payment falling due hereunder shall be paid to RFUCMS its collaborator (not later than […***…] from the date of the relevant milestone event or receipt by BBB of sub-licence fees as collaborator’s Net Sales). In the case may be. Royalty payments shall be paid quarterly in arrears and shall become due and payable not later than of (b) above, UNIVERSITY is entitled to […***…] after the end of the calendar quarter Sublicensee’s Net Sales (i.e. royalty revenue) to which they relate.
4.5 In the event that BBB is obliged to pay royalties on Products to a third party as a direct consequence of Xx Xxxx’x ceasing to be employed by RFUCMS, BBB shall be entitled to reduce royalty payable to RFUCMS under Article 4.3 above by a value equal to its collaborator (not […***…] percent of such third party royalty but in no circumstance shall the royalty payable to RFUCMS be reduced by more than [***] percent.
4.6 BBB shall be entitled to offset against royalties payable to RFUCMS under Article 4.3 above a sum equal to [***] percent of expenditure by BBB in prosecution of the Licensed Patents pursuant to Article 5.2 below, provided however that the combined effect of this Article 4.6 and of Article 4.5 above shall not reduce royalty payable to RFUCMS by a total of more than [***] percent of what would otherwise have been payable in any year.
4.7 collaborator’s Net Sales). For the avoidance of doubt, the parties are agreed that any reduction that BBB may be entitled to make shall this (v) does not apply to Sublicenses of Patent Rights or Property Rights.]
(vi) […***…] of Net Sales received by LICENSEE , an Affiliate or a Sublicensee from a third party for lease or license of Technology-Enabled Identified Products; [By way of illustration, but not limitation, examples would be: (a) sale by a LICENSEE collaborator, which collaborator is not a Sublicensee of the Patent Rights or Property Rights, of a compound identified by LICENSEE using the Property Rights; and (b) in the event of a Sublicense of Patent Rights or Property Rights, sale by a Sublicensee’s collaborator of a compound identified by Sublicensee using the Property Rights. In the case of (a) above, UNIVERSITY is entitled to […***…] of LICENSEE’s Net Sales (i.e. royalty revenue) to its collaborator (not […***…] of the collaborator’s Net Sales). In the case of (b) above, UNIVERSITY is entitled to […***…] of Sublicensee’s Net Sales (i.e. royalty revenue) to its collaborator (not […***…] of the collaborator’s Net Sales). For the avoidance of doubt, this (v) does not apply to Sublicenses of Patent Rights or Property Rights.] provided, however, that the earned royalty due on Net Sales of Combination Product by LICENSEE and/or its Affiliate(s) shall be calculated as below: Earned Royalties due UNIVERSITY = [A/(A+B)] x Royalty Rate on Net Sales of the Licensed Products or Enabled Products x Net Sales of Combination Product, where: A is the separately listed sale price of the Licensed Product/Enabled Product or Licensed Product/Enabled Product components; and B is the separately listed sale prices of the individual products or product components, respectively, that satisfied the requirements outlined in Paragraph 1.13. For (v) and (vi) above, Net Sales shall not include Excluded Revenue. For the avoidance of doubt, if LICENSEE has solely licensed a compound(s) identified through screening with the Patent Rights but has not Sublicensed the Patent Rights, […***…] of LICENSEE’s Net Sales will be due. In the event of an overlap of 3.1(c)(i) — 3.1(c)(vi) above, there shall be no double royalty, but only the higher royalty shall be paid, for any single Licensed Product or Enabled Product.
(d) in the case of Sublicenses to Patent Rights or Property Rights (and not licenses solely to Patent-Enabled Identified Products or Technology-Enabled Identified Products) […***…] of all Sublicense Fees received by LICENSEE from its Sublicensees. In the event of an overlap with 3.1(c)(i) — 3.1(c)(vi) above, there shall be no double payment due obligation, and only the higher royalty shall be paid.
(e) beginning the calendar year of 2014, if the total earned royalties paid by LICENSEE, under Paragraph 3.1(c), on behalf of LICENSEE, its Sublicensee or Affiliate, in any such calendar year, cumulatively amounts to RFUCMS less than the following: [...***...] 2014 (“minimum annual royalty”), LICENSEE shall pay to UNIVERSITY a minimum annual royalty on or before February 28 following the last quarter of such calendar year the difference between amount noted above and the total earned royalty paid by LICENSEE for such calendar year under Articles 4.1 Paragraph 3.1(c); provided, however, that for all calendar years succeeding 2018, and 4.2 aboveuntil the termination of this Agreement, the minimum annual royalty shall be […***…] per year. All fees and royalty payments specified in Paragraphs 3.1(a) through 3.1(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
Samples: License Agreement (Senomyx Inc)
Fees and Royalties. 4.1 BBB 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 RFUCMS milestone fees as followsUNIVERSITY:
i(a) On entry into a license issue fee of Three Thousand Five Hundred dollars (US$3,500), within […***…] after the Effective Date; If the LICENSEE proposes to sell any equity securities or securities that are convertible into equity securities of a Product for the treatment or prevention of diseaseLICENSEE, then the UNIVERSITY and/or its Assignee (as defined below) will have the right to purchase up to […***…];% of the securities issued in each offering on the same terms and conditions as are offered to the other purchasers in each such financing, subject to changes to reflect the University’s public university status, which are likely similar to any changes to be made to any shareholder agreement the University signs to receive shares. The term “Assignee” means (a) any entity to which the UNIVERSITY’s participation rights under this section have been assigned either by the UNIVERSITY or another entity, or (b) any entity that is controlled by the UNIVERSITY. This paragraph shall survive the termination of this agreement.
ii(b) On license maintenance fees of […***…] for per year and payable on the treatment first anniversary of the Effective Date and annually thereafter on each anniversary; provided however, that LICENSEE’s obligation to pay this fee shall end on the date when LICENSEE is commercially selling a Licensed Product;
(c) milestone payments in the amounts payable according to the following schedule or prevention of any disease state events:
(i) $[…***];
iii) On …] […***] …]
(d) an earned royalty on Net Sales of a Product for Licensed Products by LICENSEE and/or its Affiliate(s) in accordance with the treatment or prevention of following schedule:
(i) […***…]% Net Sales of the most recently completed quarter are less than $[…***…]
(ii) […***…]% Net Sales of the most recently completed quarter are greater than or equal to $[…***…] and less than $[…***…]
(iii) […***…]% Net Sales of the most recently completed quarter are greater than or equal to $[…***…] and less than $[…***…]
(iv) […***…]% Net Sales of the most recently completed quarter are greater than or equal to $[…***…] and less than $[…***…].
(v) […***…]% Net Sales of the most recently completed quarter are greater than $[…***…].
(e) A percentage of all Sublicense fees received by LICENSEE from its Sublicensees that are not earned royalties in accordance with the following schedule:
(i) […***…]% […***…]
(ii) […***…]% […***…]
(iii) […***…]% […***…]
(iv) […***…]% […***…]
(v) […***…]% […***…]
(f) on each and every Sublicense royalty payment received by LICENSEE from its Sublicensees on sales of Licensed Product by Sublicensee, the royalties based on the royalty rate in Paragraph 3.1(d) as applied to Net Sales of Sublicensee;
iv(g) On first beginning the calendar year of commercial launch sales of the first Licensed Product for by LICENSEE, its Sublicensee, or an Affiliate and if the total earned royalties paid by LICENSEE under Paragraphs 3.1(d) and (f) to UNIVERSITY in any such year cumulatively amounts to less than […***…] that is formally registered under the laws and regulations of the government of any nation or area(“minimum annual royalty”), [***].
4.2 BBB LICENSEE shall pay to RFUCMS UNIVERSITY a percentage minimum annual royalty on or before February 28 following the last quarter of lump-sum payments received such year the difference between amount noted above and the total earned royalty paid by BBB as sub-licence fees as follows:
iLICENSEE for such year under Paragraphs 3.1(d) For sub-licensees appointed [***] percent;
ii) For sub-licensees appointed [***] percent.
4.3 BBB shall pay to RFUCMS royalties as a percentage and (f); provided, however, that for the year of Net Sales Value of commercial sales of Product by BBBthe first Licensed Product, its distributors or subthe amount of minimum annual royalty payable shall be pro-licensees as follows: *** Confidential treatment request pursuant to a request rated for confidential treatment filed with the Securities number of months remaining in that calendar year. All fees and Exchange Commission. Omitted portions have been filed separately with the Commission.
iroyalty payments specified in Paragraphs 3.1(a) In each territory where one or more Licensed Patents are in force, [***] of NSV for sales of therapeutic Products, [***] of NSV for sales of non-therapeutic Products, such royalties to be payable while at least one Licensed Patent remains in force.
iithrough 3.1(g) In each territory where no Licensed Patent is in force, [***] of NSV for sales of therapeutic Products, and [***] of NSV for sales of non-therapeutic Products, such royalties to be payable for [***] from launch in the territory of the Product to which they relate.
4.4 Any lump-sum payment falling due hereunder above shall be paid by LICENSEE pursuant to RFUCMS not later than [***] from the date of the relevant milestone event or receipt by BBB of sub-licence fees as the case may be. Royalty payments Paragraph 4.3 and shall be paid quarterly delivered by LICENSEE to UNIVERSITY as noted in arrears and shall become due and payable not later than [***] after the end of the calendar quarter to which they relateParagraph 10.1.
4.5 In the event that BBB is obliged to pay royalties on Products to a third party as a direct consequence of Xx Xxxx’x ceasing to be employed by RFUCMS, BBB shall be entitled to reduce royalty payable to RFUCMS under Article 4.3 above by a value equal to [***] percent of such third party royalty but in no circumstance shall the royalty payable to RFUCMS be reduced by more than [***] percent.
4.6 BBB shall be entitled to offset against royalties payable to RFUCMS under Article 4.3 above a sum equal to [***] percent of expenditure by BBB in prosecution of the Licensed Patents pursuant to Article 5.2 below, provided however that the combined effect of this Article 4.6 and of Article 4.5 above shall not reduce royalty payable to RFUCMS by a total of more than [***] percent of what would otherwise have been payable in any year.
4.7 For the avoidance of doubt, the parties are agreed that any reduction that BBB may be entitled to make shall not apply to any payment due to RFUCMS under Articles 4.1 and 4.2 above.
Appears in 1 contract
Fees and Royalties. 4.1 BBB 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 Technology, and Patent Rights. LICENSEE shall pay RFUCMS milestone fees as followsUNIVERSITY:
i(a) On entry into in recognition of the consideration paid under the Previous Agreement, and the mutual promises and consideration recited in the contemporaneously-executed Common Interest Agreement, no license or issue fee is due under this Agreement;
(b) license maintenance fees of […***…] of a Product for the treatment per year, due and payable on or prevention of diseasebefore February 28, 2007, and annually thereafter on each anniversary through year 2013; provided however, that LICENSEE’s obligation to pay this fee shall […***…];.
ii(c) On an earned royalty of:
(i) […***…] for the treatment of Net Sales of Patent Products by LICENSEE, an Affiliate, or prevention a Sublicensee ; [By way of any disease state illustration, but not limitation, an example would be sale by LICENSEE (or an Affiliate or Sublicensee) of receptor kits where such kits infringe a claim under Patent Rights. In such event, UNIVERSITY is entitled to […***];
iii) On …] of LICENSEE’s Net Sales or, in the case of a Sublicense, to […***…] of a Product for the treatment or prevention Sublicensee’s Net Sales of such kits.]
(ii) […***];
iv…] of Net Sales of Technology Products by LICENSEE,an Affiliate, or a Sublicensee; [By way of illustration, but not limitation, an example would be sale by LICENSEE (or an Affiliate or Sublicensee) On first commercial launch of the first Product for receptor kits where such kits do not infringe a claim under Patent Rights but use Property Rights. In such event, UNIVERSITY is entitled to […***…] that is formally registered under of LICENSEE’s Net Sales or, in the laws and regulations case of the government of any nation or areaa Sublicense, to […***…] of Sublicensee’s Net Sales of such kits.].
4.2 BBB shall pay to RFUCMS a percentage of lump-sum payments received by BBB as sub-licence fees as follows:
i(iii) For sub-licensees appointed […***…] percent;
iiof Net Sales of Patent-Enabled Identified Products by LICENSEE, an Affiliate, or a Sublicensee; [By way of illustration, but not limitation, an example would be direct sale by LICENSEE (or an Affiliate or Sublicensee of Patent Rights) For sub-licensees appointed of a compound identified by LICENSEE (or, in the case of an Affiliate or Sublicensee, a compound identified by such Affiliate or Sublicensee) using the Patent Rights. In such event, UNIVERSITY is entitled to […***…] percentof LICENSEE’s Net Sales or, in the case of a Sublicense, to […***…] of Sublicensee’s Net Sales.]
4.3 BBB shall pay to RFUCMS royalties as a percentage (iv) […***…] of Net Sales Value of sales Technology-Enabled Identified Products by LICENSEE, an Affiliate, or a Sublicensee; [By way of Product illustration, but not limitation, an example would be direct sale by BBBLICENSEE (or direct sale by an Affiliate or Sublicensee of Property Rights) of a compound identified by LICENSEE (or, its distributors in the case of an Affiliate or sub-licensees as follows: *** Confidential treatment request pursuant Sublicensee, a compound identified by such Affiliate or Sublicensee) using the Technology Product. In such event, UNIVERSITY is entitled to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
i) In each territory where one or more Licensed Patents are in force, […***…] of NSV for sales LICENSEE’s Net Sales or, in the case of therapeutic Productsa Sublicense, to […***…] of NSV for sales of non-therapeutic Products, such royalties to be payable while at least one Licensed Patent remains in forceSublicensee’s Net Sales.
ii) In each territory where no Licensed Patent is in force, [] ***] of NSV for sales of therapeutic Products, and Confidential Treatment Requested
(v) […***…] of NSV Net Sales received by LICENSEE, an Affiliate or a Sublicensee from a third party for sales lease or license of nonPatent-therapeutic Enabled Identified Products; [By way of illustration, such royalties but not limitation, examples would be: (a) sale by a LICENSEE collaborator, which collaborator is not a Sublicensee of the Patent Rights or Property Rights, of a compound identified by LICENSEE using the Patent Rights; and (b) in the event of a Sublicense of Patent Rights or Property Rights, sale by a Sublicensee’s collaborator of a compound identified by Sublicensee using the Patent Rights. The parties acknowledge that the current agreements between LICENSEE and its collaborators fall under this royalty scheme and UNIVERSITY is entitled to be payable for […***…] from launch in of LICENSEE’s Net Sales (i.e. royalty revenue) to its collaborators. In the territory case of the Product (a) above, UNIVERSITY is entitled to which they relate.
4.4 Any lump-sum payment falling due hereunder shall be paid to RFUCMS not later than […***…] from the date of the relevant milestone event or receipt by BBB of sub-licence fees as the case may be. Royalty payments shall be paid quarterly in arrears and shall become due and payable LICENSEE’s Net Sales to its collaborator (not later than […***…] after the end of the calendar quarter to which they relate.
4.5 collaborator’s Net Sales). In the event that BBB case of (b) above, UNIVERSITY is obliged to pay royalties on Products to a third party as a direct consequence of Xx Xxxx’x ceasing to be employed by RFUCMS, BBB shall be entitled to reduce royalty payable to RFUCMS under Article 4.3 above by a value equal to […***…] percent of such third party Sublicensee’s Net Sales (i.e. royalty but in no circumstance shall the royalty payable revenue) to RFUCMS be reduced by more than its collaborator (not […***…] percent.
4.6 BBB shall be entitled to offset against royalties payable to RFUCMS under Article 4.3 above a sum equal to [***] percent of expenditure by BBB in prosecution of the Licensed Patents pursuant to Article 5.2 below, provided however that the combined effect of this Article 4.6 and of Article 4.5 above shall not reduce royalty payable to RFUCMS by a total of more than [***] percent of what would otherwise have been payable in any year.
4.7 collaborator’s Net Sales). For the avoidance of doubt, the parties are agreed that any reduction that BBB may be entitled to make shall this (v) does not apply to Sublicenses of Patent Rights or Property Rights.]
(vi) […***…] of Net Sales received by LICENSEE , an Affiliate or a Sublicensee from a third party for lease or license of Technology-Enabled Identified Products; [By way of illustration, but not limitation, examples would be: (a) sale by a LICENSEE collaborator, which collaborator is not a Sublicensee of the Patent Rights or Property Rights, of a compound identified by LICENSEE using the Property Rights; and (b) in the event of a Sublicense of Patent Rights or Property Rights, sale by a Sublicensee’s collaborator of a compound identified by Sublicensee using the Property Rights. In the case of (a) above, UNIVERSITY is entitled to […***…] of LICENSEE’s Net Sales (i.e. royalty revenue) to its collaborator (not […***…] of the collaborator’s Net Sales). In the case of (b) above, UNIVERSITY is entitled to […***…] of Sublicensee’s Net Sales (i.e. royalty revenue) to its collaborator (not […***…] of the collaborator’s Net Sales). For the avoidance of doubt, this (v) does not apply to Sublicenses of Patent Rights or Property Rights.] provided, however, that the earned royalty due on Net Sales of Combination Product by LICENSEE and/or its Affiliate(s) shall be calculated as below: Earned Royalties due UNIVERSITY = [A/(A+B)] x Royalty Rate on Net Sales of the Licensed Products or Enabled Products x Net Sales of Combination Product, where: A is the separately listed sale price of the Licensed Product/Enabled Product or Licensed Product/Enabled Product components; and B is the separately listed sale prices of the individual products or product components, respectively, that satisfied the requirements outlined in Paragraph 1.13. For (v) and (vi) above, Net Sales shall not include Excluded Revenue. For the avoidance of doubt, if LICENSEE has solely licensed a compound(s) identified through screening with the Patent Rights but has not Sublicensed the Patent Rights, […***…] of LICENSEE’s Net Sales will be due. In the event of an overlap of 3.1(c)(i) — 3.1(c)(vi) above, there shall be no ***Confidential Treatment Requested double royalty, but only the higher royalty shall be paid, for any single Licensed Product or Enabled Product.
(d) in the case of Sublicenses to Patent Rights or Property Rights (and not licenses solely to Patent-Enabled Identified Products or Technology-Enabled Identified Products) […***…] of all Sublicense Fees received by LICENSEE from its Sublicensees. In the event of an overlap with 3.1(c)(i) — 3.1(c)(vi) above, there shall be no double payment due obligation, and only the higher royalty shall be paid.
(e) beginning the calendar year of 2014, if the total earned royalties paid by LICENSEE, under Paragraph 3.1(c), on behalf of LICENSEE, its Sublicensee or Affiliate, in any such calendar year, cumulatively amounts to RFUCMS less than the following: US Dollars payable to UNIVERSITY: Calendar year: [...***...] 2014 2015 2016 2017 2018 (“minimum annual royalty”), LICENSEE shall pay to UNIVERSITY a minimum annual royalty on or before February 28 following the last quarter of such calendar year the difference between amount noted above and the total earned royalty paid by LICENSEE for such calendar year under Articles 4.1 Paragraph 3.1(c); provided, however, that for all calendar years succeeding 2018, and 4.2 aboveuntil the termination of this Agreement, the minimum annual royalty shall be […***…] per year. All fees and royalty payments specified in Paragraphs 3.1(a) through 3.1(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
Samples: License Agreement
