Common use of Know-How Royalty Clause in Contracts

Know-How Royalty. In the event that a Licensed Product, on a Licensed Product-by-Licensed Product and country-by-country basis, is not Covered by a Valid Claim included within the FivePrime Collaboration Patents or Joint Patents in such country as of the date of the First Commercial Sale of Licensed Product in such country, then GSK shall pay to FivePrime a royalty equal to *** percent (***%) of the royalty rates set forth in Section 6.4.1 (the “Know-How Royalty”) until the tenth (10th) anniversary of the First Commercial Sale of such Licensed Product in such country, after which GSK shall have no further obligation to pay a Know-How Royalty for Net Sales of Licensed Product accruing in a particular country. If, however, during such ten years during which GSK is paying to FivePrime a Know-How Royalty for a Licensed Product in a country as set forth in this Section 6.4.2(b), such Licensed Product becomes Covered by a Valid Claim of any FivePrime Collaboration Patents or Joint Patents in such country, then GSK shall thereafter pay royalties to FivePrime as set forth in Section 6.4.2(a) above for the remainder of the Royalty Term. For the avoidance of doubt, in the event that GSK is paying a royalty to FivePrime pursuant to Section 6.4.2(a) above for a Licensed Product in a particular country, then GSK shall not also pay to FivePrime the Know-How Royalty as set forth in this Section 6.4.2(b).

Know-How Royalty. In the event that a Licensed Product, on a Licensed Product-by-Licensed Product and country-by-country basis, is not Covered by a Valid Claim included within the FivePrime Collaboration Patents Patent Rights or Joint Patents Patent Rights in such country as of the date of the First Commercial Sale of Licensed Product in such country, then GSK shall pay to FivePrime a royalty equal to *** percent (***%) of the royalty rates set forth in Section 6.4.1 (the “Know-How Royalty”) until the tenth twelfth (10th12th) anniversary of the First Commercial Sale of such Licensed Product in such country, after which GSK shall have no further obligation to pay a Know-How Royalty for Net Sales of Licensed Product accruing in a particular country. If, however, during such ten twelve years during which GSK is paying to FivePrime a Know-How Royalty for a Licensed Product in a country as set forth in this Section 6.4.2(b), such Licensed Product becomes Covered covered by a Valid Claim of any FivePrime Collaboration Patents Patent Rights or Joint Patents Patent Rights in such country, then GSK shall thereafter pay royalties to FivePrime as set forth in Section 6.4.2(a) above for the remainder of the Royalty Term. For the avoidance of doubt, in the event that GSK is paying a royalty to FivePrime pursuant to Section 6.4.2(a) above for a Licensed Product in a particular country, then GSK shall not also pay to FivePrime the Know-How Royalty as set forth in this Section 6.4.2(b).

Know-How Royalty. In the event that a Licensed ProductIf, on a Licensed Product-by-Licensed Product and country-by-country and GSK Product-by-GSK Product basis, there is not Covered by a no Valid Claim included within of a Patent in the FivePrime Collaboration Patents or Joint Patents in such country as Exclusively Licensed IP that covers [ * ] of the date GSK Product at the time of the First Commercial Sale (or such Valid Claim exists at the time of First Commercial Sale and subsequently expires) and no applicable data exclusivity exists under statute, regulation or other governmental action at the time of sale, but such [ * ] is covered by either (i) a pending claim of a patent application within the Exclusively Licensed Product in IP or (ii) Information within the Exclusively Licensed IP that has been maintained as a trade secret as evidenced by Dynavax’s, or for jointly owned Information, both Dynavax’s and GSK’s, written records up until the time of such countryNet Sales of such GSK Product, then GSK shall pay to FivePrime Dynavax a know-how royalty on Net Sales of such GSK Product in such country at royalty rates equal to **[ * percent (***%) ] of the royalty rates set forth in the table in Section 6.4.1 above (the “Know-How Royalty”), subject to the remainder of this Section 6.4.2 and Section 6.4.3, and subject to a further reduction (in addition to the reductions set forth in the remainder of Section 6.4.2 and 6.4.3) until of [ * ] from the tenth (10th) anniversary Know-How Royalty rates that would otherwise be applicable if the only pending claim of a patent application within the First Commercial Sale of Exclusively Licensed IP or the only Information within the Exclusively Licensed IP qualifying under this paragraph is [ * ] with respect to the applicable Dynavax Program. If such Licensed Product pending claim subsequently issues, then the rates set forth in such countrythe table in Section 6.4.1 and as adjusted under Section 6.4.1 above shall thereafter apply, after which and GSK shall have pay to Dynavax an amount equal to the amounts previously paid with respect to GSK Products covered by such claim under this Section 6.4.2(a). In no further obligation to pay event shall a Know-How Royalty be payable for Net Sales of Licensed Product accruing in a particular country. If, however, during such ten years during which GSK is paying to FivePrime a Know-How Royalty for a Licensed Product in a country as set forth during any period in this Section 6.4.2(b), which a Patent Royalty is payable for such Licensed GSK Product becomes Covered by a Valid Claim of any FivePrime Collaboration Patents or Joint Patents in such country, then GSK shall thereafter pay royalties to FivePrime as set forth in Section 6.4.2(a) above for the remainder of the Royalty Term. For the avoidance of doubt, in the event that GSK is paying a royalty to FivePrime pursuant to Section 6.4.2(a) above for a Licensed Product in a particular country, then GSK shall not also pay to FivePrime the Know-How Royalty as set forth in this Section 6.4.2(b).