License Fee and Royalties. 3.1 As part of the consideration for granting the license herein, Licensee will reimburse the University for its reasonable expenditures (including attorney's fees) arising out of the patenting of the Invention pursuant to Article 10 of this Agreement. The reimbursement of patenting costs shall be non-refundable and shall not be a credit against any other amounts due hereunder. Reimbursement of patenting costs shall be due upon monthly xxxxxxxx from University. (a) Beginning on the effective date of this Agreement and continuing for the life of this Agreement, Licensee will pay University a running royalty of six percent (6%) of all Net Sales of the Licensed Product(s). In the event of sales of Licensed Product(s) in any country where a patent has not issued or wherever a competitor has commenced marketing a product generically equivalent to a Licensed Product, said royalty rate shall be reduced by 50%. (b) In the event a Licensed Product is a product in which the active compound is an invention of the University and the use thereof is not an invention of the University, in whole or in part, then the royalty set forth in 3.2(a) shall be 4% rather than 6%. No royalty shall be owed for sales of any product wherein the University has no composition of matter patent protection or the active ingredient and the use thereof is not an invention of the University, in whole or in part. 3.3 Licensee agrees to make quarterly written reports to University within 30 days after the first days of each January, April, July, and October during the life of this Agreement and as of such dates, stating in each such report the number, description, and aggregate Net Selling Prices of Licensed Products sold or otherwise disposed of during the preceding three calendar months and upon which royalty is payable as provided in Article 3.2 hereof. The first such report shall include all such Licensed Products so sold or otherwise disposed of prior to the date of such report. 3.4 Concurrently with the making of each such report, Licensee shall pay to the University royalties at the rate specified in this Agreement on the Licensed Products included therein. 3.5 If in any calendar year during the term of this Agreement after approval of a New Drug Application for a Licensed Product, total amounts payable under paragraph 3.2 hereof are less than $50,000.00, Licensee shall pay the University within thirty (30) days after the end of such calendar year, the difference between the amounts payable for such calendar year and said minimum amount. 3.6 Should this Agreement become effective or terminate or expire during a calendar year, the minimum royalty under paragraph 3.5 for such portion of a year shall be determined by multiplying the minimum royalty set forth in said paragraph for the year in which this Agreement becomes effective, terminates or expires, by a fraction, the numerator of which shall be the number of days during such calendar year for which this Agreement shall be in effect and the denominator of which shall be 365. 3.7 To the extent the University shall have received payments pursuant to a Sponsored Research Agreement ("Sponsored Research Funds") in connection with a Licensed Field, the amount of royalty payments due hereunder with respect to Net Sales of a Licensed Product within such Licensed Field shall be reduced by the amount of such Sponsored Research Funds up to 50% of the royalties due for such quarter, and such reduction shall continue until all applicable Sponsored Research Funds have been credited against such royalties.
Appears in 1 contract
License Fee and Royalties. 3.1 As part 3.1. In consideration for the licenses granted hereunder, Licensee shall issue a total of [***] ([***]) shares of Common Stock of Licensee $.01 par value per share, in the name of University within [***] ([***]) days of the consideration for granting Effective Date of this Agreement, provided that University enters into a restricted stock agreement in the license herein, form attached hereto as Appendix C.
3.2. The parties acknowledge that Licensee will reimburse the has paid University for its reasonable expenditures all past costs (including reasonable attorney's ’s fees) arising out of the patenting filing, prosecution, or maintenance of the Invention Patents. Licensee will pay a further license fee in the form of payment of future costs (including attorney’s fees) arising out of the filing and prosecution of the Patents covering the Inventions pursuant to Article 10 XI of this Agreement. The reimbursement Payment of patenting such costs shall be non-refundable and shall not be a credit against any other amounts due hereunder. Reimbursement of patenting costs shall be due upon monthly xxxxxxxx from University.
(ai) Beginning on the effective date Effective Date of this Agreement and continuing for continuing, on a country-by-country basis, until the life last to expire Valid Claim of Patents covering such Licensed Products, Licensee will pay University a running patent royalty on all Net Sales of Licensed Products in the Licensed Field covered by a Valid Claim of the Patents, in accordance with the chart below: NET SALES OF LICENSED PRODUCT(S) ROYALTY RATE [***] [***] [***] [***]
(ii) During the Term of this Agreement, Licensee will pay University a running technology royalty of six percent (6%) of on all Net Sales of Licensed Products in the Licensed Product(s). Field not covered by a Valid Claim of the Patents but whose manufacture, use, sale, offer for sale or importation is covered by University Technology, in accordance with the chart below: NET SALES OF LICENSED PRODUCT(S) ROYALTY RATE [***] [***] [***] [***]
(iii) In addition to the foregoing, the parties acknowledge and agree that in the event a claim of sales a pending patent application ceases to be a Valid Claim pursuant to the last sentence of Licensed Product(s) Article 1.23, and such pending patent application later issues during the Term of this Agreement, Licensee shall pay University [***] if such claim of the pending patent application had not ceased to be a Valid Claim in any country where a patent has not issued or wherever a competitor has commenced marketing a product generically equivalent the first instance pursuant to a Licensed ProductArticle 1.23, said royalty rate shall be reduced by 50%and [***].
(bi) In the event a any Licensed Product in the Licensed Field is a product in which combination of one or more Licensed Compounds with one or more other active ingredients not licensed hereunder, Net Sales for purposes of determining royalty payments on such combination shall be calculated by [***].
(ii) In the active compound is an invention of the University and the use thereof event that it is not an invention of possible to determine the Universitygross selling price for each ingredient, in whole or in part, then the royalty set forth in 3.2(a) Net Sales shall be 4% rather than 6%calculated by [***].
3.5. No royalty shall be owed for sales Beginning with the date of First Commercial Sale of any product wherein Licensed Product in the University has no composition of matter patent protection or the active ingredient and the use thereof is not an invention of the UniversityLicensed Field, in whole or in part.
3.3 Licensee agrees to make quarterly written reports to University within 30 [***] ([***]) days after the first (1st) days of each January, April, July, and October during the life Term of this Agreement and as of such dates, stating in each such report the number, description, and aggregate Net Selling Prices Sales of Licensed Products sold sold, used, or otherwise disposed of during the preceding [***] calendar months (each such three calendar months a “Royalty Quarter”) and upon which a royalty or percentage of Sublicense Income is payable as provided in Article 3.2 Articles 3.3 or IV hereof, as appropriate. The first [***] such report shall include all such Net Sales of Licensed Products so sold or otherwise disposed of made prior to the date of such report.
3.4 Concurrently with . Until Licensee has achieved the making First Commercial Sale of Licensed Product, a report shall be submitted by Licensee at the end of each such report, Licensee shall pay to January after the University royalties at the rate specified in this Agreement on the Licensed Products included therein.
3.5 If in any calendar year during the term Effective Date of this Agreement after approval and will include a full written report summarizing Licensee’s technical and other efforts made towards such First Commercial Sale of a New Drug Application for a Licensed Product.
3.6. In the event that it is necessary or required for Licensee to make royalty or other payments to one or more third parties in order for Licensee or any Sublicensee to make, total amounts payable under paragraph 3.2 hereof are less than $50,000.00use, or sell Licensed Products, Licensee shall pay the University within thirty may offset a total of [***] percent (30[***]%) days after the end of such calendar year, the difference between the amounts payable for such calendar year and said minimum amount.
3.6 Should this Agreement become effective or terminate or expire during a calendar year, the minimum royalty under paragraph 3.5 for such portion of a year shall be determined by multiplying the minimum royalty set forth in said paragraph for the year in which this Agreement becomes effective, terminates or expires, by a fraction, the numerator of which shall be the number of days during such calendar year for which this Agreement shall be in effect and the denominator of which shall be 365.
3.7 To the extent the University shall have received third-party payments pursuant to a Sponsored Research Agreement ("Sponsored Research Funds") in connection with a Licensed Field, the amount of against any royalty payments and/or percentage of Sublicense Income, as appropriate and in the Royalty Quarter they are due, that are otherwise due hereunder with respect to Net Sales University hereunder, provided that in no event shall the royalty payments or percentage of a Licensed Product within such Licensed Field shall Sublicense Income otherwise due University be reduced by more than [***] percent ([***]%) in any Royalty Quarter. Notwithstanding the amount foregoing, in no event shall Licensee offset third-party payments against any royalty payments and/or percentage of such Sponsored Research Funds up to 50% of the royalties Sublicense Income that are otherwise due for such quarter, and such reduction shall continue until all applicable Sponsored Research Funds have been credited against such royaltiesUniversity hereunder [***].
Appears in 1 contract
License Fee and Royalties. 3.1 As part of the consideration for granting the license herein, Licensee will reimburse the University for its reasonable expenditures (including attorney's fees) arising out of the patenting of the Invention pursuant to Article 10 of this Agreement. The reimbursement of patenting costs shall be non-refundable and shall not be a credit against any other amounts due hereunder. Reimbursement of patenting costs shall be due upon monthly xxxxxxxx billings from University.
(ax) Beginning on the effective date of this Agreement and continuing for the life of this Agreement, Licensee will pay University a running royalty of six percent (6%) of all Net Sales of the Licensed Product(s). In the event of sales of Licensed Product(s) in any country where a patent has not issued or wherever a competitor has commenced marketing a product generically equivalent to a Licensed Product, said royalty rate shall be reduced by 50%.
(b) In the event a Licensed Product is a product in which the active compound is an invention of the University and the use thereof is not an invention of the University, in whole or in part, then the royalty set forth in 3.2(a) shall be 4% rather than 6%. No royalty shall be owed for sales of any product wherein the University has no composition of matter patent protection or the active ingredient and the use thereof is not an invention of the University, in whole or in part.
3.3 Licensee agrees to make quarterly written reports to University within 30 days after the first days of each January, April, July, and October during the life of this Agreement and as of such dates, stating in each such report the number, description, and aggregate Net Selling Prices of Licensed Products sold or otherwise disposed of during the preceding three calendar months and upon which royalty is payable as provided in Article 3.2 hereof. The first such report shall include all such Licensed Products so sold or otherwise disposed of prior to the date of such report.
3.4 Concurrently with the making of each such report, Licensee shall pay to the University royalties at the rate specified in this Agreement on the Licensed Products included therein.
3.5 If in any calendar year during the term of this Agreement after approval of a New Drug Application for a Licensed Product, total amounts payable under paragraph 3.2 hereof are less than $50,000.00, Licensee shall pay the University within thirty (30) days after the end of such calendar year, the difference between the amounts payable for such calendar year and said minimum amount.
3.6 Should this Agreement become effective or terminate or expire during a calendar year, the minimum royalty under paragraph 3.5 for such portion of a year shall be determined by multiplying the minimum royalty set forth in said paragraph for the year in which this Agreement becomes effective, terminates or expires, by a fraction, the numerator of which shall be the number of days during such calendar year for which this Agreement shall be in effect and the denominator of which shall be 365.
3.7 To the extent the University shall have received payments pursuant to a Sponsored Research Agreement ("Sponsored Research Funds") in connection with a Licensed Field, the amount of royalty payments due hereunder with respect to Net Sales of a Licensed Product within such Licensed Field shall be reduced by the amount of such Sponsored Research Funds up to 50% of the royalties due for such quarter, and such reduction shall continue until all applicable Sponsored Research Funds have been credited against such royalties.
Appears in 1 contract
License Fee and Royalties. 3.1 As part 3.1. [RESERVED] Portions of this Exhibit were omitted and have been filed separately with the Secretary of the consideration for granting Commission pursuant to the license herein, Licensee will reimburse Company’s application requesting confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
3.2. The parties acknowledge that Panacos has paid University for its reasonable expenditures all past costs (including reasonable attorney's ’s fees) arising out of the patenting filing, prosecution, or maintenance of the Invention Patents. Licensee will pay a further license fee in the form of payment of future costs (including attorney’s fees) arising out of the filing and prosecution of the Patents covering the Inventions pursuant to Article 10 XI of this Agreement. The reimbursement Payment of patenting such costs shall be non-refundable and shall not be a credit against any other amounts due hereunder. Reimbursement of patenting costs shall be due upon monthly xxxxxxxx from University.
(ai) Beginning on the effective date Effective Date of this Agreement and continuing for continuing, on a country-by-country basis, until the life last to expire Valid Claim of Patents covering such Licensed Products, Licensee will pay University a running patent royalty on all Net Sales of Licensed Products in the Licensed Field covered by a Valid Claim of the Patents, in accordance with the chart below: <$[***] [***] % >$[***] [***] %
(ii) During the Term of this Agreement, Licensee will pay University a running technology royalty of six percent (6%) of on all Net Sales of Licensed Products in the Licensed Product(s). Field not covered by a Valid Claim of the Patents but whose manufacture, use, sale, offer for sale or importation is covered by University Technology, in accordance with the chart below: <$[***] [***] % >$[***] [***] %
(iii) In addition to the foregoing, the parties acknowledge and agree that in the event a claim of sales a pending patent application ceases to be a Valid Claim pursuant to the last sentence of Licensed Product(sArticle 1.22, and such pending patent application later issues during the Term of this Agreement, Licensee shall pay University the difference between any patent royalties that would have been payable by Licensee under Article 3.3(i) if such claim of the pending patent application had not ceased to be a Valid Claim in any country where a patent has not issued or wherever a competitor has commenced marketing a product generically equivalent the first instance pursuant to a Licensed ProductArticle 1.22, said and the technology royalty rate shall be reduced by 50%actually paid pursuant to Article 3.3(ii).
(bi) In the event a any Licensed Product in the Licensed Field is a product in which combination of one or more Licensed Compounds with one or more other active ingredients not licensed hereunder, Net Sales for purposes of determining royalty payments on such combination shall be calculated by multiplying the active compound is an invention net sales (i.e., the invoiced sales price of the University and combination less the use thereof is not an invention of the University, in whole or in part, then the royalty deductions set forth in 3.2(aArticle 1.6) by the fraction A/(A+B) in which “A” is the total of the gross selling prices of the Licensed Compounds, and “B” is the total of the gross selling prices of the other active ingredients. Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
(ii) In the event that it is not possible to determine the gross selling price for each ingredient, Net Sales shall be 4% rather than 6%calculated by multiplying the net sales (i.e., the invoiced sales price of the combination less the deductions set forth in Article 1.6) of the combination by the fraction C/(C+D), in which “C” is the total of the direct costs plus the direct overhead of the Licensed Compounds and “D” that of the other active ingredients. No royalty The direct costs plus the direct overhead of a component shall be owed for sales determined in accordance with generally acceptable cost accounting principles.
3.5. Beginning with the date of First Commercial Sale of any product wherein Licensed Product in the University has no composition of matter patent protection or the active ingredient and the use thereof is not an invention of the UniversityLicensed Field, in whole or in part.
3.3 Licensee agrees to make quarterly written reports to University within 30 thirty (30) days after the first (1st) days of each January, April, July, and October during the life Term of this Agreement and as of such dates, stating in each such report the number, description, and aggregate Net Selling Prices Sales of Licensed Products sold sold, used, or otherwise disposed of during the preceding three calendar months (each such three calendar months a “Royalty Quarter”) and upon which a royalty or percentage of Sublicense Income is payable as provided in Article 3.2 Articles 3.3 or IV hereof, as appropriate. The first such report shall include all such Net Sales of Licensed Products so sold or otherwise disposed of made prior to the date of such report.
3.4 Concurrently with . Until Licensee has achieved the making First Commercial Sale of Licensed Product, a report shall be submitted by Licensee at the end of each such report, Licensee shall pay to January after the University royalties at the rate specified in this Agreement on the Licensed Products included therein.
3.5 If in any calendar year during the term Effective Date of this Agreement after approval and will include a full written report summarizing Licensee’s technical and other efforts made towards such First Commercial Sale of a New Drug Application for a Licensed Product.
3.6. In the event that it is necessary or required for Licensee to make royalty or other payments to one or more third parties in order for Licensee or any Sublicensee to make, total amounts payable under paragraph 3.2 hereof are less than $50,000.00use, or sell Licensed Products, Licensee shall pay the University within thirty may offset a total of fifty percent (3050%) days after the end of such calendar year, the difference between the amounts payable for such calendar year and said minimum amount.
3.6 Should this Agreement become effective or terminate or expire during a calendar year, the minimum royalty under paragraph 3.5 for such portion of a year shall be determined by multiplying the minimum royalty set forth in said paragraph for the year in which this Agreement becomes effective, terminates or expires, by a fraction, the numerator of which shall be the number of days during such calendar year for which this Agreement shall be in effect and the denominator of which shall be 365.
3.7 To the extent the University shall have received third-party payments pursuant to a Sponsored Research Agreement ("Sponsored Research Funds") in connection with a Licensed Field, the amount of against any royalty payments and/or percentage of Sublicense Income, as appropriate and in the Royalty Quarter they are due, that are otherwise due hereunder with respect to Net Sales University hereunder, provided that in no event shall the royalty payments or percentage of a Licensed Product within such Licensed Field shall Sublicense Income otherwise due University be reduced by more than fifty percent (50%) in any Royalty Quarter. Notwithstanding the amount foregoing, in no event shall Licensee offset third-party payments against any royalty payments and/or percentage of Sublicense Income that are otherwise due University hereunder if such Sponsored Research Funds up third party payments relate solely to 50% of other active ingredients to which the royalties due for such quarter, and such reduction shall continue until all applicable Sponsored Research Funds combination Product calculations in Article 3.4 have been credited against such royaltiesapplied.
Appears in 1 contract
License Fee and Royalties. 3.1 As part of To the consideration for granting the license herein, Licensee will reimburse the University for extent that LIGAND exercises its reasonable expenditures (including attorney's fees) arising out of the patenting of the Invention option and acquires Licensed Patents pursuant to this Article 10 of this Agreement. The reimbursement of patenting costs 6, LIGAND shall be non-refundable and shall not be a credit against any other amounts due hereunder. Reimbursement of patenting costs shall be due upon monthly xxxxxxxx from University.pay to FOUNDATION and/or SRI:
(a) Beginning on minimum annual royalty payments of [ * ] Dollars ($[ * ]) per calendar year per Licensed Patent which is a United States patent commencing twelve (12) months after the effective date issuance of this Agreement and continuing such United States patent, which minimum royalty payments shall be payable by January 31 of the calendar year in which due (the first payment being prorated for the life of this Agreement, Licensee will pay University a running royalty of six percent (6%) of all Net Sales portion of the Licensed Product(scalendar year remaining when the payment comes due). In The payment of the event of sales of Licensed Product(s) in any country where a patent has not issued or wherever a competitor has commenced marketing a product generically equivalent to minimum annual royalty for a Licensed Product, said Patent shall constitute the discharge of the obligation to pay the minimum annual royalty rate applicable to any other Licensed Patent to which it is "related" in the manner as described in Section 6.03(b). The minimum royalty payments shall be reduced creditable by 50%.LIGAND against royalties paid by LIGAND, or its sublicensees, for Licensed Products or Licensed Processes covered by the Licensed Patent pursuant to Section 6.04(b) below accrued in the year for which the minimum royalty payment is owed;
(b) In the event a royalty on Net Sales of Licensed Product is a product in which the active compound is an invention of the University and the use thereof is not an invention of the University, in whole or in part, then the royalty set forth in 3.2(a) shall be 4% rather than 6%Products. No The royalty shall be owed for sales of any product wherein the University has no composition of matter patent protection or the active ingredient and the use thereof is not an invention of the University, in whole or in part.
3.3 Licensee agrees to make quarterly written reports to University within 30 days after the first days of each January, April, July, and October during the life of this Agreement and as of such dates, stating in each such report the number, description, and aggregate Net Selling Prices of Licensed Products sold or otherwise disposed of during the preceding three calendar months and upon which royalty is payable as provided in Article 3.2 hereof. The first such report shall include all such Licensed Products so sold or otherwise disposed of prior to the date of such report.
3.4 Concurrently with the making of each such report, Licensee shall pay to the University royalties at the rate specified in this Agreement (i) [ * ] percent ([*]%) on the Licensed Products included therein.
3.5 If in any calendar year during the term of this Agreement after approval of a New Drug Application for a Licensed Product, total amounts payable under paragraph 3.2 hereof are less than $50,000.00, Licensee shall pay the University within thirty (30) days after the end of such calendar year, the difference between the amounts payable for such calendar year and said minimum amount.
3.6 Should this Agreement become effective or terminate or expire during a calendar year, the minimum royalty under paragraph 3.5 for such portion of a year shall be determined by multiplying the minimum royalty set forth in said paragraph for the year in which this Agreement becomes effective, terminates or expires, by a fraction, the numerator of which shall be the number of days during such calendar year for which this Agreement shall be in effect and the denominator of which shall be 365.
3.7 To the extent the University shall have received payments pursuant to a Sponsored Research Agreement ("Sponsored Research Funds") in connection with a Licensed Field, the amount of royalty payments due hereunder with respect to Net Sales of a Licensed Product within such when its making, use or sale is covered by a claim in a Licensed Field Patent and (ii) [ * ] percent ([*]%) on the Net Sales of a Licensed Product when the making, use or sale thereof is not covered by a claim in a Licensed Patent but a Licensed Patent is used in the discovery or development of the Licensed Product. The royalty shall be reduced paid on a country by country basis, from the amount first commercial sale thereof until the later of such Sponsored Research Funds up to 50% (a) expiration of the royalties due Licensed Patent having a claim which reads on making, using or selling the Licensed Product or (b) [ * ] years in the case where the Licensed Patent was used in the discovery or development of the Licensed Product. Only one royalty will be owed on a Licensed Product in the circumstance where the Licensed Product is covered by multiple claims in one or more Licensed Patents and where a royalty would be owed under (i) and (ii) above, the royalty shall be [ * ] percent ([*]%) of Net Sales; and
(c) LIGAND shall also have the right to perform Licensed Processes as a service to a third party for such quartera fee, and such reduction shall continue until all applicable Sponsored Research Funds have been credited against such royalties[ * ] CONFIDENTIAL TREATMENT REQUESTED
(i) [*] percent ([*]%) of its "Net Revenues" or (ii) [*] percent ([*]%) of its "Gross Revenues" from performance of the services in the case where LIGAND is not entitled to a royalty on the sales of any product because of its performance of a Licensed Process. LIGAND will pay FOUNDATION and/or SRI [*] percent ([*]%) of its Net Revenue from the performance of services where LIGAND is entitled to a royalty on sales of a product because of its performance of a Licensed Process. Net Revenues for the purpose of this Section 6.04(c) are the Gross Revenues received for performance of the service less the fully burdened costs incurred in rendering the service.
Appears in 1 contract
License Fee and Royalties. 3.1 As part of the consideration for granting the license herein, 3.1. [RESERVED].
3.2. The parties acknowledge that Licensee will reimburse the has paid University for its reasonable expenditures all past costs (including reasonable attorney's ’s fees) arising out of the patenting filing, prosecution, or maintenance of the Invention Patents. Licensee will pay a further license fee in the form of payment of future costs (including attorney’s fees) arising out of the filing and prosecution of the Patents covering the Inventions pursuant to Article 10 XI of this Agreement. The reimbursement Payment of patenting such costs shall be non-refundable and shall not be a credit against any other amounts due hereunder. Reimbursement of patenting costs shall be due upon monthly xxxxxxxx from University.
(ai) Beginning on the effective date Effective Date of this Agreement and continuing continuing, on a country-by-country basis, until the last to expire Valid Claim of Patents covering such Licensed Products, Licensee will pay University a running patent royalty on all Net Sales of Licensed Products in the Licensed Field covered by a Valid Claim of the Patents, in accordance with the chart below: NET SALES OF LICENSED PRODUCT(S) ROYALTY RATE <$100 million 2.5 % >$100 million 3 % Notwithstanding the foregoing provisions of this Article 3.3(i), (a) in the event that the Licensed Product for which royalties are payable hereunder is covered by a Valid Claim of the life Niigata Patents but no other Patents, then Licensee shall pay University one-half ( 1/2) of the royalties otherwise payable to University under this Article 3.3(i), and Licensee shall pay Niigata the remaining one-half ( 1/2) of such royalties; and (b) in the event that the Licensed Product for which royalties are payable hereunder is covered by Valid Claims of both the Niigata Patents and at least one other Patent, then Licensee shall pay University two-third ( 2/3) of the royalties otherwise payable to University under this Article 3.3(i), and Licensee shall pay Niigata the remaining one-third ( 1/3) of such royalties.
(ii) During the Term of this Agreement, Licensee will pay University a running technology royalty of six percent (6%) of on all Net Sales of Licensed Products in the Licensed Product(sField not covered by a Valid Claim of the Patents but whose manufacture, use, sale, offer for sale or importation is covered by University Technology, in accordance with the chart below: NET SALES OF LICENSED PRODUCT(S) ROYALTY RATE <$100 million 1.25 % >$100 million 1.5 % Notwithstanding the foregoing provisions of this Article 3.3(ii). In , (a) in the event that the Licensed Product for which royalties are payable hereunder is covered by both University Technology and Niigata Technology, then Licensee shall pay University one-half ( 1/2) of sales the royalties otherwise payable to University under this Article 3.3(ii), and Licensee shall pay Niigata the remaining one-half ( 1/2) of Licensed Product(ssuch royalties; and (b) in any country where a patent has the event that the Licensed Product for which royalties are payable hereunder is not issued or wherever a competitor has commenced marketing a product generically equivalent covered by University Technology but is covered by Niigata Technology, then Licensee shall pay Niigata one hundred percent (100%) of the royalties otherwise payable to a Licensed Product, said royalty rate shall be reduced by 50%University under this Article 3.3(ii).
(biii) In addition to the foregoing, the parties acknowledge and agree that in the event a Licensed Product is claim of a product in which pending patent application ceases to be a Valid Claim pursuant to the active compound is an invention last sentence of the University and the use thereof is not an invention of the University, in whole or in part, then the royalty set forth in 3.2(a) shall be 4% rather than 6%. No royalty shall be owed for sales of any product wherein the University has no composition of matter patent protection or the active ingredient and the use thereof is not an invention of the University, in whole or in part.
3.3 Licensee agrees to make quarterly written reports to University within 30 days after the first days of each January, April, JulyArticle 1.23, and October such pending patent application later issues during the life Term of this Agreement and as of such dates, stating in each such report the number, description, and aggregate Net Selling Prices of Licensed Products sold or otherwise disposed of during the preceding three calendar months and upon which royalty is payable as provided in Article 3.2 hereof. The first such report shall include all such Licensed Products so sold or otherwise disposed of prior to the date of such report.
3.4 Concurrently with the making of each such reportAgreement, Licensee shall pay University and/or Niigata the difference between any patent royalties that would have been payable by Licensee under Article 3.3(i) if such claim of the pending patent application had not ceased to be a Valid Claim in the University royalties at first instance pursuant to Article 1.23, and the rate specified in this Agreement on the Licensed Products included thereintechnology royalty actually paid pursuant to Article 3.3(ii).
3.5 If in any calendar year during the term of this Agreement after approval of a New Drug Application for a Licensed Product, total amounts payable under paragraph 3.2 hereof are less (iv) No later than $50,000.00, Licensee shall pay the University within thirty (30) days after before the end First Commercial Sale of a particular Licensed Product, Licensee retains the right to notify University and Niigata in writing of its determination of the allocation of payments between University and Niigata hereunder (if any). In such an event, University and Niigata shall have thirty (30) days to respond in writing if they disagree with Licensee’s determination. In the event Licensee does not receive written notice of a disagreement within such 30 day period, then Licensee’s determination shall be deemed acceptable to the parties. In the event Licensee receives written notice of a disagreement within such 30 day period, Licensee retains the right to make royalty payments into an escrow account until such time as University and Niigata provide Licensee with written confirmation of their resolution of such calendar yeardisagreement. In no event shall Licensee owe University and Niigata, in the aggregate, royalties greater than the royalty rates set forth in this Article 3.3.
(i) In the event any Licensed Product in the Licensed Field is a combination of one or more Licensed Compounds with one or more other active ingredients not licensed hereunder, Net Sales for purposes of determining royalty payments on such combination shall be calculated by multiplying the net sales (i.e., the difference between invoiced sales price of the amounts payable for such calendar year combination less the deductions set forth in Article 1.6) by the fraction A/(A+B) in which “A” is the total of the gross selling prices of the Licensed Compounds, and said minimum amount“B” is the total of the gross selling prices of the other active ingredients.
3.6 Should this Agreement become effective or terminate or expire during a calendar year(ii) In the event that it is not possible to determine the gross selling price for each ingredient, Net Sales shall be calculated by multiplying the net sales (i.e., the minimum royalty under paragraph 3.5 for such portion invoiced sales price of the combination less the deductions set forth in Article 1.6) of the combination by the fraction C/(C+D), in which “C” is the total of the direct costs plus the direct overhead of the Licensed Compounds and “D” that of the other active ingredients. The direct costs plus the direct overhead of a year component shall be determined by multiplying the minimum royalty set forth in said paragraph for the year in which this Agreement becomes effective, terminates or expires, by a fraction, the numerator of which shall be the number of days during such calendar year for which this Agreement shall be in effect and the denominator of which shall be 365accordance with generally acceptable cost accounting principles.
3.7 To the extent the University shall have received payments pursuant to a Sponsored Research Agreement ("Sponsored Research Funds") in connection with a Licensed Field, the amount of royalty payments due hereunder with respect to Net Sales of a Licensed Product within such Licensed Field shall be reduced by the amount of such Sponsored Research Funds up to 50% of the royalties due for such quarter, and such reduction shall continue until all applicable Sponsored Research Funds have been credited against such royalties.
Appears in 1 contract
License Fee and Royalties. 3.1 As part of the In partial consideration for granting the license rights and licenses granted to SONY by 3D herein, Licensee will reimburse the University for its reasonable expenditures (including attorney's fees) arising out of the patenting of the Invention pursuant SONY shall pay to Article 10 of this Agreement. The reimbursement of patenting costs shall be 3D:
3.1.1 A non-refundable and shall not be a credit against any other amounts due hereunder. Reimbursement of patenting costs shall be due upon monthly xxxxxxxx from University.
(a) Beginning on the effective date of this Agreement and continuing fee for the life of this Agreementrelease granted in Section 2.6 hereof, Licensee will pay University a running royalty of six percent (6%) of all Net Sales of the Licensed Product(s). In the event of sales of Licensed Product(s) in any country where a patent has not issued or wherever a competitor has commenced marketing a product generically equivalent to a Licensed Product, said royalty rate shall be reduced by 50%.
(b) In the event a Licensed Product is a product in which the active compound is an invention of the University and the use thereof is not an invention of the University, in whole or in part, then the royalty set forth in 3.2(a) shall be 4% rather than 6%. No royalty shall be owed for sales of any product wherein the University has no composition of matter patent protection or the active ingredient and the use thereof is not an invention of the University, in whole or in part.
3.3 Licensee agrees to make quarterly written reports to University within 30 days after the first days of each January, April, July, and October during the life of this Agreement and as of such dates, stating in each such report the number, description, and aggregate Net Selling Prices of Licensed Products sold or otherwise disposed of during the preceding three calendar months and upon which royalty is payable as provided in Article 3.2 hereof. The first such report shall include all such Licensed Products so sold or otherwise disposed of prior to the date of such report.
3.4 Concurrently with the making of each such report, Licensee shall pay to the University royalties at the rate specified in this Agreement on the Licensed Products included therein.
3.5 If in any calendar year during the term of this Agreement after approval of a New Drug Application for a Licensed Product, total amounts payable under paragraph 3.2 hereof are less than $50,000.00, Licensee shall pay the University paid within thirty (30) days after the end Effective Date of such calendar yearthis Agreement, the difference between the amounts payable for such calendar year and said minimum amount.
3.6 Should this Agreement become effective or terminate or expire during a calendar year, the minimum royalty under paragraph 3.5 for such portion of a year shall be determined by multiplying the minimum royalty set forth in said paragraph for the year in which this Agreement becomes effective, terminates or expires, by a fraction, the numerator amount of which shall be calculated by multiplying the number Net Sales Price of days during such calendar year for which this Agreement Licensed Products manufactured, used, sold or otherwise disposed of by SONY (or an Affiliate) between October 5, 1990 and the Effective Date hereof, by ****.
3.1.2 A royalty on each and every Licensed Product that is sold, leased or otherwise disposed of by SONY under license hereunder. The royalty shall be in effect and **** of the denominator of which shall be 365Net Sales Price.
3.7 To the extent the University shall have received payments pursuant 3.2 The obligation to pay a Sponsored Research Agreement ("Sponsored Research Funds") in connection with a Licensed Field, the amount of royalty payments due hereunder with respect to Net Sales a Licensed Product shall arise at the time the Licensed Product is first sold, leased or otherwise disposed of by SONY. A Licensed Product shall be deemed to have been sold, leased or otherwise disposed of when it is first invoiced or shipped to a customer, whichever comes first. It is understood by the parties that SONY shall not receive any rights under Article 2 or otherwise as to a Licensed Product, unless any royalty due therefor is paid by SONY as to such Licensed Product.
3.3 If any Licensed Patent is held invalid or unenforceable by a court or administrative agency of competent jurisdiction, then SONY shall have the right to cease paying royalties on Licensed Products Covered only by such patent and no others in the country of manufacture, use or sale. If such Licensed Patent is subsequently held valid and/or enforceable, then SONY shall pay any royalty that has not been paid and would have been paid, but for the holding of such court or administrative agency plus interest at the rate of five percent (5%) per annum compounded annually. With respect to any unenforceable patent, SONY's right to cease paying royalties shall be operable only to the extent that the unenforceability is applicable to SONY and only for so long as the unenforceability is not cured. SONY agrees that if the validity or enforceability of a Licensed Product within Patent is not contested, whether by a third party or by SONY, SONY will continue to pay any royalties that would otherwise be due with respect to such Licensed Field patent pursuant to and in accordance with the terms of this Agreement until such time as there is a determination of invalidity or unenforceability with respect to such patent by a court or administrative agency of competent jurisdiction, at which time SONY's obligation to pay royalties shall be reduced governed by this Section 3. If SONY ceases to pay any royalties that would otherwise be due with respect to a Licensed Patent pursuant to and in accordance with the amount terms of such Sponsored Research Funds up this Agreement prior to 50% any determination of invalidity or unenforceability, SONY shall be deemed to have materially breached this Agreement and 3D shall be free to exercise the royalties due for such quarterrights provided in Section 6 below, and such reduction shall continue until all applicable Sponsored Research Funds have been credited against such royaltiesincluding, but not limited to, the termination of this Agreement.
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