License Fees and Royalties. Section 3.1 In consideration of the licenses and rights granted herein, the Licensee shall pay to SEL a non-refundable initial license fee of * (the “Initial License Fee”) within * days of the day on which the last of the parties has signed this Agreement. Section 3.2 The Licensee shall pay SEL Running Royalties for each Licensed Product which the Licensee or any Subsidiary of the Licensee transfers or Uses after August 31, 2003 in accordance with the following: (i) In the event that the Licensee or a Subsidiary of the Licensee transfers the Licensed Products to any Arm’s Length Customer, the Running Royalties shall be calculated at the rate of * of the Sales Price of the subject Licensed Products; or (a) In the event that the Licensee or a Subsidiary of the Licensee transfers the Licensed Products to any person who is not an Arm’s Length Customer, other than a Subsidiary of the Licensee, the Running Royalties shall be calculated at the rate of * of the average of the Sales Price of the same Licensed Products which the Licensee and all Subsidiaries of the Licensee transfer to Arm’s Length Customers during each semi-annual period. (A semi-annual period shall be from January 1 to June 30 or from July 1 to December 31 of the year.) (b) In the event that there is no transfer of the same Licensed Product to an Arm’s Length Customer during the subject semi-annual period, the royalty base shall be the average Sales Price for such Licensed Products during the most recent semi-annual period prior to the subject semi-annual period. (c) In the event that there is no transfer of the same Licensed Products to an Arm’s Length Customer during any semi-annual period, the royalty base shall be the average of the Sales Price of the Licensed Products with the same screen size transferred to Arm’s Length Customers during the subject semi-annual period. (d) In * Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. the event that there is no transfer of Licensed Products with the same screen size to an Arm’s Length Customer during any semi-annual period, the royalty base shall be the average Sales Price of Licensed Products with a screen size that is larger than, but the most similar to such Licensed Products transferred to Arm’s Length Customers during the subject semi-annual period. The average Sales Price determined as set forth in this provision (ii) shall be referred to as the “Constructive Sales Price”. (a) In the event that the Licensee or a Subsidiary of the Licensee Uses the Licensed Products, the Running Royalties shall be calculated at the rate of * of the average of the Sales Price of the same Licensed Products which the Licensee and all Subsidiaries of the Licensee transfer to Arm’s Length Customers during each semi-annual period. (A semi-annual period shall be from January 1 to June 30 or from July 1 to December 31 of the year.) (b) In the event that there is no transfer of the same Licensed Product to an Arm’s Length Customer during the subject semi-annual period, the royalty base shall be determined by using the Constructive Sales Price calculated as set forth in provision (ii) of this Section. (iv) Notwithstanding Section 6.6 of Article 6 of this Agreement, in the event that as of the expiration or termination of this Agreement the Licensee or any Subsidiaries of the Licensee are in possession of any Licensed Products for which a Running Royalty has not accrued under Section 3.3 of this Agreement, then for such Licensed Products, the Running Royalties shall accrue as of the expiration or termination of this Agreement, and the Running Royalties shall be calculated at the rate of * of the average of the Sales Price of the same Licensed Products which the Licensee and all Subsidiaries of the Licensee transferred to Arm’s Length Customers during the semi-annual period including the expiration or termination date of this Agreement. (A semi-annual period shall be from January 1 to June 30 or from July 1 to December 31 of the year.) (b) In the event that there is no transfer of the same Licensed Product to an Arm’s Length Customer during the semi-annual period including the expiration date of this Agreement, the royalty base shall be determined by using the Constructive Sales Price calculated as set forth in provision (ii) of this Section. (v) Starting with January 1, 2004, if for any one-year period (a one-year period shall be from January 1 to December 31 of the same year) the total Running Royalties amount paid to SEL under provisions (i), (ii) and (iii) of this Section are less than* Dollars * then the Running Royalties paid for that same one-year period shall be recalculated at a rate of * of the Sales Price of the Licensed Products transferred by the Licensee or its Subsidiary to Arm’s Length Customers, and * of the Constructive Sales Price (as defined in provision (ii) of this Section) of Licensed Products Used by the Licensee or the Subsidiary of the Licensee, or of Licensed Products transferred by the Licensee or the Subsidiary of the Licensee to persons who are not Arm’s Length Customers. For any one-year period Running Royalties are calculated pursuant to this provision, Licensee shall pay SEL any difference owed for any semi-annual period of such one-year period in which royalties were originally calculated at * within * days after the end of the semi-annual period ending December 31 of that year. Section 3.3 Running Royalties shall accrue at the time when each of the following occurs: (a) In the event that any Licensed Products are transferred (as evidenced by the applicable invoice or xxxx) or disposed of by either the Licensee or a Subsidiary of Licensee to an Arm’s * Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. Length Customer, royalties accrue at the time of the sale or the disposal, regardless of whether any payment is then received by the Licensee or the Subsidiary of the Licensee; or (b) In the event subparagraph (a) of Section 3.3 does not apply, and the Licensed Products are Used (as defined in Section 1.2(a) hereof) by the Licensee or a Subsidiary of the Licensee or transferred by the Licensee or a Subsidiary of Licensee to any person who is not an Arm’s Length Customer other than a Subsidiary of the Licensee, royalties accrue at the time when the Licensed Products are Used or transferred to any person not an Arm’s Length Customer. Section 3.4 Given the worldwide scope of this agreement, the impracticality of monitoring by Licensee of the movement of the Licensed Products through international markets, and Licensee’s representation that it often does not know the ultimate destination of LCD panels and LCD modules it sells to OEMs, brokers and brand-name manufacturers, it is agreed and recognized that the royalties to be paid hereunder, as a whole, are fair and reasonable, representing a balance between the concerns and interests of both parties and resulting in a convenience to Licensee.
Appears in 1 contract
License Fees and Royalties. Section 3.1 In consideration of the licenses and rights granted hereinpatent licenses, the Licensee CLI shall pay to SEL MMTC a non-refundable initial license fee in the total amount of * (the “Initial License Fee”) within * days of the day on [Confidential Treatment Requested] which the last of the parties has signed this Agreement.
Section 3.2 The Licensee shall pay SEL Running Royalties for each Licensed Product which the Licensee or any Subsidiary of the Licensee transfers or Uses after August 31, 2003 in accordance with the following:
(i) In the event that the Licensee or a Subsidiary of the Licensee transfers the Licensed Products to any Arm’s Length Customer, the Running Royalties shall be calculated at the rate of * of the Sales Price of the subject Licensed Products; or
payable within thirty (a30) In the event that the Licensee or a Subsidiary of the Licensee transfers the Licensed Products to any person who is not an Arm’s Length Customer, other than a Subsidiary of the Licensee, the Running Royalties shall be calculated at the rate of * of the average of the Sales Price of the same Licensed Products which the Licensee and all Subsidiaries of the Licensee transfer to Arm’s Length Customers during each semi-annual period. (A semi-annual period shall be from January 1 to June 30 or from July 1 to December 31 of the year.) (b) In the event that there is no transfer of the same Licensed Product to an Arm’s Length Customer during the subject semi-annual period, the royalty base shall be the average Sales Price for such Licensed Products during the most recent semi-annual period prior to the subject semi-annual period.
(c) In the event that there is no transfer of the same Licensed Products to an Arm’s Length Customer during any semi-annual period, the royalty base shall be the average of the Sales Price of the Licensed Products with the same screen size transferred to Arm’s Length Customers during the subject semi-annual period.
(d) In * Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. the event that there is no transfer of Licensed Products with the same screen size to an Arm’s Length Customer during any semi-annual period, the royalty base shall be the average Sales Price of Licensed Products with a screen size that is larger than, but the most similar to such Licensed Products transferred to Arm’s Length Customers during the subject semi-annual period. The average Sales Price determined as set forth in this provision (ii) shall be referred to as the “Constructive Sales Price”.
(a) In the event that the Licensee or a Subsidiary of the Licensee Uses the Licensed Products, the Running Royalties shall be calculated at the rate of * of the average of the Sales Price of the same Licensed Products which the Licensee and all Subsidiaries of the Licensee transfer to Arm’s Length Customers during each semi-annual period. (A semi-annual period shall be from January 1 to June 30 or from July 1 to December 31 of the year.) (b) In the event that there is no transfer of the same Licensed Product to an Arm’s Length Customer during the subject semi-annual period, the royalty base shall be determined by using the Constructive Sales Price calculated as set forth in provision (ii) of this Section.
(iv) Notwithstanding Section 6.6 of Article 6 of this Agreement, in the event that as of the expiration or termination of this Agreement the Licensee or any Subsidiaries of the Licensee are in possession of any Licensed Products for which a Running Royalty has not accrued under Section 3.3 of this Agreement, then for such Licensed Products, the Running Royalties shall accrue as of the expiration or termination of this Agreement, and the Running Royalties shall be calculated at the rate of * of the average of the Sales Price of the same Licensed Products which the Licensee and all Subsidiaries of the Licensee transferred to Arm’s Length Customers during the semi-annual period including the expiration or termination date days after execution of this Agreement. (A semi-annual period The foregoing license fee paid to MMTC shall be from January 1 creditable against future royalties due under Section 3.3 hereof.
3.2 CLI shall pay MMTC an additional license fee ("Additional License Fee") of [Confidential Treatment Requested] for each failure by CLI to June 30 or from July 1 to December 31 meet any of the yearfollowing development milestones by the specified date:
( i ) to commence a clinical safety trial with not less than ten (10) patients by March 31, 1997;
( ii ) to file IDE within 6 months after signing of agreement; or
( iii ) to commence clinical efficacy immediately upon receipt of IDE approval. CLI shall pay any required Additional License Fee to MMTC within sixty (60) days after the applicable date set forth in Section 3.2 ( i ), ( ii ), or ( iii ) above. CLI shall 301650.001(BF) 3 provide MMTC with written notification that it has met each of the development milestones set forth above in Section 3.2 ( i ) , ( ii ), and ( iii ) within sixty (60) days of meeting such milestone. Notwithstanding the provisions of this Section 3.2 , if CLI should fail to meet any of the development milestones set forth above in Section 3.2 ( i ), ( ii ), or ( iii ), in lieu of paying the required Additional License Fee , CLI, at its option, may terminate this Agreement and relinquish all its rights under this Agreement to the Licensed Patents. If CLI should fail to meet any of the development milestones set forth above in Section 3.2 ( i ), ( ii ), or ( iii ) and should fail to pay the required Additional License Fee, MMTC, at its option, may terminate this Agreement as provided in Section 12.2 hereof. All Additional License Fees paid by CLI to MMTC shall be creditable against future royalties due under Section 3.3 hereof.
3.3 In consideration of the license granted to CLI under Section 2.1 hereof , CLI shall pay to MMTC royalties based on Net Sales of Licensed Products in Patent Countries as follows:
( i ) At the rate of [Confidential Treatment Requested] of annual Net Sales. The royalties payable under this Section 3.3 shall only be payable on Net Sales in Patent Countries and shall not be payable on Net Sales in Nonpatent Countries, regardless of the country of manufacture of the Licensed Product. The duration of royalty payments under this section 3.3 shall be determined on a county-by-country basis and, subject to the provisions of Sections 6.1 and 8.3 hereof, shall continue in each country until the expiration of the last to expire of the Licensed Patents in such country with claims directed to the Licensed Product sold in such country by CLI, its Affiliates and sublicensees.
3.4 CLI shall pay MMTC minimum annual royalties of [confidential treatment requested] for a period of seven (b7) years commencing with the earlier of (i) the first full CLI fiscal year following the first commercial sale of a Licensed Product in the United States and ( ii ) CLI's 2000 fiscal year (the fiscal year beginning after December 31, 1999). In the event that there is no transfer of the same Licensed Product royalties payable pursuant to an Arm’s Length Customer during the semi-annual period including the expiration date of this Agreement, the royalty base shall be determined by using the Constructive Sales Price calculated as set forth in provision (ii) of this Section.
(v) Starting with January 1, 2004, if Section 3.3 hereof for any one-CLI fiscal year period (a one-should be less than the minimum annual royalties payable for such fiscal year period shall be from January 1 to December 31 of the same year) the total Running Royalties amount paid to SEL under provisions (i), (ii) and (iii) of this Section are less than* Dollars * then the Running Royalties paid for that same one-year period shall be recalculated at a rate of * of the Sales Price of the Licensed Products transferred by the Licensee or its Subsidiary to Arm’s Length Customers, and * of the Constructive Sales Price (as defined in provision (ii) of this Section) of Licensed Products Used by the Licensee or the Subsidiary of the Licensee, or of Licensed Products transferred by the Licensee or the Subsidiary of the Licensee to persons who are not Arm’s Length Customers. For any one-year period Running Royalties are calculated pursuant to this provisionsection 3.4, Licensee shall pay SEL any difference owed for any semi-annual period of such one-year period in which royalties were originally calculated at * then CLI, within * sixty (60) days after the end of such fiscal year, shall pay to MMTC an additional royalty for such fiscal year which shall be 301650.001(BF) 4 equal to the semi-difference between the minimum annual period ending December 31 of that royalty payable pursuant to this Section 3.4 and the royalty payable pursuant to Section 3.3. for such fiscal year.
. Any additional royalties paid by CLI pursuant to this Section 3.4 shall be creditable against future royalties due under Section 3.3 Running Royalties hereof. If CLI should fail to pay MMTC the additional royalties under this Section 3.4 hereof for any CLI fiscal year, MMTC shall accrue have the right, at the time when each its option, to terminate this Agreement pursuant to Section 12.2 hereof. If CLI terminates this Agreement pursuant to Sections 12.1 or 12.3, CLI obligations to pay annual minimum royalties pursuant to this Section 3.4 shall cease as of the following occurs:
(a) In the event that any Licensed Products are transferred (as evidenced by the applicable invoice or xxxx) or disposed effective date of by either the Licensee or a Subsidiary of Licensee to an Arm’s * Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. Length Customer, royalties accrue at the time of the sale or the disposal, regardless of whether any payment is then received by the Licensee or the Subsidiary of the Licensee; or
(b) In the event subparagraph (a) of Section 3.3 does not apply, and the Licensed Products are Used (as defined in Section 1.2(a) hereof) by the Licensee or a Subsidiary of the Licensee or transferred by the Licensee or a Subsidiary of Licensee to any person who is not an Arm’s Length Customer other than a Subsidiary of the Licensee, royalties accrue at the time when the Licensed Products are Used or transferred to any person not an Arm’s Length Customertermination.
Section 3.4 Given the worldwide scope of this agreement, the impracticality of monitoring by Licensee of the movement of the Licensed Products through international markets, and Licensee’s representation that it often does not know the ultimate destination of LCD panels and LCD modules it sells to OEMs, brokers and brand-name manufacturers, it is agreed and recognized that the royalties to be paid hereunder, as a whole, are fair and reasonable, representing a balance between the concerns and interests of both parties and resulting in a convenience to Licensee.
Appears in 1 contract
License Fees and Royalties. Section 3.1 In consideration of the licenses and rights granted hereingrant of this License, LICENSEE shall pay LICENSOR an annual License Fee of Two Hundred Fifty Thousand Dollars ($250,000), the Licensee first annual installment of which License Fee being due in two equal payments with One Hundred Twenty Five Thousand Dollars ($125,000) upon execution hereof and One Hundred Twenty Five Thousand Dollars being due prior to December 31, 2000, with subsequent annual License Fees being due on the anniversary date of a License Year. For the purposes of this Agreement, the first License Year shall pay to SEL a terminate December 31, 2001 and subsequent years on the end of the calendar year. This License Fee shall be non-refundable initial license fee and not creditable against any royalty called for under this Section.
3.2 LICENSEE shall pay LICENSOR a royalty of * one dollar ($1.00) for each unit of all PRODUCTS made, used, sold or otherwise disposed of by LICENSEE after the “Initial License Fee”) within * days date of the day on which the last of the parties has signed this Agreement.
Section 3.2 3.3 The Licensee shall pay SEL Running Royalties for each Licensed Product which the Licensee or any Subsidiary of the Licensee transfers or Uses after August 31, 2003 in accordance with the following:
(i) In the event that the Licensee or a Subsidiary of the Licensee transfers the Licensed Products to any Arm’s Length Customer, the Running Royalties royalties payable shall be calculated due and payable at LICENSOR's office on or before thirty (3 0) days following the rate end of * of each calendar quarter after the Sales Price of the subject Licensed Products; or
(a) In the event that the Licensee or a Subsidiary of the Licensee transfers the Licensed Products to any person who is not an Arm’s Length Customer, other than a Subsidiary of the Licensee, the Running Royalties shall be calculated at the rate of * of the average of the Sales Price of the same Licensed Products which the Licensee and all Subsidiaries of the Licensee transfer to Arm’s Length Customers during each semi-annual period. (A semi-annual period shall be from January 1 to June 30 or from July 1 to December 31 of the year.) (b) In the event that there is no transfer of the same Licensed Product to an Arm’s Length Customer during the subject semi-annual period, the royalty base shall be the average Sales Price for such Licensed Products during the most recent semi-annual period prior to the subject semi-annual period.
(c) In the event that there is no transfer of the same Licensed Products to an Arm’s Length Customer during any semi-annual period, the royalty base shall be the average of the Sales Price of the Licensed Products with the same screen size transferred to Arm’s Length Customers during the subject semi-annual period.
(d) In * Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. the event that there is no transfer of Licensed Products with the same screen size to an Arm’s Length Customer during any semi-annual period, the royalty base shall be the average Sales Price of Licensed Products with a screen size that is larger than, but the most similar to such Licensed Products transferred to Arm’s Length Customers during the subject semi-annual period. The average Sales Price determined as set forth in this provision (ii) shall be referred to as the “Constructive Sales Price”.
(a) In the event that the Licensee or a Subsidiary of the Licensee Uses the Licensed Products, the Running Royalties shall be calculated at the rate of * of the average of the Sales Price of the same Licensed Products which the Licensee and all Subsidiaries of the Licensee transfer to Arm’s Length Customers during each semi-annual period. (A semi-annual period shall be from January 1 to June 30 or from July 1 to December 31 of the year.) (b) In the event that there is no transfer of the same Licensed Product to an Arm’s Length Customer during the subject semi-annual period, the royalty base shall be determined by using the Constructive Sales Price calculated as set forth in provision (ii) of this Section.
(iv) Notwithstanding Section 6.6 of Article 6 of this Agreement, in the event that as of the expiration or termination of this Agreement the Licensee or any Subsidiaries of the Licensee are in possession of any Licensed Products for which a Running Royalty has not accrued under Section 3.3 of this Agreement, then for such Licensed Products, the Running Royalties shall accrue as of the expiration or termination effective date of this Agreement, and each payment shall cover PRODUCTS manufactured by LICENSEE or used or sold by LICENSEE during the Running preceding calendar quarter.
3.4 Subject to the provisions of Paragraph V, hereafter, Royalties shall be calculated payable for the use of TECHNOLOGY under this Paragraph III for a period often (10) years commencing on the execution hereof whether any additional patent application be filed, or for the life of any of PATENTS for PRODUCTS or the manufacture thereof coming within the scope of VALID CLAIMS, including any extension, reissue or regrant of any of PATENTS, whichever is longer unless this Agreement is earlier terminated as a result of a breach. Upon the expiration of the last of any of PATENTS, the license to LICENSEE of all PATENTS and TECHNOLOGY shall be deemed fully paid, subject to the provisions of Section 3.7 below, and no further royalties or payments shall be due hereunder.
3.5 Payments provided for in this Agreement, when overdue, shall bear interest at a rate per annum equal to three percent (3%) in excess of the APRIME RATE@ published by XXxx Xxxx Xxxxxx Journal@ at the rate of * time such payment is due, and for the time period until payment is received by LICENSOR.
3.6 If this Agreement is for any reason terminated before all of the average payments herein provided for have been made, LICENSEE shall immediately submit a terminal report and pay to LICENSOR any remaining unpaid balance even though the due date as above provided has not been reached.
3.7 Under this Agreement PRODUCTS shall be considered to be sold when shipped or when an invoice is sent out, whichever occurs first, except that upon expiration of any patent covering PRODUCTS, or upon any termination of a license or sublicense, all PRODUCTS made by LICENSEE or a sublicensee, on or prior to the Sales Price date of the same Licensed Products which the Licensee and all Subsidiaries of the Licensee transferred to Arm’s Length Customers during the semi-annual period including the such expiration or termination that have not been shipped or invoiced prior thereto shall be subject to royalty and reported to LICENSOR in the Post Termination Report called for in Section 3.6. Royalties paid on PRODUCTS that are not accepted by a purchaser or user shall be credited to LICENSEE.
3.8 In order to maintain the exclusivity of the License granted, LICENSEE shall pay to LICENSOR royalties as required under Paragraph 3.3, but in no event shall royalties for a calendar year for practice of the PATENTS and TECHNOLOGY be less than the following minimum royalties, for the License Years indicated: License Years U.S. Dollars per License Year 1 $500,000 2 $500,000 3 and thereafter $1,000,000 In the event that royalties under this Paragraph 3.8 for a License Year do not aggregate the sums above required, LICENSOR may, at its option, convert the exclusive license granted to a nonexclusive license without the fight to sublicense, by thirty (30) days notice in writing to LICENSEE, served on LICENSEE within thirty (30) days after receipt of the last report for such License Year, unless LICENSEE shall within thirty (30) days from the receipt of such notice by it, pay LICENSOR such additional sums as may be necessary to bring the payment of royalties for PRODUCTS to the specified minimum.
3.9 LICENSEE=s right to grant sublicenses to others shall be for fees or at royalty rates to be determined by LICENSEE, subject to the provisions of this Agreement and at License Fees and Royalties no less than contained herein. Any sublicense shall make reference to this Agreement including those rights retained by LICENSOR A copy of any sublicense shall be furnished to LICENSOR promptly after its execution. It is understood and agreed that any such sublicense shall include the requirement that the sublicensee shall do all things necessary to effectuate LICENSEE=S compliance with the terms of this Agreement. Further, sublicense fees shall be due and payable on PRODUCTS which had been made, sold, leased, or otherwise used or put into commerce by the sublicensee.
3.10 LICENSEE shall pay over to LICENSOR as sublicense income, fifty percent (50%)of all License Fees, royalties, advance royalties, minimum royalties or other payments accrued or received in respect to the granting or maintaining of sublicenses, provided however, in no instance shall the amount paid to LICENSOR be less than one dollar ($1.00) for each unit of all PRODUCTS made, used, sold or otherwise disposed of by a sublicensee after the date of this Agreement. (A semi-annual period For any sublicense granted, LICENSEE shall be from January 1 to June 30 or from July 1 to December 31 guarantee the timely payment of LICENSOR=s share of sublicense income.
3.11 Termination under any of the year.) (b) provisions of Paragraph V of the license granted to LICENSEE in this Agreement shall not terminate any sublicenses which may have been previously granted by LICENSEE. In the event that there is no transfer of the same Licensed Product to an Arm’s Length Customer during the semi-annual period including the expiration date of this Agreement, the royalty base shall be determined by using the Constructive Sales Price calculated as set forth in provision (ii) of this Section.
(v) Starting with January 1, 2004, if for any one-year period (a one-year period shall be from January 1 to December 31 of the same year) the total Running Royalties amount paid to SEL under provisions (i), (ii) and (iii) of this Section are less than* Dollars * then the Running Royalties paid for that same one-year period shall be recalculated at a rate of * of the Sales Price of the Licensed Products transferred by the Licensee or its Subsidiary to Arm’s Length Customers, and * of the Constructive Sales Price (as defined in provision (ii) of this Section) of Licensed Products Used by the Licensee or the Subsidiary of the Licensee, or of Licensed Products transferred by the Licensee or the Subsidiary of the Licensee to persons who are not Arm’s Length Customers. For any one-year period Running Royalties are calculated pursuant to this provision, Licensee shall pay SEL any difference owed for any semi-annual period of such one-year period in which royalties were originally calculated at * within * days after the end of the semi-annual period ending December 31 of that yearTermination, LICENSEE shall assign such sublicenses to LICENSOR.
Section 3.3 Running Royalties shall accrue at the time when each of the following occurs:
(a) In the event that any Licensed Products are transferred (as evidenced by the applicable invoice or xxxx) or disposed of by either the Licensee or a Subsidiary of Licensee to an Arm’s * Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. Length Customer, royalties accrue at the time of the sale or the disposal, regardless of whether any payment is then received by the Licensee or the Subsidiary of the Licensee; or
(b) In the event subparagraph (a) of Section 3.3 does not apply, and the Licensed Products are Used (as defined in Section 1.2(a) hereof) by the Licensee or a Subsidiary of the Licensee or transferred by the Licensee or a Subsidiary of Licensee to any person who is not an Arm’s Length Customer other than a Subsidiary of the Licensee, royalties accrue at the time when the Licensed Products are Used or transferred to any person not an Arm’s Length Customer.
Section 3.4 Given the worldwide scope of this agreement, the impracticality of monitoring by Licensee of the movement of the Licensed Products through international markets, and Licensee’s representation that it often does not know the ultimate destination of LCD panels and LCD modules it sells to OEMs, brokers and brand-name manufacturers, it is agreed and recognized that the royalties to be paid hereunder, as a whole, are fair and reasonable, representing a balance between the concerns and interests of both parties and resulting in a convenience to Licensee.
Appears in 1 contract
License Fees and Royalties. Section 3.1 In consideration of the licenses and rights granted herein, the Licensee shall pay to SEL a non-refundable initial license fee of * (the “Initial License Fee”) within * days of the day on which the last of the parties has signed this Agreement.
Section 3.2 The Licensee shall pay SEL Running Royalties for each Licensed Product which the Licensee or any Subsidiary of the Licensee transfers or Uses after August 31, 2003 in accordance with the following:
(i) In the event that the Licensee or a Subsidiary of the Licensee transfers the Licensed Products to any Arm’s Length Customer, the Running Royalties shall be calculated at the rate of * of the Sales Price of the subject Licensed Products; or
(a) In addition to consideration already delivered to Licensor pursuant to the event that Original Assignment Agreement, including 3,000 Warrants of Licensee issued by Licensee to Licensor and the Licensee or a Subsidiary of New Assignment Agreement, in consideration for the Licensee transfers the Licensed Products License and other rights granted herein to any person who is not an Arm’s Length Customer, other than a Subsidiary of the Licensee, as well as other promises and agreements herein, Licensee shall pay Licensor within five (5) days following the Running Royalties shall be calculated at the rate Effective Date, a nonrefundable payment of * of the average of the Sales Price of the same Licensed Products which the Licensee One Hundred and all Subsidiaries of the Licensee transfer to Arm’s Length Customers during each semi-annual period. Eighty Thousand Dollars (A semi-annual period shall be from January 1 to June 30 or from July 1 to December 31 of the yearUSD $180,000).)
(b) In further consideration for the event License and other rights granted herein to Licensee, as well as other promises and agreements herein, beginning the day that there is no transfer three (3) months after the Effective Date and each three-month period thereafter, Licensee shall pay Licensor Forty Five Thousand Dollars (USD $45,000) on or before the expiration of each three-month period (for the avoidance of doubt, Licensee shall pay Licensor such Forty Five Thousand Dollar (USD $45,000) payment four times in each twelve (12) month period following the Effective Date) until the earliest to occur of the same following events: (A) the first commercial sale of a Licensed Product anywhere in the world, (B) the expiration or invalidation of the last to an Arm’s Length Customer during expire or be invalidated of the subject semi-annual periodPatents Rights anywhere in the world, or (C) the royalty base shall be the average Sales Price for such Licensed Products during the most recent semi-annual period prior termination of this Agreement pursuant to the subject semi-annual periodSection 7.1 or 7.2 herein.
(c) In further consideration for the event that there is no transfer License and other rights granted herein to Licensee, as well as the other promises and agreements herein, Licensee shall pay Licensor for as long as Licensee shall continue to receive any income from the Licensed IP, Related Licensed IP, and/or Enabled Patents, if any, subject to the following terms, conditions, and limitations:
(A) for each country in which Patent Rights have issued and are in force, continuing until the expiration or invalidation of the same last to expire or be invalidated of the Patent Rights in such country, including any adjustments and/or extensions of the term of any such Patent Rights, (1) (i) an earned royalty of two percent (2%) on Net Sales of Licensed Products to an Arm’s Length Customer during any semi-annual periodderived from the Licensed IP, Related Licensed IP, and/or Enabled Patents that are not sold by a Sublicensee, and (ii) on each and every Sublicense earned royalty payment received by Licensee from its Sublicensees on sales of Licensed Products derived from the Licensed IP, Related Licensed IP, and/or Enabled Patents by a Sublicensee, the royalty base shall be the average higher of (x) twenty percent (20%) of the royalties received by Licensee from the Licensed IP, Related Licensed IP, and/or Enabled Patents; or (y) two percent (2%) on Net Sales Price of Sublicensee derived from the Licensed IP, Related Licensed IP, and/or Enabled Patents; and (2) twenty percent (20%) of all consideration received by Licensee and/or its Affiliates for Sublicenses, including but not limited to, Sublicense fees, consideration in the form of investments in equity in Licensee, and non-monetary consideration derived from the Licensed IP, Related Licensed IP, and/or Enabled Patents received by Licensee from Sublicensees that are not earned royalties;
(B) after the expiration or invalidation of the last to expire or be invalidated of the Patents Rights in a country or if no Patent Rights have issued or are in force in a country but Enabled Patents have issued and are in force in the country, continuing until the expiration or invalidation of the last to expire or be invalidated of the Enabled Patents in such country, (1) (i) an earned royalty of one-and-three-quarters percent (1.75%) on Net Sales of Licensed Products with derived from the same screen size transferred Licensed IP, Related Licensed IP, and/or Enabled Patents that are not sold by a Sublicensee, and (ii) on each and every Sublicense earned royalty payment received by Licensee from its Sublicensees on sales of Licensed Product derived from the Licensed IP, Related Licensed IP, and/or Enabled Patents by a Sublicensee, the higher of (x) seventeen-and-one-half percent (17.5%) of the royalties received by Licensee from the Licensed IP, Related Licensed IP, and/or Enabled Patents; or (y) one-and-three-quarters percent (1.75%) on Net Sales of Sublicensee derived from the Licensed IP, Related Licensed IP, and/or Enabled Patents; and (2) seventeen-and-one-half percent (17.5%) of all consideration received by Licensee and/or its Affiliates for Sublicenses, including but not limited to, Sublicense fees, consideration in the form of investments in equity in Licensee, and non-monetary consideration derived from the Licensed IP, Related Licensed IP, and/or Enabled Patents received by Licensee from Sublicensees that are not earned royalties; and
(C) after the expiration or invalidation of the last to Arm’s Length Customers during expire or be invalidated of the subject semiPatent Rights and Enabled Patents in a country or if no Patent Rights or Enabled Patents have issued or are in force in a country, (1) (i) an earned royalty of one-annual periodand-one-half percent (1.5%) on Net Sales of Licensed Products derived from the Licensed IP, Related Licensed IP, and/or Enabled Patents that are not sold by a Sublicensee, and (ii) on each and every Sublicense earned royalty payment received by Licensee from its Sublicensees on sales of Licensed Product derived from the Licensed IP, Related Licensed IP, and/or Enabled Patents by a Sublicensee, the higher of (x) fifteen percent (15%) of the royalties received by Licensee from the Licensed IP, Related Licensed IP, and/or Enabled Patents; or (y) one-and-one-half percent (1.5%) on Net Sales of Sublicensee derived from the Licensed IP, Related Licensed IP, and/or Enabled Patents; and (2) fifteen percent (15%) of all consideration received by Licensee and/or its Affiliates for Sublicenses, including but not limited to, Sublicense fees, consideration in the form of investments in equity in Licensee, and non-monetary consideration derived from the Licensed IP, Related Licensed IP, and/or Enabled Patents received by Licensee from Sublicensees that are not earned royalties.
(d) In * Certain information on this page has been omitted Beginning the calendar year after cessation of payments under Section 3.1(b) pursuant to Section 3.1(b)(A) and filed separately with continuing until the Commission. Confidential treatment has been requested with respect earlier to the omitted portions. the event that there is no transfer of Licensed Products with the same screen size to an Arm’s Length Customer during any semi-annual period, the royalty base shall be the average Sales Price of Licensed Products with a screen size that is larger than, but the most similar to such Licensed Products transferred to Arm’s Length Customers during the subject semi-annual period. The average Sales Price determined as set forth in this provision (ii) shall be referred to as the “Constructive Sales Price”.
(a) In the event that the Licensee or a Subsidiary occur of the events specified in Section 3.1(b)(B) or 3.1(b)(C), if the total amounts paid by Licensee Uses the Licensed Products, the Running Royalties shall be calculated at the rate of * of the average of the Sales Price of the same Licensed Products which the Licensee and all Subsidiaries of the Licensee transfer to Arm’s Length Customers during each semi-annual period. (A semi-annual period shall be from January 1 to June 30 or from July 1 to December 31 of the year.) (b) In the event that there is no transfer of the same Licensed Product to an Arm’s Length Customer during the subject semi-annual period, the royalty base shall be determined by using the Constructive Sales Price calculated as set forth in provision (ii) of this Section.
(iv) Notwithstanding Section 6.6 of Article 6 of this Agreement, in the event that as of the expiration or termination of this Agreement the Licensee or any Subsidiaries of the Licensee are in possession of any Licensed Products for which a Running Royalty has not accrued under Section 3.3 of this Agreement, then for 3.1(c) to Licensor in any such Licensed Products, the Running Royalties shall accrue as of the expiration or termination of this Agreement, and the Running Royalties shall be calculated at the rate of * of the average of the Sales Price of the same Licensed Products which the Licensee and all Subsidiaries of the Licensee transferred to Arm’s Length Customers during the semi-annual period including the expiration or termination date of this Agreement. (A semi-annual period shall be from January 1 to June 30 or from July 1 to December 31 of the year.) (b) In the event that there is no transfer of the same Licensed Product to an Arm’s Length Customer during the semi-annual period including the expiration date of this Agreement, the royalty base shall be determined by using the Constructive Sales Price calculated as set forth in provision (ii) of this Section.
(v) Starting with January 1, 2004, if for any one-year period (a one-year period shall be from January 1 to December 31 of the same year) the total Running Royalties amount paid to SEL under provisions (i), (ii) and (iii) of this Section cumulatively are less than* Dollars * then the Running Royalties paid for that same one-year period shall be recalculated at a rate of * of the Sales Price of the Licensed Products transferred by the Licensee or its Subsidiary to Arm’s Length Customers, and * of the Constructive Sales Price (as defined in provision (ii) of this Section) of Licensed Products Used by the Licensee or the Subsidiary of the Licensee, or of Licensed Products transferred by the Licensee or the Subsidiary of the Licensee to persons who are not Arm’s Length Customers. For any one-year period Running Royalties are calculated pursuant to this provisionthan USD $180,000, Licensee shall pay SEL any difference owed for any semi-annual period to Licensor on or before February 28 following the last quarter of such one-year period in which royalties were originally calculated at * within * days after the end difference between USD $180,000 and the total amount paid by Licensee for such year under Section 3.1(c); provided, however, that for the year of commercial sales of the semi-annual period ending December 31 first Licensed Product, the amount payable under this Section 3.1(d) shall be prorated for the number of months remaining in that calendar year.
Section 3.3 Running Royalties shall accrue at the time when each of the following occurs:
(a) In the event that any Licensed Products are transferred (as evidenced by the applicable invoice or xxxx) or disposed of by either the Licensee or a Subsidiary of Licensee to an Arm’s * Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. Length Customer, royalties accrue at the time of the sale or the disposal, regardless of whether any payment is then received by the Licensee or the Subsidiary of the Licensee; or
(b) In the event subparagraph (a) of Section 3.3 does not apply, and the Licensed Products are Used (as defined in Section 1.2(a) hereof) by the Licensee or a Subsidiary of the Licensee or transferred by the Licensee or a Subsidiary of Licensee to any person who is not an Arm’s Length Customer other than a Subsidiary of the Licensee, royalties accrue at the time when the Licensed Products are Used or transferred to any person not an Arm’s Length Customer.
Section 3.4 Given the worldwide scope of this agreement, the impracticality of monitoring by Licensee of the movement of the Licensed Products through international markets, and Licensee’s representation that it often does not know the ultimate destination of LCD panels and LCD modules it sells to OEMs, brokers and brand-name manufacturers, it is agreed and recognized that the royalties to be paid hereunder, as a whole, are fair and reasonable, representing a balance between the concerns and interests of both parties and resulting in a convenience to Licensee.
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