Common use of Licenses to New Necessary Patents Clause in Contracts

Licenses to New Necessary Patents. If Pfizer determines that it is necessary to obtain a license under any Patent of a Third Party that would be infringed by the sale by Pfizer of the Product, as the Product exists on the Effective Date (excluding, for the avoidance of doubt, any additional technology that may be combined or incorporated therewith, or any future improvements or enhancements to the Product) in the Territory (as in existence on the Effective Date) for use in the Field (as defined on the Effective Date), other than those described in Section 8.5.1 necessary to make, use, sell, offer for sale or import the Product for sale in the Field in the Territory, then the Parties shall meet to discuss and determine which Party will be primarily responsible for the negotiation and execution of the corresponding license agreement; provided, however, that, notwithstanding the foregoing, Auxilium shall have the sole right to obtain a license, and negotiate and execute a license agreement, in connection with the Manufacture of the Product or with respect to any intellectual property applicable to the Product on a worldwide basis (and, provided, that at the request of Auxilium, any such license from a Third Party shall include a license to Auxilium and its sublicensees with respect to the Product outside the Territory (and/or outside the Field)). Any amounts due under such Third Party ** CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND WILL BE FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. license agreement with respect to sale of the Product in the Field in the Territory will be borne by Pfizer; provided, however, that Pfizer shall be entitled to deduct up to fifty percent (50%) of the royalties payable to such Third Party (on account of the sale of the Product in the Field in the Territory) from the Commercialization Payments thereafter made by Pfizer to Auxilium hereunder; provided, however, that the Commercialization Payments payable under Section 8.3.1 shall not be reduced in any such event below fifty percent (50%) of the amounts set forth in Section 8.3.1. In no event shall a license be deemed to be “necessary” on a Third Party Patent that is not issued, literally infringed or has genuine issues of fact that raise a reasonable defense that such Patent is invalid or unenforceable.

Licenses to New Necessary Patents. If Pfizer Actelion determines that it is necessary to obtain a license under any Patent of a Third Party that would be infringed by the sale by Pfizer Actelion of the Finished Product, as the Bulk Product exists on the Effective Date (excluding, for the avoidance of doubt, any additional technology that may be combined or incorporated therewith, or any future improvements or enhancements to the Bulk Product) in the Territory (as in existence on the Effective Date) for use in the Field (as defined on the Effective Date), other than those described in Section 8.5.1 necessary to make, use or import the Bulk Product or use, sell, sell or offer for sale or import the Finished Product for sale in the Field in the Territory, then (x) the Parties shall meet to discuss such determination and determine Auxilium shall consider Actelion’s comments in good faith and (y) if Auxilium determines that it is still necessary to obtain such license, the Parties shall consult with respect to which Party will be primarily responsible for the negotiation and execution of the corresponding license agreement; provided, however, that, notwithstanding the foregoing, Auxilium shall have the sole right to obtain a license, and negotiate and execute a license agreement, in connection with the Manufacture of the Bulk Product or with respect to any intellectual property applicable to the Bulk Product or Finished Product on a worldwide basis (and, provided, that at the request of Auxilium, any such license from a Third Party shall include a license to Auxilium and its sublicensees with respect to the Bulk Product and Finished Product outside the Territory (and/or outside the Field)). Any amounts due under such Third Party ** CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND WILL BE FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. license agreement with respect to sale of the Finished Product in the Field in the Territory will be borne by PfizerActelion; provided, however, that Pfizer Actelion shall be entitled to deduct up to fifty percent (50%) of the royalties payable to such Third Party (on account of the sale of the Finished Product in the Field in the Territory) from the Commercialization Royalty Payments thereafter made by Pfizer Actelion to Auxilium hereunder; provided, however, that the Commercialization Royalty Payments payable under Section 8.3.1 shall not be reduced in any such event below fifty percent (50%) of the amounts set forth in Section 8.3.1. In no event shall a license be deemed to be “necessary” on a Third Party Patent that is not issued, literally infringed or has genuine issues of fact that raise a reasonable defense that such Patent is invalid or unenforceable.

Licenses to New Necessary Patents. If Pfizer Sobi determines that it is necessary to obtain a license under any Patent of a Third Party that would be infringed by the sale by Pfizer Sobi of the Finished Product, as the Bulk Product exists on the Effective Date (excluding, for the avoidance of doubt, any additional technology that may be combined or incorporated therewith, or any future improvements or enhancements to the Bulk Product) in the Territory (as in existence on the Effective Date) for use in the Field (as defined on the Effective Date), other than those described in Section 8.5.1 8.4.1 necessary to make, use or import the Bulk Product or use, sell, sell or offer for sale or import the Finished Product for sale in the Field in the Territory, then (x) the Parties shall meet to discuss such determination and determine which Party Auxilium shall consider Sobi’s comments in good faith and (y) if Auxilium determines that it is still necessary to obtain such license, Auxilium will be primarily responsible for the negotiation and execution of the corresponding license agreement; provided, however, that, notwithstanding the foregoing, Auxilium shall have the sole right to obtain a license, and negotiate and execute a license agreement, in connection with the Manufacture of the Bulk Product or with respect to any intellectual property applicable to the Bulk Product or Finished Product on a worldwide basis (and, provided, that at the request of Auxilium, any such license from a Third Party shall include a license to Auxilium and its sublicensees (including without limitation with the right to sublicense) with respect to the Bulk Product and Finished Product outside the Territory (and/or outside the Field)). Any amounts due under such Third Party ** CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND WILL BE FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. license agreement with respect to sale of the Finished Product in the Field in the Territory will be borne by PfizerSobi; provided, however, that Pfizer Sobi shall be entitled to deduct up to fifty percent (50%) of the royalties payable to such Third Party (on account of the sale of the Finished Product in the Field in the Territory) from the Commercialization Royalty Payments thereafter made by Pfizer Sobi to Auxilium hereunder; provided, however, that the Commercialization Royalty Payments payable under Section 8.3.1 8.2.1 shall not be reduced in any such event below fifty percent (50%) of the amounts set forth in Section 8.3.18.2.1. In no event shall a license be deemed to be “necessary” on a Third Party Patent that is not granted or issued, literally infringed or has genuine issues of fact that raise a reasonable defense that such Patent is invalid or unenforceable.

Licenses to New Necessary Patents. If Pfizer Asahi determines that it is necessary to obtain a license under any Patent of a Third Party that would be infringed by the sale Development or Commercialization by Pfizer Asahi of the Product, as the Product exists on the Effective Date (excluding, for the avoidance of doubt, any additional technology that may be combined or incorporated therewith, or any future improvements or enhancements to the Product) in the Territory (as in existence on the Effective Date) for use in the Field (as defined on the Effective Date), other than those described in Section 8.5.1 necessary to make, use, sell, offer for sale or import the Product for sale in the Field in the Territory, then the Parties shall meet to discuss and determine which Party will be primarily responsible for the negotiation and execution of the corresponding license agreement; provided, however, that, notwithstanding the foregoing, Auxilium shall have the sole right to obtain a license, and negotiate and execute a license agreement, in connection with the Manufacture of the Product or with respect to any intellectual property applicable to the Product on a worldwide basis (and, provided, that at the request of Auxilium, any such license from a Third Party shall include a license to Auxilium and its sublicensees with respect to the Product outside the Territory (and/or outside the Field))) during the Term. Any amounts due under such Third Party ** CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND WILL BE FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. license agreement with respect to sale of the Product in the Field in the Territory will be borne by PfizerAsahi; provided, however, that Pfizer Asahi shall be entitled to deduct up to fifty percent (50%) of the royalties payable to such Third Party in any given calendar quarter (on account of the sale of the Product in the Field in the Territory) from the Commercialization Royalty Payments thereafter made by Pfizer Asahi to Auxilium hereunder; provided, however, that the Commercialization Royalty Payments payable under Section 8.3.1 8.3 shall not be reduced in any such event in any given calendar quarter below fifty percent (50%) of the amounts set forth in Section 8.3.18.3.1 and 8.3.2, as applicable. To the extent that Auxilium obtains a license under such a Third Party license agreement to sell the Product outside the Territory or outside the Field in the Territory, any amounts due under such a Third Party license agreement with respect to the sale of the Product outside the Territory or outside the Field in the Territory will be borne solely by Auxilium. In no event shall a license be deemed to be “necessary” on a Third Party Patent that is not issued, literally infringed or has genuine issues of fact that raise a reasonable defense that such Patent is invalid or unenforceable.