Common use of Payment for Third Party Licenses Clause in Contracts

Payment for Third Party Licenses. (a) Each Party will be responsible for paying all Third Party license fees, royalties, and/or milestones, with respect to Third Party licenses entered into by such Party or its Affiliates prior to or on the Effective Date or during the Term, for intellectual property that is necessary or reasonably useful for the Exploitation of any Licensed Product. For such Third Party licenses to Preexisting Third Party IP, the paying Party will be entitled to deduct up to [***] of such amounts due to any such Third Party from royalties payable to the other Party hereunder on such Licensed Product. For such Third Party licenses obtained during the Term, the paying Party will be entitled to deduct [***] of such amounts due to any such Third Party from royalties payable to the other Party hereunder on such Licensed Product. Notwithstanding the foregoing, in no event shall such royalty payable to Takeda in any Calendar Quarter as a result of this reduction be less than [***] of the amount that would otherwise be due. (b) Ultragenyx shall be responsible for paying all Third Party license fees, royalties, and/or milestones, with respect to Third Party licenses for intellectual property that is necessary or reasonably useful for the Exploitation of any Ultragenyx Pipeline Product, where such licenses are entered into (i) prior to or on the Effective Date or (ii) unless and until such Ultragenyx Pipeline Product is an Exercised Product, during the Term. Each Party will be responsible for paying all Third Party license fees, royalties, and/or milestones, with respect to Third Party licenses for intellectual property that is necessary or reasonably useful for the Exploitation of any Ultragenyx Pipeline Product that is an Exercised Product entered into by such Party or its Affiliates on or after the date on which it becomes an Exercised Product. For such Third Party licenses obtained by Takeda or its Affiliates, Takeda will be entitled to deduct [***] of such amounts due to any such Third Party from royalties payable to Ultragenyx on such Exercised Product. Notwithstanding the foregoing, in no event shall the royalty payable to Ultragenyx in any Calendar Quarter on such Exercised Product as a result of this reduction be less than [***] of the amount that would otherwise be due. (c) Notwithstanding the foregoing, for intellectual property held by a Third Party that is necessary or reasonably useful for the Exploitation of any Exercised Products in both the Exercised Countries and other countries in the Territory, the Parties will coordinate license negotiations with such Third Party for rights in both the Exercised Countries and other countries in the Territory.

Payment for Third Party Licenses. (a) Each Party During the Term, Licensee will be responsible for paying all have the right, following reasonable consultation with Takeda, to negotiate and obtain a license under one or more Patents (other than any license granted in settlement of any litigation as contemplated under Section 9.6) from one or more Third Parties (each such Third Party license fees, royalties, and/or milestones, with respect is referred to herein as a “Third Party licenses entered into by License”) if in the absence of a license under such Third Party or its Affiliates prior to or on the Effective Date or during the TermPatents, for intellectual property that is necessary or reasonably useful for the Exploitation of any Licensed Product. For the applicable Compound or Product in the Field in the Territory in a manner consistent with Licensee’s obligation to use Commercially Reasonable Efforts to Develop and Commercialize the Compound and the Product under this Agreement would, in Licensee’s good faith assessment, upon advice of legal counsel, infringe such Third Party licenses Patents. Except as set forth in Section 8.7(c) or to Preexisting the extent of any Claim for which Takeda provides indemnification under Section 15.2, or as the Parties may otherwise agree in writing, Licensee shall bear any payments associated with any royalties owed to any Third Party IPfor such a Third Party License (collectively, the paying “Third Party will Royalties”). (b) In the event that Takeda disputes Licensee’s determination that any Third Party Royalties are properly subject to the royalty offset provided under this Section 8.7 or Licensee’s allocation of any such Third Party Royalties to a Product, Takeda may by written notice to Licensee require that such dispute be entitled resolved in accordance with Article 14; provided that Licensee shall have the right to deduct take royalty reductions pursuant to this Section 8.7 pending resolution of any such dispute; provided further, that if any such dispute is resolved in favor of Takeda, then within [***] of such resolution, Licensee shall pay to Takeda any adjustment in royalties due pursuant to this Section 8.7 as required by such resolution. (c) Subject to the limitation set forth in Section 8.8, Licensee may credit up to [***] of such amounts due to any such Third Party from royalties payable to the other Party hereunder on such Licensed Product. For such Third Party licenses obtained during the Term, the paying Party will be entitled to deduct percent ([***]%)] of such amounts due to the amount of any such Third Party from Royalties paid by Licensee under a Third Party License pursuant to Section 8.7(a), or paid under any license granted in settlement of any claim of infringement of any Third Party claim of infringement under Section 9.6, against royalties payable to Takeda under Section 8.3. Licensee may take such credit during the other Party hereunder on such Licensed Product. Notwithstanding the foregoingCalendar Quarter for which royalties are payable hereunder; provided, that in no event shall will such royalty credit reduce the royalties payable to Takeda in any for such Calendar Quarter as a result of this reduction be less by more than [***] of the amount that would otherwise be due. percent (b) Ultragenyx shall be responsible for paying all Third Party license fees, royalties, and/or milestones, with respect to Third Party licenses for intellectual property that is necessary or reasonably useful for the Exploitation of any Ultragenyx Pipeline Product, where such licenses are entered into (i) prior to or on the Effective Date or (ii) unless and until such Ultragenyx Pipeline Product is an Exercised Product, during the Term. Each Party will be responsible for paying all Third Party license fees, royalties, and/or milestones, with respect to Third Party licenses for intellectual property that is necessary or reasonably useful for the Exploitation of any Ultragenyx Pipeline Product that is an Exercised Product entered into by such Party or its Affiliates on or after the date on which it becomes an Exercised Product. For such Third Party licenses obtained by Takeda or its Affiliates, Takeda will be entitled to deduct [***] of such amounts due to any such Third Party from royalties payable to Ultragenyx on such Exercised Product. Notwithstanding the foregoing, in no event shall the royalty payable to Ultragenyx in any Calendar Quarter on such Exercised Product as a result of this reduction be less than [***] of the amount that would otherwise be due]%). (cd) Notwithstanding the foregoing, for intellectual property held by a This Section 8.7 shall not apply to any Third Party that is necessary Royalties payable by Licensee or reasonably useful for any of its Affiliates or sublicensees under any license or other agreement or understanding, written or oral, between Licensee or any of its Affiliates or sublicensees, on the Exploitation one hand, and any Third Party, on the other hand, in existence as of any Exercised Products in both the Exercised Countries and other countries in the Territory, the Parties will coordinate license negotiations with such Third Party for rights in both the Exercised Countries and other countries in the TerritoryEffective Date.

Payment for Third Party Licenses. If the Parties agree to obtain a license under THIRD PARTY PATENTS with respect to manufacture, use or sale of a PRODUCT, as provided in Section 9.4 or if the Parties are required to pay royalties to a THIRD PARTY to settle or otherwise resolve a PATENT infringement suit alleging PATENT infringement by a PRODUCT, as provided in Section 9.5, the Parties agree that all such royalties shall be paid as provided in this Section. For royalties that are based on the manufacture, use, sale, offer for sale or importation of DRUG PRODUCTS or the use of an AERx SYSTEM (the "Third Party Product Royalties"), the payment shall be as provided in subsection (a) Each below. For royalties that are based on the manufacture, use, sale, offer for sale or importation of an AERx DEVICE or ACCESSORY (the "Third Party will Device Royalties"), the payment shall be responsible for paying as provided in subsection (b) below. (a) Payment of all Third Party license feesProduct Royalties shall be as follows: (i) Subject to subsection 9.7(a)(ii), royalties, and/or milestones, with respect to the Parties agree [*] in the payment of all Third Party licenses entered into by such Product Royalties which must be paid. Each Party or its Affiliates prior to or on the Effective Date or during the Term, for intellectual property that is necessary or reasonably useful for the Exploitation of any Licensed Product. For such pays a Third Party licenses to Preexisting Third Party IP, the paying Party will Product Royalty shall be entitled to deduct up to [***] of such amounts due to any such Third Party from royalties payable to reimbursed by the other Party hereunder on such Licensed Product. For such Third Party licenses obtained during the Term, the paying Party will be entitled to deduct [***] of such amounts due to any such Third Party from royalties payable to the other Party hereunder on such Licensed Product. Notwithstanding the foregoing, in no event shall such royalty payable to Takeda in any Calendar Quarter as a result of this reduction be less than [***] of the amounts of such Third Party Royalties within thirty (30) days after delivery of an invoice therefor. (ii) In the event that the total amount of Third Party Product Royalties that would otherwise the Parties are obligated to pay with respect to a particular PRODUCT [*] then the Parties shall meet to address such situation by good faith negotiation between senior management representatives of the Parties using DILIGENT EFFORTS, to be due.commenced promptly, to seek to find [*] In the event that such management representatives cannot reach such agreeable resolution to the situation within sixty (60) days of that date such situation arose, then the matter shall be resolved by binding arbitration under Section 13.1, with the following additional requirement for such arbitration: The object of such arbitration shall be that the arbitration establish a mechanism for [*] (b) Ultragenyx shall be responsible for paying all The Parties agree [*] Third Party license fees, royalties, and/or milestones, Device Royalties subject to the following limitations: [*] Third Party Device Royalties which payments would cause the [*] (as defined in * Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to Third Party licenses for intellectual property that is necessary or reasonably useful for the Exploitation of any Ultragenyx Pipeline Product, where such licenses are entered into (i) prior to or on the Effective Date or (ii) unless and until such Ultragenyx Pipeline Product is an Exercised Product, during the Term. Each Party will be responsible for paying all Third Party license fees, royalties, and/or milestones, with respect to Third Party licenses for intellectual property that is necessary or reasonably useful for the Exploitation of any Ultragenyx Pipeline Product that is an Exercised Product entered into by such Party or its Affiliates on or after the date on which it becomes an Exercised Product. For such Third Party licenses obtained by Takeda or its Affiliates, Takeda will be entitled to deduct [***] of such amounts due to any such Third Party from royalties payable to Ultragenyx on such Exercised Product. Notwithstanding the foregoing, in no event shall the royalty payable to Ultragenyx in any Calendar Quarter on such Exercised Product as a result of this reduction be less than [***] of the amount that would otherwise be dueomitted portions. (c) Notwithstanding the foregoing, for intellectual property held by a Third Party that is necessary or reasonably useful for the Exploitation of any Exercised Products in both the Exercised Countries and other countries in the Territory, the Parties will coordinate license negotiations with such Third Party for rights in both the Exercised Countries and other countries in the Territory.

Payment for Third Party Licenses. (a) Each Party During the Term, Licensee or any of its Affiliates will be responsible for paying all have the right, following reasonable consultation with Takeda, to negotiate and obtain a license under one or more Patents from one or more Third Parties (each such Third Party license fees, royalties, and/or milestones, with respect (including any license granted in settlement of any litigation as contemplated under Section 10.6) is referred to herein as a “Third Party licenses entered into by License”) if in the absence of a license under such Third Party or its Affiliates prior to or on the Effective Date or during the TermPatents, for intellectual property that is necessary or reasonably useful for the Exploitation of any Licensed Product. For the Compound or Product would, in Licensee’s good faith assessment, upon advice of legal counsel, infringe such Third Party licenses to Preexisting Patents. Except as set forth in clause (c) of this Section 7.7 or as the Parties may otherwise agree in writing, Licensee or any of its Affiliates shall bear any upfront license fees, license option grant or exercise fees, license maintenance fees, milestone payments and royalties under any Third Party IPLicense provided that such upfront license fees, license option grant or exercise fees, license maintenance fees, milestone payments and royalties arise in connection with, or pertain to, the paying Exploitation of the Compound or Products by Licensee or any of its Affiliates or Sublicensees (collectively, the “Third Party will be entitled to deduct up to [***] of such amounts due Payments”) and any other payments owed to any such Third Party from royalties payable to the other Party hereunder on for such Licensed Product. For such a Third Party licenses obtained during the Term, the paying Party will be entitled to deduct [***] of such amounts due to any such Third Party from royalties payable to the other Party hereunder on such Licensed Product. Notwithstanding the foregoing, in no event shall such royalty payable to Takeda in any Calendar Quarter as a result of this reduction be less than [***] of the amount that would otherwise be dueLicense. (b) Ultragenyx shall be responsible for paying all In the event that Takeda disputes Licensee’s determination that any Third Party license fees, royalties, Payments are properly subject to the milestone payment and/or milestones, with respect to Third Party licenses for intellectual property that is necessary royalty offset provided under this Section 7.7 or reasonably useful for the Exploitation Licensee’s allocation of any Ultragenyx Pipeline Product, where such licenses are entered into (i) prior to or on the Effective Date or (ii) unless and until such Ultragenyx Pipeline Product is an Exercised Product, during the Term. Each Party will be responsible for paying all Third Party license fees, royalties, and/or milestones, with respect to Third Party licenses for intellectual property that is necessary or reasonably useful for the Exploitation of any Ultragenyx Pipeline Product that is an Exercised Product entered into by such Party or its Affiliates on or after the date on which it becomes an Exercised Product. For such Third Party licenses obtained by Takeda or its Affiliates, Takeda will be entitled to deduct [***] of such amounts due to any such Third Party from royalties payable Payments to Ultragenyx on a Product, Takeda may by written notice to Licensee require that such Exercised Product. Notwithstanding the foregoing, Dispute be resolved in no event shall the royalty payable to Ultragenyx in any Calendar Quarter on such Exercised Product as a result accordance with Article 14 of this reduction be less than [***] Agreement; provided that Licensee shall have the right to take milestone payment and/or royalty reductions pursuant to this Section 7.7 pending resolution of the amount any such Dispute; provided further, that would otherwise be dueif any such Dispute is resolved in favor of Takeda, then within sixty (60) days of such resolution, Licensee shall pay to Takeda any adjustment in milestone payments and/or royalties due pursuant to this Section 7.7 as required by such resolution. (c) Notwithstanding Licensee may credit up to [ ]* of the foregoingamount of any Third Party Payments that consist of upfront license fees, for intellectual property held license option grant or exercise fees, license maintenance fees or milestone payments paid by Licensee or any of its Affiliates under a Third Party License pursuant to clause (a) above (collectively, “Creditable Payments”), against any milestone payments that is necessary would otherwise be payable to Takeda under Section 7.2 or reasonably useful for Section 7.3; provided, that in no event will such credit reduce any milestone payment that would otherwise be payable to Takeda under Section 7.2 or Section 7.3 by more than [ ]*. Licensee may credit (i) any amount that Licensee was unable to credit against milestone payments by virtue of the Exploitation proviso in the immediately preceding sentence and (ii) up to [ ]* of the amount of any Exercised Products in both the Exercised Countries and other countries Creditable Payments that consist of royalties paid by Licensee or any of its Affiliates under a Third Party License pursuant to clause (a) above against any royalties that would otherwise be payable to Takeda under Section 7.4. Licensee may take such credit for Creditable Payments that consist of any such amount referred to in the Territoryforegoing clause (i) and/or royalties during a Calendar Quarter for which royalties are payable hereunder; provided, that in no event will such credit reduce the Parties will coordinate license negotiations with royalties payable to Takeda for such Calendar Quarter by more than [ ]*. (d) This Section 7.7 shall not apply to any Third Party for rights Payments payable by Licensee or any of its Affiliates or Sublicensees under any license or other agreement or understanding, written or oral, between Licensee or any of its Affiliates or Sublicensees, on the one hand, and any Third Party, on the other hand, in both existence as of the Exercised Countries and other countries in the TerritoryEffective Date.