ROYALTIES AND OTHER CONSIDERATION. (a) As additional consideration of the license granted to LICENSEE from ACT in Article 2 of this Agreement, LICENSEE shall pay to ACT a royalty equal to (i) 5% of the Net Sales received by LICENSEE and its AFFILIATES for all LICENSED PRODUCTS, LICENSED PROCESS or LICENSED SERVICE sold, performed, or leased by LICENSEE or any AFFILIATE, and (ii) 20% of all SUBLICENSE REVENUE received by LICENSEE and its AFFILIATES. The obligation of LICENSEE to pay royalties shall terminate (a) with respect to NET SALES and SUBLICENSE REVENUE arising in any country concurrently with the expiration or termination of the last applicable VALID CLAIM within the PATENT RIGHTS in such country in which the LICENSED PRODUCT, LICENSED PROCESS or LICENSED SERVICE is, (as applicable), performed, sold, leased, or manufactured, or in which the PATENT RIGHTS are licensed, and (b) in any and all cases when royalty payments to ACT by LICENSEE total Six Hundred Thousand Dollars (U.S.) ($600,000.00); provided, however, that such $600,000 of royalties shall be reduced to $200,000 if LICENSEE, at LICENSEE’S option, pays ACT $200,000 in cash within thirty (30) days after the execution of this Agreement in addition to the License fee payable under Section 5.1 (such that the License Fee, additional $200,000 payment, and potential future royalties will total $600,000).
(b) No multiple royalties shall be payable on the basis that any LICENSED PRODUCT, LICENSED PROCESS or LICENSED SERVICE, its manufacture, use, lease, sale or performance are or shall be covered by (a) more than one patent or patent application within the PATENT RIGHTS, or (b) any other patent or know how under a license or sublicense from ACT. In the case of the use of patents or know how licensed or sublicensed by ACT under other agreements, LICENSEE and ACT’s other licensees or sublicensees shall have the right to credit against the royalties owing to ACT, under this Agreement and under such other license or sublicense agreements, any royalty payments received by ACT with respect to the sale or lease of any product or performance of any service (regardless of whether LICENSEE or another licensee or sublicensee of ACT patents or know how pays the royalty), such that in no event shall the total of royalty payments that are due to ACT in any royalty period under this Agreement and under such other license or sublicense agreements exceed the highest applicable royalty rate among this Agreement and such other license or sublicense agre...
ROYALTIES AND OTHER CONSIDERATION. 5.1 For the rights, privileges and license granted by UNIVERSITY to LICENSEE hereunder, LICENSEE shall reimburse patent costs and pay royalties and other considerations to UNIVERSITY in the manner hereinafter provided until the earlier of (x) the end of the term of the last to expire of the PATENT RIGHTS and (y) the date that this AGREEMENT is earlier terminated:
ROYALTIES AND OTHER CONSIDERATION. 4.1 In consideration of the rights, privileges and license granted by UNIVERSITY hereunder, LICENSEE shall pay royalties and other consideration as follows:
(a) as an initial license fee, within ten (10) days execution of the Agreement, [*] Dollars ($[*]) and [*] fully-paid shares of Common Stock of LICENSEE, upon the terms set forth in the Stock Issuance Agreement attached hereto as Exhibit “B”, (plus the reimbursement of reasonable patent expenses incurred as of the Effective Date);
(b) within ten (10) days following the issuance of a United States patent claiming priority from U.S. Patent [*] and which includes, inter alia, claims substantially identical to those identified as pending claims [*] in UNIVERSITY’s “Response to Office Action” dated October 3, 2001, a milestone payment of [*] Shares of fully-paid Common Stock of LICENSEE upon the terms set forth in Exhibit “B”; and
(c) royalties in an amount equal to [*] percent ([*]%) of NET SALES determined in a manner consistent with Section 4.7, below.
4.2 Royalty payments pursuant to Section 4.1(c), above, shall be paid to UNIVERSITY in United States dollars and directed to the address set forth in Section 12 hereof within sixty (60) days after March 31, June 30, September 30 and December 31 of each calendar year during the term of this Agreement. LICENSEE shall have the right to reduce the royalty rate payable under Section 4.1(c) in any calendar quarter by [*] of the royalty rate paid to any third party, by judgment, contract or otherwise, for the right to manufacture, use or sell any LICENSED PRODUCT in such calendar quarter; provided, however, that the royalty rate due UNIVERSITY hereunder shall in no event be reduced to less than [*] percent ([*]%) of NET SALES.
4.3 Commencing on the first anniversary of the Effective Date, LICENSEE shall pay to UNIVERSITY a minimum annual royalty, which amount shall be creditable against royalties actually due to the UNIVERSITY with respect to NET SALES in such calendar year. The first such payment shall be [*] Dollars ($[*]). The amount of such annual payment shall increase each year by [*] Dollars ($[*]), up to a maximum of [*] Dollars ($[*)] per year.
4.4 UNIVERSITY shall also receive: (i) [*] percent ([*]%) of all SUB-LICENSE REVENUES received by LICENSEE within the first twelve (12) months after the Effective Date; (ii) [*] percent ([*]%) of all SUB-LICENSE REVENUES received more than twelve (12) months but fewer than twenty-four (24) months after the EFFECTI...
ROYALTIES AND OTHER CONSIDERATION. 4.1 Within ninety (90) days after the pre-IND meeting to be held at the United States Food and Drug Administration (“FDA”) on December 13, 2005 (“The pre-IND Meeting”), the Company shall pay to Ovamed or directly to UIRF (at the Company’s option) the following:
4.1.1 a non-refundable license fee of One Hundred Ten Thousand Dollars ($110,000) upon execution of this Agreement;
4.1.2 One Hundred Percent (100%) of all monies paid by Ovamed to UIRF for costs incurred as of the effective date of the License Agreement relating to the preparation, filing, prosecution and maintenance of the Patent Rights where such costs as of July 20, 2005 were One Hundred Ninety Thousand Six Hundred Thirty Three Dollars and Ninety Three Cents ($190,633.93) plus any costs incurred by UIRF between July 20, 2005 and the Effective Date of this Agreement;
4.2 The Company agrees to pay to Ovamed or directly to UIRF (at the Company’s option) the royalties set forth below, to the end of the term of this License Agreement or until this Agreement shall be terminated as hereinafter provided.
4.1.1 During the term of the License Agreement, the Company shall pay Ovamed or directly to UIRF (at the Company’s option) royalties equal to: four percent (4%) of Net Sales by the Company, Affiliates or Company Sublicensees;
4.1.2 The Company shall also pay to Ovamed thirty percent (30%) of any NRSI received by the Company as a result of the sublicensing of any of the Patent Rights prior to the pre-IND meeting in the United States or a foreign equivalent; twenty percent (20%) of NRSI subsequent to the pre-IND but prior to commencement of clinical trials; fifteen percent (15%) of NRSI after commencement of clinical trials, but prior to the completion of enrollment of a phase II clinical trial; and ten percent (10%) of any NRSI subsequent to enrollment of a Phase II clinical trial.
4.3 As further consideration for the license granted hereunder, the Company will make the following one-time milestone payments (each a “Milestone Payment”) to Ovamed.
4.3.1 One Million Five Hundred Thousand] Dollars ($1,500,000) upon acceptance by the FDA of a Company-, Affiliate- or Company Sublicensee- sponsored Investigational New Drug Application (an “IND”) for a Licensed Product;
4.3.2 One Million Five Hundred Thousand Dollars ($1,500,000) upon the one year anniversary of the acceptance by the FDA of a Company-, Affiliate- or Company Sublicensee- sponsored IND for a Licensed Product;
4.3.3 Two Hundred Thousand Dollars ($...
ROYALTIES AND OTHER CONSIDERATION. 4.1 Until the last-to-expire Patent Right or until this Agreement shall be terminated as hereinafter provided, Company and its Affiliates and Sublicensees shall, on a calendar quarter basis, pay to Licensor royalties equal to […***…] percent ([…***…]%) of Net Sales. Royalties for a calendar quarter shall be paid within sixty (60) days after the end of each such quarter.
ROYALTIES AND OTHER CONSIDERATION. 4.1 In consideration of the rights, privileges and license granted hereunder, the Company shall pay to the Licensor as set forth in, and in accordance with the provisions of, this Article 4 until the earlier to occur of (a) the last to expire patent contained in the Patent Rights and (b) until or termination of this License Agreement as hereinafter provided.
(a) Pursuant to a stockholders agreement to be entered into between Xxxxxxx X. Xxxxxxxxx, M.D., the Company, the Licensor, Xxxxxxx Xxxxxxxxx and Calgar and Associates (the "Stockholders Agreement"), the Company shall grant to the Licensor and/or his representatives a number of shares of common stock of the Company, par value $.001 per share (the "Common Stock"), representing twenty-five percent (25%) of the initial share capital of the Company. Twenty percent (20%) shall be immediately issued to the Licensor and/or his representatives and distributed as follows: (i) seventeen percent (17%) to the Licensor; (ii) one-half percent (1.5%) to Xxxxxxx Xxxxxxxxx and (iii) one-half percent (1.5%) to Calgar and Associates.
(b) Of the shares of Common Stock to be issued to the Licensor and/or his representatives, the Company shall hold in escrow a number of such shares of Common Stock equal to five percent (5%) of the initial share capital of the Company (the "Escrow Shares"). The Escrow Shares shall vest, if at all, and be released from escrow upon completion of a statistically significant Phase III clinical trial and shall be distributed as follows:
(i) four and one-quarter percent (4.25%) to the Licensor; (ii) three hundred seventy-five one-hundredth percent (0.375%) to Xxxxxxx Xxxxxxxxx and (iii) three hundred seventy-five one-hundredth percent (0.375%) to Calgar and Associates.
4.3 The Company shall pay to the Licensor and/or his representatives a non-refundable semi-annual royalty in an amount equal to *** percent (***%) of Net Sales by the Company, or any Affiliate of the Company, of the Licensed Products or Licensed Processes covered by at least one issued and unexpired claim under the Patent Rights to be paid as follows:
(a) percent (***%) to the Licensor; (b) *** percent (***%) to Xxxxxxx Xxxxxxxxx and (c) *** percent (***%) to
ROYALTIES AND OTHER CONSIDERATION. 5.1 For the rights, privileges and license granted hereunder, LICENSEE shall pay royalties and other compensation to UNIVERSITY in the manner hereinafter provided to the end of the term of the PATENT RIGHTS or until this Agreement shall be earlier terminated:
(a) LICENSEE shall pay to UNIVERSITY on or before thirty (30) days after the EFFECTIVE DATE one half ($7,500) of a nonrefundable initial license fee of fifteen thousand dollars ($15,000) and the balance of $7,500 on or before the first anniversary of the EFFECTIVE DATE.
(b) LICENSEE shall pay to UNIVERSITY twenty-five thousand dollars ($25,00O) within thirty (30) days after the FIRST COMMERCIAL SALE in the U.S.
(c) LICENSEE shall pay to UNIVERSITY a minimum annual royalty in accordance with the following schedule:
(i) $5,000 per year commencing February 10, 2007, increasing to
(ii) $7,000 per year on February 10, 2009, and each year thereafter. Such minimum royalty payments shall be offset against University Royalties due during the applicable year.
(d) LICENSEE shall pay to UNIVERSITY the following running royalties ("UNIVERSITY Royalties"):
(i) 4.0% of NET SALES of up to $1M;
(ii) 3.0% of NET SALES greater than $1M, but less than $10M;
(iii) 2.0% of NET SALES greater than $10M. Provided, however, that the total royalty payments paid by LICENSEE to UNIVERSITY shall not exceed $20M, and the license granted hereunder shall be royalty free after such amount has been paid.
(e) A one-time success payment of $250,000 in the first year that the aggregate Net Sales of LICENSED PRODUCTS exceeds $10M. This payment shall be made in addition to any royalties due.
ROYALTIES AND OTHER CONSIDERATION. 4.1 In consideration of the rights, privileges and the license granted hereunder, the Licensee shall pay to the Licensors as set forth in, and in accordance with the provisions of, this Article 4 until termination of this Agreement as hereinafter provided.
4.2 The Licensee shall pay to Licensors:
4.2.1 a non-refundable semi-annual royalty in an amount equal to [***] percent ([***]%) of Net Sales by the Licensee, or any Affiliate of the Licensee, of the Licensed Products or Licensed Processes;
4.2.2 With respect to any royalties received by Licensee or its Affiliate from sales by any sublicensee of Licensed Products or Licensed Processes (“Sublicense Royalties”), Licensee shall remit to Licensors a non-refundable semi-annual royalties in an amount equal to the greater of (a) [***] percent ([***]%) of the Sublicense Royalties and (b) [***] percent ([***]%) of Net Sales by any such sublicense.
4.3 The Licensee agrees to pay to the Licensors, or its designee(s) the following additional consideration:
4.3.1 The Milestone Payments set forth on Exhibit A attached hereto; and
4.3.2 [***] percent ([***]%) of all sublicensing fees or other lump sum payments or other compensation received by the Licensee or an Affiliate from its sublicensees for the use, lease or sale of Licensed Products and Licensed Processes, excluding (i) payments used or reimbursed for research and development and (ii) payments received as a result of the issuance of debt or equity securities of the Licensee.
4.4 No multiple royalties shall be payable because the use, lease or sale of any Licensed Product or Licensed Process is, or shall be, covered by more than one Valid Claim contained in the Patent Rights. Additionally, royalties shall be paid to Licensors for the sale of a Licensed Product based upon only one of Articles 4.2.1 or 4.2.2 above, but in no case both (that is, royalties due to Licensors on direct sales of a Licensed Product by the Licensee or its Affiliates to a Third Party shall be based only on Article 4.2.1, while royalties on sales of a Licensed Product by the Licensee’s Sublicensees to a Third Party shall be based only on Article 4.2.2, so as to avoid double counting).
ROYALTIES AND OTHER CONSIDERATION. 4.1. For the rights, privileges and license granted, Licensee shall pay royalties and other compensation and provide Progress Reports and Payment Reports to University in the manner provided in this Article 4, Article 5 and Section 1 of the Agreement to the end of the Term of the Agreement or until the Agreement shall be earlier terminated. University ownership of Licensee equity, and/or any requirement that Licensee shall pay University a percentage of the proceeds from a liquidation event shall survive the termination of the Agreement.
4.2. All amounts payable hereunder by Licensee shall be paid in full, in U.S. dollars, without deduction of taxes or other fees which may be imposed by any government and which shall be paid by Licensee. Any amounts due hereunder that remain unpaid sixty (60) days after the end of the calendar quarter shall bear simple interest accrued at the rate of five percent (5%) per annum above the Federal Reserve Discount Rate, calculated as of the Effective Date (or the maximum allowed by law, if less) from the date such payment first became due. In addition, after said sixty (60) days, University shall thereafter have the right to take action to terminate this Agreement in accordance with Article 13 below.
4.3. No multiple or cumulative royalties shall be payable because any Licensed Product or Licensed Process, its manufacture, use, lease or sale are or shall be covered by more than one patent application or issued patent licensed under this Agreement.
4.4. All sales or use of Licensed Products and/or Licensed Processes by Licensee shall be subject to royalty payments as provided.
4.5. Licensee shall pay all Royalties due to University and University shall not be required to look to any sublicensee or any other entity for payment.
4.6. All royalties paid to University in the first year that minimum annual royalties are due, and all years after that time, while license is in force, are credited against the minimum annual royalty. For example, if in a year that minimum annual royalties are due, the licensee has paid the University $5,000.00 in royalties, and if the minimum annual royalty for that year was $10,000.00, Licensee would be required to pay the University an additional $5,000.00. If in a year when minimum annual royalties are due, Licensee had paid University $12,000.00 in royalties, then Licensee would not need to make any further payment to the University to satisfy the minimum annual royalty.
ROYALTIES AND OTHER CONSIDERATION. 5 ARTICLE 5 -
