Common use of Royalties to Third Parties Clause in Contracts

Royalties to Third Parties. 4.11 If, during the term of this Agreement, the Licensee needs to obtain a third party license (“Third Party Licence”) in order to avoid infringing such third party’s patent(s) as a direct result of the use of the Licensed IP and/or the Development Results in the course of manufacture or sale of Licensed Products and provided that the Licensee has consulted with LifeArc, and has taken into account any representations made to it by LifeArc, in relation to the necessity of obtaining such Third Party Licence, the royalties payable under this Agreement shall be reduced by [***] percent ([***]%) of the amount of royalties paid by the Licensee under the Third Party Licence. Notwithstanding the foregoing, the amount of royalty payable by the Licensee to LifeArc in any quarterly period in respect of each country and territory within the Territory shall not be reduced by more than [***]percent ([***]%) of the amount which would have otherwise been payable in the absence of this clause. The reduction referred to in this clause shall only be made where the infringement of the third party patent arises directly from the manufacture, use, sale, offer for sale or importation of a Licensed Product in accordance with the provisions of this Agreement, and not from the use of generally applicable intellectual property rights (e.g. general manufacturing or research tools) that are not specific to the Licensed Product and that the Licensee chooses to use in the manufacture of its products generally. The Licensee shall use its commercially reasonable endeavours. The Licensee shall use its Diligent Efforts to avoid having to pay royalties, and to minimise the amount of any such royalties which it agrees to pay, to any third party.

Royalties to Third Parties. 4.11 If, during the term of this Agreement, the Licensee needs has taken appropriate professional advice from its patent agents and is advised in a written opinion by its patent agents that it is necessary to obtain a licence from any third party license (“Third Party Licence”) in order to avoid infringing such third party’s patent(s) as a direct result of the use of the Licensed IP and/or the Development Results in the course of manufacture or sale of Licensed Products and provided that the Licensee has has, acting reasonably, consulted with LifeArcUCLB, and has taken into account any representations made to it by LifeArcUCLB, in relation to the necessity of obtaining such Third Party Licence, the royalties payable under this Agreement shall be reduced by [***] percent *]% ([***]%*] percent) of the amount of royalties paid by the Licensee under the Third Party Licence. Notwithstanding the foregoing, the amount of royalty payable by the Licensee to LifeArc UCLB in any quarterly period in respect of each country and territory within the Territory shall not be reduced by more than [****]percent % ([***]%*] percent) of the amount which would have otherwise been payable in the absence of this clauseClause. The reduction referred to in this clause Clause shall only be made where the infringement of the third party patent arises directly from the manufacture, use, sale, offer for sale or importation use of a Licensed Product the inventions claimed in the Patents in accordance with the provisions of this Agreement, and not from the use of generally applicable any other intellectual property rights (e.g. general manufacturing or research tools) that are not specific to the Licensed Product and that the Licensee chooses to use in the manufacture or sale of its products generallyany Licensed Product. The Licensee shall use its commercially reasonable endeavours. The Licensee shall use its Diligent Efforts efforts to avoid having to pay royalties, and to minimise the amount of any such royalties which it agrees to pay, to any third partyThird Party. W here the Parties disagree as to the necessity of a Third Party Licence, and the Parties are not able to resolve such dispute within thirty (30) days following the dispute first arising, then such dispute shall be referred to an expert who shall be appointed in accordance with the provisions of Schedule 2 and whose decision shall be final and binding on the Parties.

Royalties to Third Parties. 4.11 If, during the term of this Agreement, the Licensee needs has taken appropriate professional advice from its patent agents and is advised in a written opinion by its patent agents that it is necessary to obtain a licence from any third party license (“Third Party Licence”) in order to avoid infringing such third party’s patent(s) as a direct result of the use of the Licensed IP and/or the Development Results in the course of manufacture or sale of Licensed Products and provided that the Licensee has has, acting reasonably, consulted with LifeArcUCLB, and has taken into account any representations made to it by LifeArcUCLB, in relation to the necessity of obtaining such Third Party Licence, the royalties payable under this Agreement shall be reduced by [***] percent 50% ([***]%fifty percent) of the amount of royalties paid by the Licensee under the Third Party Licence. Notwithstanding the foregoing, the amount of royalty payable by the Licensee to LifeArc UCLB in any quarterly period in respect of each country and territory within the Territory shall not be reduced by more than [***]percent 50% ([***]%fifty percent) of the amount which would have otherwise been payable in the absence of this clauseClause. The reduction referred to in this clause Clause shall only be made where the infringement of the third party patent arises directly from the manufacture, use, sale, offer for sale or importation use of a Licensed Product the inventions claimed in the Patents in accordance with the provisions of this Agreement, and not from the use of generally applicable any other intellectual property rights (e.g. general manufacturing or research tools) that are not specific to the Licensed Product and that the Licensee chooses to use in the manufacture or sale of its products generallyany Licensed Product. The Licensee shall use its commercially reasonable endeavours. The Licensee shall use its Diligent Efforts efforts to avoid having to pay royalties, and to minimise the amount of any such royalties which it agrees to pay, to any third partyThird Party. Where the Parties disagree as to the necessity of a Third Party Licence, and the Parties are not able to resolve such dispute within thirty (30) days following the dispute first arising, then such dispute shall be referred to an expert who shall be appointed in accordance with the provisions of Schedule 2 and whose decision shall be final and binding on the Parties.