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Common use of Royalties Clause in Contracts

Royalties. In consideration for the rights and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof.

Appears in 5 contracts

Samples: License Agreement (Rhythm Pharmaceuticals, Inc.), License Agreement (Rhythm Pharmaceuticals, Inc.), License Agreement (Rhythm Pharmaceuticals, Inc.)

Royalties. (a) In consideration for the rights and license granted under this AgreementSection 2.1. and regardless of the fact that Ipsen Formulation Technology is, Licensee or is not an element of Licensed Product, Nuvios shall, subject to the provisions of Sections 4.2, 4.2 and 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* 5% of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 4.1(a) shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 Section 4.1(a) shall be made in accordance with the provisions of Article 5 hereof. * Confidential Treatment Requested by the Registrant. Redacted Portion Filed Separately with the Commission. (b) In consideration for the rights and license under Ipsen Know-How granted to Nuvios pursuant to this Agreement, Nuvios shall pay royalties to Ipsen based upon net sales by Nuvios, its Affiliates, sublicensees or other commercialization contractors of any pharmaceutical product (other than Licensed Compound or Licensed Product) that is a Nuvios Invention and that was derived from or based on Ipsen Know-How that is Confidential Information of Ipsen, which royalties shall be equal to [*] percent ([*]%) of such net sales. For the purpose of calculating the royalties due to Ipsen pursuant to this Section 4.1(b), the provisions of Section 4.1(a) (other than the royalty rate specified therein), Section 4.2, Section 4.3 and Article 5 hereof and the definition of Net Sales shall apply “mutatis mutandis”. Nuvios shall have the unilateral right to terminate Xxxxx’x rights under this Section 4.1(b), upon written notice to Ipsen with immediate effect, if Ipsen in any country of the world brings an action or proceeding seeking to have a Nuvios Patent Right or Joint Patent Right declared invalid or unenforceable (c) Notwithstanding the foregoing provisions of Section 4.1(a) and Section 4.1(b) or any other provisions of this Agreement to the contrary, in the event that Ipsen or its Affiliates, has committed a material breach of article 2.1 or article 2.6 as a result of any actions or activities of Ipsen or its Affiliates in a country of the Territory, then all obligations of Nuvios, its Affiliates, sublicensees or Contractors under this Section 4.1 to pay royalties in such country shall terminate effective immediately upon Nuvios giving written notice of termination to Ipsen.

Appears in 5 contracts

Samples: License Agreement (Radius Health, Inc.), License Agreement (Radius Health, Inc.), License Agreement (Radius Health, Inc.)

Royalties. 5.1 Licensee shall pay to Licensor a running royalty of [*** Redacted]% of Net Sales by Licensee. In consideration the event that Licensee's making, use, sale, offer for the sale or importation of Licensed Products requires Licensee to pay any amount to secure any necessary third party intellectual property rights and license granted under this Agreementto engage in such activity in view of such third party's intellectual property, Licensee shall, subject to the provisions including without limitation payment of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon such third parties, costs associated with establishing that such rights are not necessary or that such third party intellectual property is invalid or unenforceable, then Licensee shall be entitled to credit such amounts against royalties due hereunder up to [*** Redacted]% of the royalties due for any reporting period, but in no event shall the royalty rate paid to Licensor be less than [*** Redacted]% of Net Sales by Licensee. 5.2 Licensee shall pay to Licensor a royalty of any given [*** Redacted]% of Sublicense Revenue (hereafter termed a "Sublicense Royalty") where the Patent Rights are sublicensed to a third party ("Sublicensee") in conjunction with the granting of substantial intellectual property rights other than under the Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such countryPatents, which royalties shall be equal other intellectual property rights are licensable by Licensee, including but not limited to [ ]* patents, copyrights, trade marks, trade secrets and know-how. In the event that no other substantial intellectual property rights are included in a sublicense of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if Patent Rights (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights"a Naked Sublicense"), then the royalty rate applicable Sublicense Royalty payable by Licensee to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country Licensor shall be (A) [ ][*** if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date Redacted]% of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 Sublicense Revenues. 5.3 Royalty payments shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made quarterly in accordance with and concurrent with the provisions of Article 5 hereofroyalty reporting obligations set forth in sections 7.2 and 7.3, below.

Appears in 4 contracts

Samples: Patent License Agreement (Nanosys Inc), Patent License Agreement (Nanosys Inc), Patent License Agreement (Nanosys Inc)

Royalties. In consideration (a) Royalty Rates for the rights and license granted under this AgreementLicensed Products Directed to [*****]. For each of [*****], Licensee shallElanco shall make, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of period that such Licensed Product Product, its manufacture, use, sale, offer for sale or importation is covered by a Valid Claim under Intrexon Patents in such country, which royalties shall be equal royalty payments to [ ]* of such Net Sales; providedIntrexon, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis basis, based on annual Net Sales of such Licensed Product covered by a Valid Claim and directed to suchTargets in the Territory by Elanco, its Affiliates and sublicensees at the applicable rates set forth below. Portions herein identified by [*****] have been omitted pursuant to a request for confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended. A complete copy of this document has been filed separately with the Securities and Exchange Commission. Total Net Sales of a Licensed Product covered by a Valid Claim Directed to a Target throughout the Territory in any Calendar Year by Elanco, its Affiliates and/or sublicensees Patent Royalty Rate Applicable to such Licensed Products Portion of Net Sales of the applicable Licensed Products which are less than or equal to [*****] [*****] Portion of Net Sales of the applicable Licensed Products which are more than [*****] but less than or equal to [*****] [*****] Portion of Net Sales of the applicable Licensed Products which are more than [*****] but less than or equal to [*****] [*****] Portion of Net Sales of the applicable Licensed Products which are more than [*****] [*****] By way of example, if, in a given calendar year the total Net Sales of a Licensed Product covered by a Valid Claim directed to either [*****] throughout the Territory is [*****], then the royalties due to Intrexon under this Section 5.4(a) shall be: [*****]. (b) Royalty Rates for Licensed Products Directed to [*****]. For [*****], Elanco shall make, during the period that such Licensed Product, its manufacture, use, sale, offer for sale or importation is covered by a Valid Claim under Intrexon Patents in such country, royalty payments to Intrexon, on a countryLicensed Product-by-country Licensed Product basis, based on annual Net Sales of all Licensed Products directed to such Target in the Territory by Elanco, its Affiliates and sublicensees at the applicable rates set forth below. Payment Total Net Sales of a Licensed Product covered by a Valid Claim Directed to a Target throughout the Territory in any Calendar Year by Elanco, its Affiliates and/or sublicensees Patent Royalty Rate Applicable to such Licensed Product Portion of Net Sales of the applicable Licensed Products which are less than or equal to [*****] [*****] Portion of Net Sales of the applicable Licensed Products which are more than [*****] but less than or equal to [*****] [*****] Portion of Net Sales of the applicable Licensed Products which are more than [*****] but less than or equal to [*****] [*****] Portion of Net Sales of the applicable Licensed Products which are more than [*****] [*****] Portions herein identified by [*****] have been omitted pursuant to a request for confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended. A complete copy of this document has been filed separately with the Securities and Exchange Commission. By way of example, if, in a given calendar year the total Net Sales of aLicensed Product covered by a Valid Claim and directed to [*****] throughout the Territory is [*****], then the royalties due to Ipsen Intrexon under this Section 5.4(b) shall be: [*****]. (c) Royalty Rates for Licensed Products Directed to the Additional Target. For the Additional Target, Elanco shall make, during the period that such Licensed Product, its manufacture, use, sale, offer for sale or importation is covered by a Valid Claim under Intrexon Patents in such country, royalty payments to Intrexon, on a Licensed Product-by-Licensed Product basis, based on annual Net Sales of a Licensed Product covered by a Valid Claim and directed to such Additional Target in the Territory by Elanco, its Affiliates and sublicensees at the applicable rates set forth below. Portion of Net Sales of the applicable Licensed Products which are less than or equal to [*****] [*****] [*****] Portion of Net Sales of the applicable Licensed Products which are more than [*****] but less than or equal to [*****] [*****] [*****] Portion of Net Sales of the applicable Licensed Products which are more than [*****] but less than or equal to [*****] [*****] [*****] Portion of Net Sales of the applicable Licensed Products which are more than [*****] [*****] [*****] By way of example, if, in a given calendar year the total Net Sales of a Licensed Product with a Valid Claim and directed to the Additional Target in [*****] throughout the Territory is [*****], then the royalties due to Intrexon under this Section 5.4(c) shall be: [*****]. Portions herein identified by [*****] have been omitted pursuant to a request for confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended. A complete copy of this Article 4 shall be made in accordance document has been filed separately with the provisions of Article 5 hereofSecurities and Exchange Commission.

Appears in 3 contracts

Samples: Exclusive Channel Collaboration Agreement (Intrexon Corp), Exclusive Channel Collaboration Agreement (Intrexon Corp), Exclusive Channel Collaboration Agreement (Intrexon Corp)

Royalties. 8.1 In consideration of the license herein granted, LICENSEE shall pay royalties to LICENSOR as follows: (a) LICENSEE agrees to pay to LICENSOR as earned royalties a royalty calculated as a percentage of LICENSEE's Net Sales of Licensed Products which, if not for the rights and license granted under this Agreement, Licensee shallwould infringe the Patent Rights, subject to in accordance with the provisions terms and conditions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales this Agreement. The royalty is deemed earned as of any given the earlier of the date the Licensed Product and/or Licensed Process is actually sold and paid for, the date an invoice is sent by LICENSEE, or the date a Licensed Product and/or Licensed Process is transferred to a third party for any promotional reasons. The royalty shall remain fixed while this Agreement is in effect at a rate of XXXX percent (XXXX%) of Net Sales. (b) For a sublicense, LICENSEE shall pay to LICENSOR an amount equal to XXXX-percent (XXXX%) of what LICENSEE would have been required to pay to LICENSOR had LICENSEE sold the amount of Licensed Products sold by the Sublicensee. In addition, if LICENSEE receives any given country fees, minimum royalties, or other payments in consideration for any rights granted under a Sublicense, and such payments are not based directly upon the Territory during amount or value of Licensed Products or Licensed Processes sold by the Royalty Term applicable Sublicensee nor represent payment of costs to sales LICENSEE for a development program which LICENSEE is obligated to perform under such sublicense,, then LICENSEE shall pay LICENSOR XXXX percent (XXXX%) of such payments. (c) In the event that licenses from third parties are required by LICENSEE in order to make, have made, use, sell, offer to sell or import any particular Licensed Product in such countryor Licensed Process, then the earned royalty which royalties LICENSEE is obligated to pay LICENSOR under this Agreement shall be equal reduced by XXXX ($XXXX) for each one dollar ($1.00) in royalties which Licensee is obligated to [ ]* of pay to third parties under such Net Sales; licenses, further provided, however, thatthat the royalties payable to LICENSOR under this Section shall not be reduced to less than XXXX percent (XXXX%) of the applicable Net Sales. (d) In the event that LICENSEE requires more than one license from the LICENSOR to make, subject have made for its use, sell, offer to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such sell or import any particular Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*or Licensed Process as defined in sections 1.4 and 1.5, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rightsrespectively, of this Agreement, then the royalty rate applicable to combined earned royalties shall not exceed XXXX% of Net Sales and any sublicense fees shall not exceed XXXX-percent (XXXX%) of what LICENSEE would have been required to pay to LICENSOR had LICENSEE sold the amount of Licensed Products sold by the Sublicensee. 8.2 All payments shall be made hereunder in U.S. dollars; provided however, that if the proceeds of the sales upon which such Ipsen MC4 Product royalty payments are based are received by the LICENSEE in any given a foreign currency or other form that is not convertible or exportable in dollars, and the LICENSEE does not have ongoing business operations or bank accounts in the country in which the Territory during currency is not convertible or exportable, the Royalty Term applicable LICENSEE shall pay such royalties in the currency of the country in which such sales were made by depositing such royalties in LICENSER'S name in a bank designated by LICENSOR in such country. Royalties in U.S. dollars shall be computed by converting the royalty in the currency of the country in which the sales were made at the exchange rate for U.S. dollars prevailing at the close of the business day of the LICENSEE'S quarter for which royalties are being calculated as published the following day in the Wall Street Journal (or, if it ceases to be published, a comparable publication to be agreed upon from time to time by the parties), and with respect to those countries for which rates are not published in the Wall Street Journal, the exchange rate fixed for such date by the appropriate United States governmental agency. 8.3 In the event the royalties set forth herein are higher than the maximum royalties permitted by the law or regulations of a particular country, the royalty payable for sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if equal to the Ipsen MC4 [ ]* is delivered maximum permitted royalty under such law or regulation. 8.4 In the event that any taxes, withholding or otherwise, are levied by Ipsen any taxing authority in connection with accrual or payment of any royalties payable to Licensee pursuant LICENSOR under this Agreement, the LICENSEE shall have the right to Section 2.11.1 within [ ]* after pay such taxes to the date local tax authorities, on behalf of LICENSOR and the payment to LICENSOR of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered net amount due after reduction by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933such taxes, AS AMENDED. due Ipsen pursuant to shall fully satisfy the LICENSEE'S royalty obligations under this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofAgreement.

Appears in 3 contracts

Samples: License Agreement (Heat Biologics, Inc.), License Agreement (Heat Biologics, Inc.), License Agreement (Heat Biologics, Inc.)

Royalties. 5.1 Beginning with the FIRST COMMERCIAL SALE in any country, on all sales of PRODUCTS anywhere in the world by COMPANY, its AFFILIATES or SUBLICENSEES, COMPANY shall pay GENERAL royalties in accordance with the following schedule, such undertaking and schedule having been agreed to for the purpose of reflecting and advancing the mutual convenience of the parties. For each PRODUCT sold by COMPANY or its AFFILIATES and SUBLICENSEES; (a) [ * ] of the NET SALES PRICE for ANNUAL NET SALES of [ * ] or less, and [ * ] of the NET SALES PRICE for the portion of ANNUAL NET SALES that is greater than [ * ] so long as the PRODUCT, its manufacture, use or sale is covered by a VALID CLAIM of any PATENT RIGHT licensed exclusively to COMPANY; and (b) [ * ] of the NET SALES PRICE for ANNUAL NET SALES of [ * ] or less, and [ * ] of the NET SALES PRICE for the portion of ANNUAL NET SALES that is greater than [ * ] whenever the PRODUCT, its manufacture, use or sale is covered by a VALID CLAIM of any PATENT RIGHT licensed non-exclusively to COMPANY in the country in question pursuant to either paragraph 2.7(b) or 3.1 hereunder. * Confidential treatment requested. 7. (a) In the event that more than one royalty rate under paragraph 5.1 is applicable to a PRODUCT, the highest of the applicable royalties shall apply. (b) Only one royalty under paragraph 5.1 shall be due and payable to GENERAL by COMPANY for any PRODUCT regardless of the number of PATENT RIGHTS covering such PRODUCT. 5.3 If any license granted pursuant to Article 2 shall be or become non- exclusive pursuant to either paragraph 2.1(b) or 3.1 hereunder and GENERAL shall license any PATENT RIGHT to another licensee for the purpose of making, using or selling PRODUCTS in the LICENSE FIELD and accept a royalty or royalties more favorable to such licensee than herein provided for COMPANY, GENERAL shall give written notice thereof to COMPANY and as of the effective date of such more favorable royalty or royalties, COMPANY's obligation hereunder to pay royalty or royalties to GENERAL shall be revised to the more favorable rate. 5.4 In addition to the royalties provided for above, COMPANY shall pay GENERAL [ * ] of any and all non-royalty income received from its AFFILIATES and SUBLICENSEES in consideration for the rights and sublicensing of any right or license granted to COMPANY hereunder, including without limitation license fees and milestone payments, but not including amounts received by COMPANY (a) for capital stock of COMPANY, (b) in the form of a loan or advance, (c) as payment for research and development services performed or to be performed by COMPANY, (d) as milestone payments in consideration for past or future research and development expense in any sublicensing arrangement with a PARTNERING SUBLICENSEE wherein COMPANY is sharing research and development costs with the PARTNERING SUBLICENSEE and said milestone payments are solely reimbursements for COMPANY's research and development costs actually incurred, (e) as payment for manufacturing services in any sublicensing arrangement wherein COMPANY retains the right to manufacture PRODUCT which is then sold to a SUBLICENSEE provided that GENERAL receives the full royalty due for sales of PRODUCT by said SUBLICENSEE under paragraph 5.1 hereunder or (f) from a PARTNERING SUBLICENSEE as payment for marketing, sales or promotional activities which COMPANY or its AFFILIATE has agreed to undertake as part of Co-development. It is understood that this paragraph shall not apply to running royalties for PRODUCT sales received by COMPANY from its AFFILIATES AND SUBLICENSEES, provided GENERAL receives the royalties specified in paragraph 5.1 for such PRODUCT sales. 5.5 In addition to the payments provided for in paragraphs 5.1 and 5.4, COMPANY shall pay GENERAL the following amounts upon the occurrence of the following events: [ * ] within five (5) business days of the execution of this Agreement, which shall include the amount payable to GENERAL for past patent Costs pursuant to paragraph 4.1(b); [ * ] within thirty (30) days of the filing with the FDA of the first NDA, PMA or PMA Supplement, or comparable application with respect to a PRODUCT; and, * Confidential treatment requested. 8. [ * ] within thirty (30) days of the actual approval by the FDA of the first NDA, PMA or PMA Supplement, or comparable application with respect to a PRODUCT. (a) In the event that the royalty paid to GENERAL is a significant factor in the return realized by COMPANY so as to diminish COMPANY's capability to respond to competitive pressures in the market, GENERAL agrees to consider a reasonable reduction in the royalty paid to GENERAL as to each such PRODUCT for the period during which such market condition exists. Factors determining the size of the reduction will include profit margin on PRODUCT and on analogous products, prices of competitive products, total prior sales by COMPANY, and COMPANY's expenditures in PRODUCT development. (b) With respect to the definition of "NET SALES PRICE" (as contained in Section 1.5) and the applicable rate of exchange for foreign currency conversion (as set forth in Section 6.2) under this Agreement, Licensee shallit is understood that COMPANY may enter into one or more agreements with SUBLICENSEES (each a "SUBLICENSE AGREEMENT") pursuant to which COMPANY will be compensated by a SUBLICENSEE based on net sales of PRODUCT and that, subject for sales outside the United States, a foreign exchange rate will be applied. When negotiating a SUBLICENSE AGREEMENT, COMPANY will use its best efforts to have such SUBLICENSE AGREEMENT contain (i) a definition of net sales of PRODUCT and (ii) foreign exchange provisions which are substantially equivalent to those contained in Sections 1.5 and 6.2, respectively, of this Agreement. In the event, however, that COMPANY is unable to have its prospective SUBLICENSEE agree to provisions that are identical to the provisions of Sections 4.2this Agreement, 4.3 it shall so notify GENERAL and 4.4 below, pay royalties to Ipsen based upon Net Sales submit for GENERAL's review the proposed versions of any given Licensed Product in any given country such provisions in the Territory during proposed SUBLICENSE AGREEMENT. Within thirty (30) days of its receipt of such notice and proposed revisions, GENERAL shall either notify COMPANY of its acceptance of such proposed provisions or indicate its reasons for withholding approval. If the Royalty Term applicable SUBLICENSE AGREEMENT includes such provisions that are acceptable to GENERAL, which acceptance shall not unreasonably be withheld, then for sales of PRODUCT made under such Licensed Product in such countrySUBLICENSE AGREEMENT, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) the "NET SALES PRICE" in this Agreement shall be deemed amended to conform to the definition of net sales of PRODUCT contained in such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, SUBLICENSE AGREEMENT and (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country foreign exchange rates provided for under this Agreement shall be (A) [ ]* if the Ipsen MC4 [ ]* same as those provided for under the SUBLICENSE AGREEMENT. In the event that the SUBLICENSE AGREEMENT includes provisions that are not acceptable to GENERAL and COMPANY is delivered by Ipsen unable to Licensee pursuant to Section 2.11.1 within [ ]* after compensate GENERAL based on the date of the MC4 [ ]* AgreementNET SALES PRICE and foreign exchange provisions set forth herein, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with conflict between the provisions of Article 5 hereofthe SUBLICENSE AGREEMENT and the provisions of this Agreement shall be settled by the procedures of paragraph 10. 5.7 The payments due under this Agreement shall, if overdue, bear interest until payment at a per annum rate equal to one percent (1%) above the prime rate in effect at the Bank of Boston on the due date, not to exceed the maximum permitted by law. The payment of such interest shall not preclude GENERAL from exercising any other rights it may have as a consequence of the lateness of any payment. * Confidential treatment requested. 9.

Appears in 3 contracts

Samples: License Agreement (Cocensys Inc), License Agreement (Cocensys Inc), License Agreement (Cocensys Inc)

Royalties. In consideration for (a) Commencing on the rights and license granted under this AgreementFirst Commercial Sale of each Product by BAC, Licensee shallan Affiliate of BAC, subject to or a Sales Agent, BAC shall pay Geron a royalty in the provisions amount of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon four percent (4%) of Net Sales of any given Licensed Product in any given country in such Product. (b) In the Territory during the Royalty Term applicable to case of sales of Products by any individual or entity other than a Sales Agent, BAC or any Affiliate of BAC (any such Licensed Product individual or entity, a “non-Affiliate”) where BAC or any Affiliate of BAC receives a royalty or other cash payment in such country, which royalties shall be equal to [ ]* respect of such Net SalesProduct sales, BAC shall pay Geron fifty percent (50%) of all such royalties and other cash payments received by BAC or such Affiliate of BAC in respect to such Product sales; provided, however, thatthat royalties or other such payments derived from the sales of Combination Products shall be calculated on the basis set forth for Net Sales for Combination Products specified in clauses “(b)(i)” to “(b)(iv)” of Section 1.7. The parties acknowledge and agree that in no event will BAC pay Geron an amount in excess of any royalty or other cash payment received by BAC or such Affiliate of BAC, subject less all cash payments owed by BAC or such Affiliate of BAC to the provisions of Sections 4.2third parties, 4.3 and 4.4 belowin each case, if with respect to such Product sales. (ic) such Licensed Product is an Ipsen MC4 Product Geron will not be entitled to receive any royalties or other cash payments pursuant to this Agreement with respect to Excluded Products that utilizes the Ipsen MC4 [ ]*are not Partially Excluded Products. With respect to Partially Excluded Products, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee any royalty on Net Sales pursuant to Section 2.11.1 and (iii2.1(a) or royalty or other cash payment derived from the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then sales of any Partially Excluded Products pursuant to Section 2.1(b) shall be calculated on the royalty rate applicable to basis set forth for Net Sales for Combination Products specified in clauses “(b)(i)” to “(b)(iv)” of Section 1.7 as if the Excluded Product(s) (together with any other active ingredient(s) that are not Products in the event that such Ipsen MC4 Partially Excluded Product also constitutes a Combination Product) were the active ingredients that are not Products. (d) BAC’s obligation to pay royalties or other cash payments on Net Sales, or with respect to royalties or other cash payments received from any non-Affiliate with respect to any Product, shall expire on a country by country basis upon the expiration of the last to expire Valid Claim covering such Product in any given country in where the Territory during the Royalty Term applicable Product is sold. (e) Geron will not be entitled to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at receive any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to payments under this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis 2 with respect to any payments or reimbursements received by BAC, any Affiliate of BAC or any Sales Agent for advertising or similar marketing and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofpromotional expenses.

Appears in 3 contracts

Samples: Royalty Agreement (Asterias Biotherapeutics, Inc.), Asset Contribution Agreement (Biotime Inc), Asset Contribution Agreement (Geron Corp)

Royalties. 8.1 In consideration of the license herein granted, LICENSEE shall pay royalties to LICENSOR as follows: (a) LICENSEE agrees to pay to LICENSOR license issue fee of $10,000 and past patent fees within thirty (30 days of the Effective Date as well as any future patent fees as set out in section 5.3 of this Agreement. (b) LICENSEE agrees to pay to LICENSOR as earned royalties a royalty calculated as a percentage of LICENSEE;S Net Sales of Licensed Products which, if not for the rights and license granted under this Agreement, Licensee shallwould infringe the Patent Rights, subject to in accordance with the provisions terms and conditions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales this Agreement. The royalty is deemed earned as of any given the earlier of the date the Licensed Product and/or Licensed Process is actually sold and paid for, the date an invoice is sent by LICENSEE, or the date a Licensed Product and/or Licensed Process is transferred to a third party for any promotional reasons. The royalty shall remain fixed while this Agreement is in effect at a rate of XXXX percent (XXXX%) of Net Sales. (c) For a sublicense, LICENSEE shall pay to LICENSOR an amount equal to XXXX percent (XXXX%) of what LICENSEE would have been required to pay to LICENSOR had LICENSEE sold the amount of Licensed Products sold by the Sublicensee. In addition, if LICENSEE receives any given country fees, minimum royalties, or other payments in consideration for any rights granted under a Sublicense, and such payments are not based directly upon the Territory during amount or value of Licensed Products or Licensed Processes sold by the Royalty Term applicable Sublicensee nor represent payment of costs to sales LICENSEE for a development program which LICENSEE is obligated to perform under such Sublicense, then LICENSEE shall pay LICENSOR XXXX percent (XXXX%) of such payments. (d) In the event that licenses from third parties are required by LICENSEE in order to make, have made, use, sell, offer to sell or import any particular Licensed Product in such countryof Licensed Process, then the earned royalty which royalties LICENSEE is obligated to pay LICENSOR under this Agreement shall be equal reduced by XXXX ($XXXX) for each one dollar ($1.00) in royalties which Licensee is obligated to [ ]* of pay to third parties under such Net Sales; licenses, further provided, however, thatthat the royalties payable to LICENSOR under this Section shall not be reduced to less than XXXX percent (XXXX%) of the applicable Net Sales. (e) In the event that LICENSEE requires more than one license from the LICENSOR to make, subject have made for its use, sell, offer to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such sell or import any particular Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*of Licensed Process as defined in sections 1.5 and 1.6, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rightsrespectively, of this Agreement, then the royalty rate applicable to combined earned royalties shall not exceed XXXX% of Net Sales and any sublicense fees shall not exceed XXXX percent (XXXX%) of what LICENSEE would have been required to pay to LICENSOR had LICENSEE sold the amount of Licensed Products sold by the Sublicensee. 8.2 All payments shall be made hereunder in U.S. dollars, provided however, that if the proceeds of the sale upon which such Ipsen MC4 Product royalty payments are based are received by the LICENSEE in any given a foreign currency or other form that is not convertible or exportable in dollars, and the LICENSEE does not have ongoing business operations or bank accounts in the country in which the Territory during currency is not convertible or exportable, the Royalty Term applicable LICENSEE shall pay such royalties in the currency of the country in which such sales were made by depositing such royalties in LICENSOR’S name in a bank designated by LICENSOR in such country. Royalties in U.S. dollars shall be computed by converting the currency of the country in which the sales were made at the exchange rate for U.S. dollars prevailing at the close of the business day of the LICENSEE’S quarter for which royalties are being calculated as published in the following day in the Wall Street Journal (or, if it ceases to be published, a comparable publication to be agreed upon from time to time by the parties), and with respect to those countries for which rates are not published in the Wall Street Journal, the exchange rate fixed for such date by the appropriate United States governmental agency. 8.3 In the event the royalties set forth herein are higher than the maximum royalties permitted by the law or regulations of a particular country, the royalty payable for sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if equal to the Ipsen MC4 [ ]* is delivered maximum permitted royalty under such Law or regulation. 8.4 In the event that any taxes, withholding or otherwise, are levied by Ipsen any taxing authority in connection with accrual or payment of any royalties payable to Licensee pursuant LICENSOR under this Agreement, the LICENSEE shall have the right to Section 2.11.1 within [ ]* after pay such taxes to the date local tax authorities on behalf of LICENSOR and the payment to LICENSOR of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered net amount due after reduction by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933such taxes, AS AMENDED. due Ipsen pursuant to shall fully satisfy the LICENSEE’S royalty obligations under this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofAgreement.

Appears in 3 contracts

Samples: License Agreement (Heat Biologics, Inc.), License Agreement (Heat Biologics, Inc.), License Agreement (Heat Biologics, Inc.)

Royalties. In consideration for the rights and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory 13.1 AchillesTx shall during the Royalty Term pay to CRT a royalty on Net Sales of the applicable to sales Royalty Product supplied by AchillesTx or its Sub-Licensees within the Territory, such royalty calculated as the percentage value of such Licensed Product in such country, which royalties shall be equal to [ ]* of such the Net Sales; provided, however, that, Sales at the following rates subject to the terms and conditions of this Agreement, and in particular the remaining provisions of Sections 4.2, 4.3 this Clause 13 (individually per Royalty Product a “Royalty” and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes collectively the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to “Royalties”): Table of Contents STRICTLY PRIVATE AND CONFIDENTIAL A Net Sales of such Ipsen MC4 the First Therapeutic Product. [***] B Net Sales of the Second Therapeutic Product. [***] C Net Sales of the Third Therapeutic Product. [***] D Net Sales of the first Therapeutic Product in any given country (which is not the same as or equivalent to the First Therapeutic Product, Second Therapeutic Product, Third Therapeutic Product, First Non-Therapeutic Product or Second Non-Therapeutic Product) launched by AchillesTx or its Sub-Licensee that is a Royalty Product sold pursuant to a Marketing Approval with an approved label indication for use in the Territory during Therapeutic Antibody Field. [***] E Net Sales of the First Non-Therapeutic Product. [***] F Net Sales of the Second Non-Therapeutic Product. [***] G Net Sales of Royalty Products not covered by any of the descriptions under A to F above [***] 13.2 Only one Royalty Rate shall be payable per Royalty Product and the Royalty Term applicable to sales of such Ipsen MC4 payable on a Royalty Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered calculated only once and payable only once. No Royalties shall be payable in respect of any product or therapy irrespective of it being a Royalty Product or Covered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date or incorporating or having been developed using any of the MC4 [ ]* AgreementTechnology, (B) [ ]* if unless it is a Royalty Product falling within the Ipsen MC4 [ ]* is delivered by Ipsen descriptions set out in rows A to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date F of the MC4 [ ]* Agreement and such Ipsen MC4 table above at Clause 13.1. 13.3 The Royalty Rate in respect of a Royalty Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 set out above shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made adjusted, as applicable, in accordance with the provisions of Article 5 hereofClause 13.4 to 13.9, and the order of reduction or adjustment in the Royalty Rate or Royalty due shall be applied sequentially in the order of those remaining clauses.

Appears in 3 contracts

Samples: Licence Agreement (Achilles Therapeutics PLC), Licence Agreement (Achilles Therapeutics PLC), Licence Agreement (Achilles Therapeutics LTD)

Royalties. In consideration for (a) ALLERGAN shall pay to ENTREMED on the rights NET SALES of PRODUCTS sold by ALLERGAN, its AFFILIATES and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country SUBLICENSEES in the Territory during the Royalty Term applicable to sales TERRITORY as follows: a royalty of * percent (*%) of such Licensed Product NET SALES on sales in such country, which royalties shall be equal to [ ]NORTH AMERICA; a royalty of * percent (*%) of such Net Sales; providedNET SALES in EUROPE, however, that, subject Australia and Japan and a royalty of * percent (*%) of such NET SALES in ROW. In the event that there is no VALID CLAIM with respect to a PRODUCT in a particular country of sale in the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent RightsTERRITORY, then the foregoing royalty rate applicable rates with respect to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be *. (Ab) [ ]In the event that any of ALLERGAN or its AFFILIATES to whom this license has been extended hereunder is required to pay any royalties to any THIRD PARTY as a result of a granted patent with respect to a PRODUCT in any country in the TERRITORY, ALLERGAN shall be entitled to a credit against royalties due to ENTREMED for such PRODUCT under this AGREEMENT in each CALENDAR QUARTER in an amount equal to * if percent (*%) of such royalties paid to such THIRD PARTIES for such PRODUCT in such country for such CALENDAR QUARTER, but in no event shall such credit exceed a percentage of NET SALES of such PRODUCT in such country for such CALENDAR QUARTER, as follows: * percent (*%) of such NET SALES on sales in NORTH AMERICA; * percent (*%) of such NET SALES in EUROPE, Australia and Japan and * percent (*%) of such NET SALES in ROW. (c) Such royalties shall be paid as set forth in Sections 9.1(a) and 9.1(b) above by ALLERGAN, on a country by country, PRODUCT by PRODUCT, basis for a period of ten (10) years in each country of the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after TERRITORY from the date of FIRST COMMERCIAL SALE of such PRODUCT in each such country and if thereafter such PRODUCT is covered by a VALID CLAIM of a PATENT RIGHT, such royalties shall be payable until the MC4 [ ]last to expire PATENT RIGHT in such country; provided that if thereafter such PRODUCT is covered by the claims of an ALLERGAN PATENT the royalties set forth herein shall continue to be payable until the last to expire applicable ALLERGAN PATENT, but the royalty rate during this period shall be reduced to * Agreement, percent (B*%) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and royalty rate set forth herein. Upon termination of any such Ipsen MC4 Product period ALLERGAN shall have a perpetual, irrevocable, fully-paid license to use the KNOW-HOW with respect to PRODUCTS sold in a formulation consisting such country. Upon the expiration of the Ipsen MC4 [ ]* last to expire PATENT RIGHT in the TERRITORY which is used by Licensee a VALID CLAIM, ALLERGAN shall have a perpetual, irrevocable, fully-paid license to use the KNOW-HOW in [ ]* or (C) [ ]* if neither of every country in the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofTERRITORY.

Appears in 2 contracts

Samples: License Agreement (Entremed Inc), License Agreement (Entremed Inc)

Royalties. In consideration for Subject to the rights terms and license granted under conditions of this Agreement, Licensee shallcommencing on the Effective Date of this Agreement, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, NEWLINK shall pay CIHS royalties to Ipsen based upon on Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such countryProducts by NEWLINK, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 its Affiliates and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made Sublicensees on a country-by-country and Licensed Product-by-Licensed Product basis as follows: (a) In countries where the manufacture, use, sale, offer for sale, or import of Licensed Products would, but for the grant of the license under the Agreement, infringe a Valid Claim of the Licensed Patents, NEWLINK shall pay to CIHS a royalty on Net Sales of Licensed Products in such countries at a rate equal to [*] of annual Net Sales of Licensed Products. In the event that the manufacture, sale or use of any Licensed Product is not covered by a Valid Claim within the Licensed Patents in a country, then NEWLINK shall pay to CIHS a royalty with respect to Net Sales in such country of such Licensed Products by NEWLINK, its Affiliates and Sublicensees at a rate equal to [*]. (b) The royalty obligations of NEWLINK shall expire on a country-by-country basisand Licensed Product-by-Licensed Product basis upon the later of (i) the expiration of the last to expire Valid Claim within the Licensed Patents covering the Licensed Product in a country (such expiration to occur only after expiration of extensions of any nature to such patents which may be obtained under applicable statutes or regulations in the respective countries of the Territory, such as the Drug Price Competition and Patent Term Restoration Act of 1984 in the U.S.A., and similar patent extension laws in other countries), or (ii) until twelve (12) years following the first commercial sale of a Licensed Product in a country. Payment Following expiration of royalties due the royalty obligations for each Licensed Product in each country, NEWLINK shall retain a fully-paid, [*] license under the Licensed Technology to Ipsen pursuant to this Article 4 shall be made make, have made, use, sell, offer for sale, and import such Licensed Products in accordance with the provisions of Article 5 hereofsuch country.

Appears in 2 contracts

Samples: License Agreement (Newlink Genetics Corp), License Agreement (Newlink Genetics Corp)

Royalties. In consideration for GSK shall pay the rights and following royalties on Net Sales (as such term is defined below in Section D of this Exhibit C) to ARIDIS: (i) For any Product which, in the absence of the license granted under this Agreementby ARIDIS, Licensee shallwould infringe a Valid Claim of any Patent falling within ARIDIS Patents, subject ARIDIS Arising IP and/or ARIDIS’ interest in Joint Arising IP (in the case of Joint Arising IP, including Products which would, in the absence of either a license granted by ARIDIS or ownership of Joint Arising IP by GSK, infringe a Valid Claim of any Joint Collaboration Patent) (in each case such Product being hereinafter referred to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon as “Patented Product”) : [***] on Net Sales · (ii) Net Sales of any given Licensed Product sold under contract or arrangement with GAVI or UNICEF (or similar GAVI contractor) in any given country in all countries qualifying as GAVI countries at the Territory during the Royalty Term applicable to time of sales of such Licensed the relevant Product : [***] on Net Sales · (iii) For any Product that does not fall within the categories described in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if sub-paragraph (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, or (ii) above but comprises, contains, incorporates, or is developed through the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to use of any ARIDIS Know-How and/or ARIDIS Materials : [***] on Net Sales · In the event that a license to patents owned and/or controlled by Third Parties is necessary for GSK in order to avoid infringement in practicing ARIDIS Intellectual Property under the License Agreement, [***] of the royalties payable by GSK to such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of Third Parties under such Ipsen MC4 Product in such country license shall be deducted from the royalties due under the License Agreement provided however that such deductions shall not cause the royalties due under the License Agreement to be reduced by more than [***]. (ANote: This royalty reduction applies only to Third Party licenses required for the practice of Licensed IP; not for Third Party licenses as may be otherwise required for Product.) [ ]* if · GSK’s obligation to pay royalties under the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after License Agreement shall commence on the date of first commercial sale of the MC4 [ ]* Product in the first country of the Territory and, shall continue until the later of: · 10 years from first commercial sale in the U.S. or the E.U. or in a major market country (such term to be defined in the License Agreement, (Bthough in any case this term shall be no shorter than at least 8 years from the first commercial sale in the U.S. or E.U.) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement Territory (and such Ipsen MC4 Product other than GAVI/UNICEF countries); or · If longer, with respect to Patented Products, in a formulation consisting each country of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarificationTerritory, the determination last to expire of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933any licensed Patent falling within ARIDIS Patents, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made ARIDIS Arising IP and/or ARIDIS’ interest in accordance with the provisions of Article 5 hereofJoint Arising IP.

Appears in 2 contracts

Samples: Collaboration and Option Agreement (Aridis Pharmaceuticals, Inc.), Collaboration and Option Agreement (Aridis Pharmaceuticals, Inc.)

Royalties. In consideration for the rights and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.20, 4.2 and 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof. Adjustments related to Unlicensed Products. Notwithstanding anything express or implied in Section 4.1 to the contrary and subject to Section 4.3 hereof, if, during the Royalty Term in a given country of the Territory, (i) there is no Valid Claim of an issued patent within Ipsen Patent Rights or Joint Patent Rights that Covers the sale of a Licensed Product in such country, and (ii) the aggregate sales revenue in such country of Unlicensed Products (expressed in the currency of such country) constitute more than [ ]*of the market share with respect to the aggregate sales revenue of such Unlicensed Products and such Licensed Product in such country (expressed in the currency of such country), then Licensee shall have the right to calculate royalty payments due to Ipsen pursuant to this Agreement by including only [ ]*of the amount of Net Sales that would * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. have otherwise been included for such Licensed Product in such country to calculate such royalty payments. For the avoidance of doubt, such adjustment of royalties shall apply only if the applicable Unlicensed Products contain the same [ ]* as the applicable Licensed Product. In case of a disagreement between the Parties on the market share of one or more Unlicensed Products in any country of the Territory, the Parties agree to refer such dispute to arbitration pursuant to Article 16.

Appears in 2 contracts

Samples: License Agreement (Rhythm Holding Company, LLC), License Agreement (Rhythm Holding Company, LLC)

Royalties. In consideration for 3.1 For the rights rights, privileges and license granted hereunder and for the services to be performed by Licensor hereunder, Licensee shall pay royalties to Licensor (in the manner hereinafter provided) to the end of the term of this Agreement unless it shall be terminated as hereinafter provided: (a) A license issue royalty of * * *, which said license issue royalty shall be deemed earned and due immediately upon the execution of this Agreement; (b) A license exclusivity maintenance royalty of * * * * * * per Marketing Period during the first * * * Marketing Periods, which amount shall increase by the amount of * * * per Marketing Period during each subsequent Marketing Period until such time as the license exclusivity maintenance royalty equals * * * , and thereafter at a rate of * * * per Marketing Period, which said license exclusivity maintenance royalty shall be * * * Confidential Treatment Requested payable in monthly installments, in arrears, and shall be credited in full against the royalties on sales due for each Marketing Period pursuant to Section 3.1(c)(ii); (c) Royalties on sales in an amount equal to: (i) upon sale of the 25th 3-D Video System (as such term is defined in the description of Technology set forth in Appendix A attached hereto) incorporating a Licensed Product, and an additional * * * upon sale of each of the * * * and *** such 3-D Video Systems incorporating a Licensed Product; (ii) thereafter, through the date on which the Patent Rights Patent(s) expire (or, if no Patent Right Patents issue within three years of the date of this Agreement, through the fifteenth anniversary of the date of this Agreement), * * * first * * * of Net Sales, * * * of the next * * * of Net Sales, and * * * of all subsequent Net Sales. (d) From and after the date on which the Patent Rights Patent(s) expire (or, if no Patent Right Patents issue within * * * years of the date of this Agreement, from and after the * * * anniversary of the date of this Agreement), the obligation of Licensee to pay a license exclusivity maintenance royalty or any royalties on sales hereunder shall terminate and the license granted herein shall become perpetual, exclusive and royalty- free. 3.2 All royalties payable to Licensor under Section 3.1 above shall be considered earned by Licensor * * * by Licensee of payment for the license, use or sale of Licensed Products, and shall be payable * * * as set forth in Article 4 of this Agreement, except for license exclusivity maintenance royalties which shall be payable * * * immediately at the * * * in the manner as provided above. 3.3 All payments that are not paid for whatever reason when they become due shall be subject to the addition of interest at a floating rate per annum equal to the prime rate as published from time to time in the WALL STREET JOURNAL, calculated from said due date to the date a negotiable payment check is mailed by certified mail to Licensor for all monies due and owed to Licensor. Furthermore, Licensor shall not be obligated to give notice for interest to begin to accrue. 3.4 No multiple royalties shall be payable because the Licensed Product(s) or Licensed Process(es) are or shall be covered by more than one patent application or patent licensed under this Agreement, Licensee shall, subject to nor shall royalties be adjusted upon the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales granting of any given Licensed Product patent or the finding of invalidity of any patent or portion thereof governed by this Agreement. * * * Confidential Treatment Requested 3.5 Royalty payments shall be paid in United States dollars in Boston, Massachusetts, or at such other place as Licensor may reasonably designate consistent with the laws and regulations controlling in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such foreign country, which royalties . If any currency conversion shall be equal to [ ]* of such Net Sales; provided, however, that, subject to required in connection with the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount payment of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933hereunder, AS AMENDED. due Ipsen pursuant to this Section 4.1 such conversion shall be made by using the exchange rate prevailing at a first-class foreign exchange bank on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment the last business day of royalties due the calendar quarterly reporting period to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofwhich such royalty payments relate.

Appears in 2 contracts

Samples: License and Development Agreement (Vista Medical Technologies Inc), License and Development Agreement (Vista Medical Technologies Inc)

Royalties. In consideration for of the exclusive licenses and other rights and license granted to CpG under this Agreement, Licensee shallCpG agrees to pay to LOEB a royalty, subject commencing upon the first Commercial Sale of a Licensed Product by CpG, its Affiliates or its Sublicensees, as follows: (a) For Commercial Sales made by CpG or its Affiliates, CpG shall pay the highest applicable royalty as set forth below: (i) For sales of Licensed Products covered by issued or Pending Patent Rights, CpG shall pay to LOEB a royalty equal to [****] percent ([*]%) of Net Sales; (ii) For sales of Licensed Products not covered by issued or Pending Patent Rights, CpG shall pay to LOEB a royalty equal to [*****] percent ([*]%) of Net Sales. (b) Notwithstanding the provisions foregoing, in the event that the total royalties due to LOEB and all third parties on a Licensed Product exceed [**]% of Sections 4.2Net Sales prior to any applicable royalty reduction(s), 4.3 and 4.4 belowCpG shall be entitled to a royalty reduction of [*****] percent ([**]%) of the royalties owed to third parties on the Licensed Products in excess of [**]%, up to a maximum reduction of [**]% of the royalties due the LOEB according to Section 4.1(a) above. For example, if the total royalty due on a Licensed Product is [**]%, CpG shall pay royalties to Ipsen based upon LOEB a royalty of [***]% (i.e., [*]% - [***]%) of Net Sales of the Licensed Product. (c) In the event that CpG and/or its Affiliates receive Sublicense Income from any given Licensed Product in any given country in the Territory during the Royalty Term applicable Sublicensee, CpG shall pay to sales LOEB [***] percent ([**]%) of such Licensed Product in Sublicense Income from each such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, Sublicensee. (d) In the event that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if : (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, payments by CpG to LOEB under Section 4.1(c) plus (ii) the Ipsen MC4 [ payments by CpG to one or more third parties of a percentage of such Sublicense Income exceed [*****] percent ([**]* was accepted in writing %) of any such Sublicense Income received by Licensee CpG, then payments to LOEB pursuant to Section 2.11.1 4.1(c) will be reduced on a prorata basis with payments owed to such third parties on such Sublicense Income so that the total percentage paid out by CpG to all non-affiliated third parties with respect to Sublicense Income shall not exceed [******] percent ([**]%) of any such amounts received by CpG. For example, if CpG receives Sublicense Income and owes Party X [***] percent (iii[**]%) thereof and Party Y [******] percent ([**]%) thereof, bringing the Ipsen MC4 [ total owed to [**]* is Covered by Ipsen MC4 [ ]* Patent Rights%, then the royalty rate applicable to Net Sales LOEB’s share of such Ipsen MC4 Product in any given country in Sublicense Income will be reduced to [****]% (i.e., by [****]%, which is [****]% of the Territory during excess of [****] percent since [**]% is [****]% of [**]%). Notwithstanding the Royalty Term applicable foregoing, this provision shall only be effective with respect to sales of such Ipsen MC4 Product in such country payments to third parties which are governed by a similar provision and shall not be (A) [ ]* if used to reduced the Ipsen MC4 [ ]* is delivered by Ipsen percentage owed to Licensee LOEB pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicableSec. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof.4.1

Appears in 2 contracts

Samples: License Agreement (Coley Pharmaceutical Group, Inc.), License Agreement (Coley Pharmaceutical Group, Inc.)

Royalties. In consideration for the rights and license granted under The royalties set forth in this Agreement, Licensee shall, subject Section 6.3 shall apply to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given each country within the Territory, unless TolerRx properly exercises and participates in the US Profit/Loss Sharing Option, in which case (P) the royalties set forth in this Section 6.3 shall apply only to Net Sales in countries in the Territory during other than the Royalty Term applicable United States and (Q) Section 6.5 applies to sales of such Licensed Product in such countrythe United States. Subject to the foregoing, which royalties payable by Genentech under this Section 6.3 shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 determined and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made payable on a country-by-country and Licensed Product-by-Licensed Product basis and as follows (depending on the type of Licensed Product sold in such country): (A) with respect to such Licensed Product that, but for the licenses granted herein, would infringe a Valid Claim in such country, the royalties as set forth in Section 6.3(a); or (B) with respect to such Licensed Product that would not infringe a Valid Claim in such country, but (X) relies on or incorporates TolerRx Know-by-country basis. Payment of royalties due how, including but not limited to, Antibodies provided by TolerRx to Ipsen Genentech pursuant to this Article 4 Agreement or (Y) was developed pursuant to the Development Plan, the royalties set forth in Section 6.3(b). All such royalties shall be made further reduced by one or more of the following Sections, to the extent applicable: Sections 6.3(c) and 6.4. For clarity, no royalties for a Licensed Product in accordance a country shall be owed by Genentech under Sections 6.3 or 6.4 until the date of Commercial Introduction of such Licensed Product in such country. All references in this Agreement to "royalties under Sections 6.3 and 6.4" "royalties set forth in Sections 6.3 and 6.4" or the like shall mean royalties set forth in Sections 6.3, reduced by Section 6.4 if applicable. (a) ROYALTIES OWED BY GENENTECH FOR LICENSED PRODUCTS COVERED BY VALID CLAIM. As consideration to TolerRx for the licenses and other rights granted to Genentech under this Agreement, during the Term, Genentech shall make royalty payments to TolerRx (for each Licensed Product sold in the country(ies) where the sale of such Licensed Product, but for the licenses granted herein, would infringe a Valid Claim) as follows and such payments shall be reduced by Sections 6.3(c), and/or 6.4 to the extent applicable. (i) Genentech shall pay a royalty of [***] for the portion of Patented Product Aggregate Annual Worldwide Net Sales that is less than or equal to $[***]. * Confidential treatment requested: material has been omitted and filed separately with the provisions Commission. GENENTECH CONFIDENTIAL (ii) Genentech shall pay a royalty of Article 5 hereof[***] for the portion of Patented Product Aggregate Annual Worldwide Net Sales that is greater than $[***] and less than or equal to $[***]. (iii) Genentech shall pay a royalty of [***] for the portion of Patented Product Aggregate Annual Worldwide Net Sales that is greater than $[***] and less than or equal to $[***]. (iv) Genentech shall pay a royalty of [***] for the portion of Patented Product Aggregate Annual Worldwide Net Sales that is greater than $[***].

Appears in 2 contracts

Samples: Collaboration Agreement (Tolerrx Inc), Collaboration Agreement (Tolerrx Inc)

Royalties. In consideration for the rights and license granted under this Agreement, Licensee Company shall, subject during the relevant Royalty Periods (on a country by country and Licensed Product by Licensed Product basis), pay the Licensors, through the Leading Licensor, royalties equal to [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION]of all Net Sales by the Company and its Affiliates. During the Royalty Period, following the later of there being no Valid Claim, or the end of the Exclusivity Rights (if any), applicable to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given the country of sale, the said royalty rate in the Territory during the Royalty Term applicable to sales country of such Licensed Product in such country, which royalties sale shall be equal reduced to [ [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION]* . Company shall be entitled to deduct [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION] of such Third Party Royalties from the consideration due the Licensors as a result of Net Sales; Sales by the Company or its Affiliates after all credits and deductions permitted by this Agreement have been taken, provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to which the Company shall pay Licensors, through the Leading Licensor, for Net Sales of by the Company or its Affiliates shall not be reduced by more than [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION] during any particular payment period (namely that such Ipsen MC4 Product in any given country in the Territory Net Sales shall not be reduced to less than [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION] during the Royalty Term applicable period in which there is a Valid Claim or Exclusivity Right, and to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date less than [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION] during any remaining period of the MC4 [ ]* Agreement, Royalty Term) (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * “[THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS AND HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofCOMMISSION]”).

Appears in 2 contracts

Samples: License Agreement (Artemis Therapeutics, Inc.), License Agreement (New York Global Innovations Inc.)

Royalties. In consideration for (a) Subject to the rights and license granted under remainder of this AgreementSection 8.04 (Royalties), Licensee shall, subject to shall pay Tetraphase the provisions of Sections 4.2, 4.3 and 4.4 below, pay following royalties to Ipsen based upon on aggregate Net Sales of any given all Licensed Product Products, at an incremental royalty rate determined by aggregate annual Net Sales of all Licensed Products in any given country each calendar year during the Term in the Territory during the Territory: Portion of Annual Net Sales of all Licensed Products Royalty Term applicable to sales By way of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 example and 4.4 belownot limitation, if Net Sales of all Licensed Products in the first quarter of a calendar year are [**] Dollars (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ $[**]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights), then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be [**]. (Ab) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used Running royalties paid by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to under this Section 4.1 8.04 (Royalties) shall be made paid on a Licensed Product-by-Licensed Product basis and on a countryJurisdiction-by-country Jurisdiction basis until the latest of (i) expiration of the last-to-expire Valid Claim that is a composition of matter claim (for clarity, including a formulation claim) in the Tetraphase Patent Rights or Joint Patent Rights that Covers such Licensed Product in the Field in such Jurisdiction, (ii) expiration of marketing or regulatory exclusivity with respect to such Licensed Product in such Jurisdiction, or (iii) ten (10) years from the First Commercial Sale of such Licensed Product in the Field in such Jurisdiction (each, a “Royalty Term”). Following the expiration of the Royalty Term with respect to a particular Licensed Product in the Field in a Jurisdiction, the license granted by Tetraphase to Licensee pursuant to Section 2.01(a) with respect to such Licensed Product in the Field in such Jurisdiction shall be perpetual, irrevocable, fully-paid and royalty-free, and Net Sales of such Licensed Product shall no longer be included in the aggregate Net Sales calculation in Section 8.03 (Sales Milestone Payments) or Section 8.04(a). (c) Notwithstanding the foregoing, in the event that, on a Licensed Product-by-Licensed Product, Jurisdiction-by-Jurisdiction and (subject to Section 8.04(c)(iv)) calendar quarter-by-calendar quarter basis. Payment : (i) in such Jurisdiction in the Territory during such calendar quarter during the Royalty Term for such Licensed Product, one or more applicable Generic Products are on the market in such Jurisdiction and unit sales of royalties such Generic Product(s) in such Jurisdiction constitute more than [**] percent ([**]%) but less than [**] percent ([**]%) of the total unit sales of such Generic Product(s) and Licensed Product in such Jurisdiction, Licensee shall, for such calendar quarter for such Licensed Product in such Jurisdiction, pay to Tetraphase a royalty rate that is [**] percent ([**]%) of the applicable rate set forth in Section 8.04(a); (ii) in such Jurisdiction in the Territory during such calendar quarter during the Royalty Term for such Licensed Product, one or more applicable Generic Products are on the market in such Jurisdiction and unit sales of such Generic Product(s) in such Jurisdiction constitute [**] percent ([**]%) or more of the total unit sales of such Generic Product(s) and Licensed Product in such Jurisdiction, Licensee shall, for such calendar quarter for such Licensed Product in such Jurisdiction, pay to Tetraphase a royalty rate that is [**] percent ([**]%) of the applicable rate set forth in Section 8.04(a); (iii) in the event that Section 8.04(c)(i), Section 8.04(c)(ii) does not apply, but, under applicable Law, the royalty rate must be reduced in order to ensure enforceability of the royalty obligation once clause (i) or (ii) of the Royalty Term ends with respect to a Licensed Product in a Jurisdiction, then the royalty with respect to such Licensed Product in such Jurisdiction shall be reduced by [**] percent ([**]%) from the rate set forth in Section 8.04(a). (iv) Subject in all cases to Section 8.04(d), if (A) a royalty reduction pursuant to Section 8.04(c)(i) or Section 8.04(c)(ii) is applicable with respect to a calendar quarter, (B) Licensee has paid to Tetraphase a royalty payment with respect to such calendar quarter pursuant to Section 8.05 (Royalty Payments and Reports) and (C) any or all of the amount of royalty reduction to which Licensee is entitled as set forth in clause (A) of this sentence was not applied to the royalty payment paid as set forth in clause (B) of this sentence due to Ipsen pursuant to this Article 4 time lag of information regarding market share of Generic Product(s), then the amount of reduction not applied shall be made fully creditable against payments owed by Licensee to Tetraphase in accordance one or more subsequent calendar quarters. (d) On a Licensed Product-by-Licensed Product, Jurisdiction-by-Jurisdiction and calendar quarter-by-calendar quarter basis, in no event shall the royalty rate payable to Tetraphase under this Section 8.04 (Royalties) be reduced by more than [**] percent ([**]%) of what it would otherwise be by operation of Section 8.04(a) alone with respect to such Licensed Product in such Jurisdiction in such calendar quarter as a result of the provisions of Article 5 hereofreductions set forth in Section 8.04(c).

Appears in 2 contracts

Samples: License Agreement (La Jolla Pharmaceutical Co), License Agreement (Tetraphase Pharmaceuticals Inc)

Royalties. In consideration for CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. DOUBLE ASTERISKS [**] DENOTE OMISSIONS. Page 15 of 52 (a) During the rights and license granted under this AgreementRoyalty Term, Licensee shall, subject Novo Nordisk shall pay to the provisions of Sections 4.2, 4.3 and 4.4 below, pay Zosano royalties to Ipsen based upon on worldwide annual (calendar year) Net Sales of any given Licensed Products, as follows: (i) For all sales of each Licensed Product in any given all countries where such Licensed Product is Covered by either an Issued Patent Claim of the Zosano Intellectual Property or a Valid Patent Claim of the Combined Intellectual Property (such sales in either case being “Covered Sales”) , Novo Nordisk shall pay to Zosano the royalty rates set forth below (“Patent Royalties”) based on the annual Net Sales of such Licensed Products: [**] (ii) For all sales of each Licensed Product in all countries where such Licensed Product is not Covered by either an Issued Patent Claim of the Zosano Intellectual Property or a Valid Patent Claim of the Combined Intellectual Property (such sales in either case being “Uncovered Sales”), Novo Nordisk shall pay Zosano royalty rates (“Know How Royalties”) at [**]. If Annual Net Sales [**] and include both Covered Sales and Uncovered Sales of Licensed Products, the royalty reduction attributable to Uncovered Sales shall be applied to each Patent Royalty Rate based on the proportion of Uncovered Sales to total Annual Net Sales. (iii) The following is a hypothetical example of royalty calculation: [**] (b) Novo Nordisk’s royalty obligations under Section 3.4(a) with respect to each Licensed Product shall commence on a country-by-country basis on the date of First Commercial Sale of such Licensed Product by Novo Nordisk, its Affiliates or sublicensees in the Territory during relevant country, and shall expire on a country-by-country basis upon the Royalty Term applicable later of (i) expiration of the last to sales expire Issued Patent Claim of the Zosano Intellectual Property or the Combined Intellectual Property Covering such Licensed Product in such country, which or (ii) [**] following First Commercial Sale of such Licensed Product in such country (the “Royalty Term”). (c) In the event Novo Nordisk is required to obtain one or more licenses under Intellectual Property Controlled by a Third Party in order to exercise Novo Nordisk’s rights to the Licensed Patents or Licensed Know-How in any country in the Territory as contemplated under this Agreement (a “Third Party License Payment”), then the royalties payable under Section 3.4(a) with respect to any Licensed Product in such country in the Territory, shall be decreased by an amount equal to [ ]* [**] of the amount of such Net SalesThird Party License Payment attributed to sales of the applicable Licensed Product; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. MATERIALS OMITTED PORTIONS AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDEDCOMMISSION. due Ipsen pursuant DOUBLE ASTERISKS [**] DENOTE OMISSIONS. no event shall the total royalty paid to this Zosano for any Licensed Product be less than [**] of the royalty otherwise applicable for such Licensed Product under Section 4.1 3.4(a). (d) Royalty payments shall be made on a calculated, reported and paid for each calendar quarter after the First Commercial Sale of the first Licensed Product-by-. All royalty payments due to Zosano under this Agreement shall be paid within [**] of the end of each calendar quarter. Each payment shall be accompanied by a report of Net Sales of Licensed Product basis by Novo Nordisk, its Affiliates and their respective sublicensees setting forth, on a country-by-country basis, in sufficient detail such information concerning sales to permit confirmation of the accuracy of the payment made, including the gross sales of Licensed Product in the Territory and country by country, total deductions or adjustments made, and the royalty and any sales milestone payments payable to Zosano. Payment Novo Nordisk shall keep, and shall cause its Affiliates and their respective sublicensees to keep, complete and accurate records pertaining to the sale or other disposition of royalties Licensed Products in sufficient detail to permit Xxxxxx to confirm the accuracy of all payments due to Ipsen pursuant to this Article 4 shall be made hereunder as set forth in accordance with the provisions of Article 5 hereofSection 8.4.

Appears in 2 contracts

Samples: Licensing Agreement, Licensing Agreement

Royalties. In consideration for (a) RELIANT shall pay EURAND a Net Royalty of [***] percent ([***]%) of the rights and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country the Finished Dosage Form sold by RELIANT in the Territory during the term of this Agreement. (b) In the event that RELIANT does not release EURAND from the Non- compete Period as set forth in Section 4.3(c), RELIANT shall pay EURAND a Net Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ [***] percent ([***]* %) of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country the Finished Dosage Form sold by RELIANT in the Territory during the Royalty Term applicable remainder of the term of this Agreement. (c) No later than forty-five (45) days after the end of each calendar quarter, RELIANT shall report to sales EURAND the Net Sales of such Ipsen MC4 Product the Finished Dosage Form and the Net Royalties due during each calendar quarter in such each country of the Territory in the previous calendar quarter. The payment by RELIANT to EURAND shall be in U.S. Dollars and shall be made within forty-five (A45) [ days after the end of each calendar quarter. Payment shall [***]* if : Certain information on this page has been omitted and filed separately with the Ipsen MC4 [ ]* is delivered Commission. Confidential treatment has been requested with respect to the omitted portions. be made via wire transfer to a bank designated by Ipsen EURAND. RELIANT shall keep true and accurate books of account and shall keep and maintain all records and documents necessary for EURAND to Licensee pursuant to Section 2.11.1 within [ ]* after ascertain the Net Royalties due under this Agreement. (d) After the first anniversary of the date of first commercial sale of the MC4 [ ]* AgreementFinished Dosage Form and upon the provision of reasonable notice, (B) [ ]* if EURAND shall have the Ipsen MC4 [ ]* is delivered by Ipsen right to Licensee pursuant designate a firm of certified public accountants to Section 2.11.1 inspect RELIANT’s books of account, records, documents and instruments and to make copies thereof at any time during RELIANT’s regular business hours during the term of this Agreement but no more than once per year and for a period of two (2) years immediately after termination of this Agreement, to ascertain the [ ]* following the date accuracy of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting report. The expense of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 such audit shall be made on EURAND’s unless the audit shall demonstrate a Licensed Product-by-Licensed Product basis discrepancy greater than five (5%) between Net Royalties reported and on a country-by-country basis. Payment paid and those which were actually due, in which event the expenses of royalties due to Ipsen pursuant to this Article 4 audit shall be made in accordance with the provisions of Article 5 hereofborne by RELIANT.

Appears in 2 contracts

Samples: Development, License and Supply Agreement (Reliant Pharmaceuticals, Inc.), Development, License and Supply Agreement (Reliant Pharmaceuticals, Inc.)

Royalties. In consideration for 8.1 Subject to the rights terms and license granted under conditions contained in this Agreement, Licensee shalland in consideration of the rights granted by Supernus hereunder, United Therapeutics shall for the Royalty Term, pay each Quarter to Supernus, or an Affiliate of Supernus designated in writing, royalties based on Net Sales during the Royalty Term as set out in the following table: Worldwide First [**] % Worldwide Second [**] % Worldwide Third and beyond [**] % Each Licensed Combination Product, if existing Third Party royalty obligations All [**] % Each Licensed Combination Product, if no existing Third Party royalty obligations All [**] % 8.2 Upon Product Approval of a Licensed Product for the second indication the royalty rate for the first indication will be reduced to [**]% and the royalty rate for the Second Indication will be [**]%. Upon Product Approval of a Licensed Product for the Third Indication, the royalty rate for the Second Indication will be reduced to [**]% and the royalty rate for the Third Indication will be [**]%. 8.3 In the event that [**] study for the second indication has not been initiated using Licensed Products or Licensed Combination Products at the time of first approval for a Licensed Product the royalty rate for the first indication will be increased to [**]%. [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. 8.4 No royalties shall be payable on Licensed Products or Licensed Combination Products distributed to Third Parties without the receipt of compensation solely as a sample for testing or evaluation purposes. Only one payment of royalties shall be due with respect to the same unit of a Licensed Product or Licensed Combination Product, and no multiple royalties shall be payable because any Licensed Product or Licensed Combination Product, or its manufacture, sale or use, is covered by more than one Valid Claim or is subject to both Supernus Know-How and a Valid Patent Claim. Following First Commercial Sale in any country, United Therapeutics shall have the provisions right to distribute (without receipt of Sections 4.2compensation and without payment of a royalty to Supernus) in any calendar year for compassionate purposes to indigent patients, 4.3 an aggregate of up to [**] ([**]%) of the total number of Licensed Products or Licensed Combination Products sold in units (with the receipt of compensation) in such country in such calendar year by United Therapeutics, its Affiliates and 4.4 belowSub-Licensees. 8.5 If United Therapeutics, its Affiliates or its Sub-Licensees are required to pay royalties to Ipsen based upon any Third Party because the manufacture, use or sale of Licensed Products or Licensed Combination Products infringes any Patent or other intellectual property rights of such Third Party in any country in the Territory in accordance with clause 14 and where such infringement is not otherwise caused by United Therapeutics, its Affiliates, its Sub-Licensees, subcontractors, or its suppliers, and where such Patent or other intellectual property rights cover Supernus Intellectual Property used in such Licensed Products or Licensed Combination Products, then United Therapeutics, its Affiliates or its Sub-Licensees may deduct from royalties thereafter due to Supernus with respect to Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject up to the provisions of Sections 4.2, 4.3 and 4.4 below, if lower of: (i) [**] ([**]%) of the royalties or such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*other fees paid to acquire rights in such Patent or other intellectual property right, or (ii) [**] ([**]%) of the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant royalties due to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable Supernus with respect to Net Sales of such Ipsen MC4 any Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product or Licensed Combination Products in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofgiven quarter.

Appears in 2 contracts

Samples: Exclusive License Agreement (Supernus Pharmaceuticals Inc), Exclusive License Agreement (Supernus Pharmaceuticals Inc)

Royalties. In (a) Except as provided in paragraph (b) of this Section 5.4, in part consideration for of the license rights and license granted by Marina under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, ProNAi shall pay royalties to Ipsen based upon Marina on Net Sales by ProNAi or any of any given its Affiliates or Sublicensees of Licensed Product in any given country in the Territory Products during the Royalty Term applicable to for sales of License Products in country(ies) where such sale would infringe, absent the license granted in Section 2.1, a Valid Claim of an issued Licensed Patent. ProNAi shall pay to Marina royalties equal to [***]% of the Net Sales revenue recognized by ProNAi or any of its Affiliates or Sublicensees from such sales. (b) Notwithstanding the provisions of paragraph (a) of this Section 5.4, unless ProNAi fulfills the requirements for a fully paid-up license set forth in paragraph (d) of Section 5.11 and makes the Initial Cash Payment to Verwaltungs (as defined in said Section 5.11) as set forth therein, ProNAi shall pay royalties with respect to the AG License Product in such country, which royalties accordance with the following: (i) ProNAi shall be equal pay to [ ]* Verwaltungs a royalty of [***] of Net Sales of ProNAi or any of its sublicensees in respect of such Net Sales; provided, however, that, subject to Sales of the provisions AG License Product (“Royalty Rate”). To the extent that a sublicense royalty received by ProNAi exceeds [***] of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to sublicensee’s Net Sales for the AG License Product, the Royalty Rate shall increase by [***] for every full percentage point in excess of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country [***] level. Royalties shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and payable on a country-by-country and AG License Product-by-AG License Product basis until the expiration in such country of the last to expire Valid Claim and all supplementary protection certificates based on a Valid Claim relating to the AG License Product (each an “SPC”). On a jurisdiction-by-jurisdiction basis, for all periods during which there is no Valid Claim or SPC in a particular jurisdiction, the Royalty Rate shall be reduced to [***] for the use of Licensed Know-How until the earlier of (i) the three (3) year anniversary of the date of the last to expire of all Valid Claims and SPC’s in such jurisdiction or (ii) the date upon which a third party legally introduces a generic version of the AG License Product in such jurisdiction. Payment In the event that any AG License Product is sold in combination with another active ingredient or component having independent therapeutic effect or diagnostic utility, then “Net Sales,” for purposes of determining royalty payments on the combination during the royalty payment period in question shall be calculated as follows: By multiplying the Net Sales of the combined product by the fraction A/{A+B), where A is the list price of such AG License Product as sold separately, and B is the list price of the other active ingredients or components as sold separately. In the event that there are no separate sales of such AG License Product or the active ingredients or components in such combination product, Net Sales shall instead be calculated by multiplying them by the formula in the foregoing clause (i), but where A is the commercial value of such AG License Product if sold separately and B is the commercial value of the other active ingredients or components if sold separately, with each such value determined using criteria and a commercial value mutually agreed upon in writing by Verwaltungs and ProNAi. (ii) The royalty payments due under this Section 5.4(b) shall be paid to Verwaltungs by ProNAi within sixty (60) days after the end of each calendar quarter in which such Net Sales are made and royalties are owed hereunder. Each such payment shall be accompanied by a report (with a copy to Marina) showing the Net Sales of each AG License Product sold by ProNAi, or an Affiliate or sublicensee of ProNAi, in each country, the applicable royalty rate for such AG License Product, and a calculation of the amount of royalty. (iii) ProNAi shall not be obligated to pay multiple royalties on Net Sales of a AG License Product, even if a AG License Product is covered by more than one Valid Claim. (iv) If ProNAi, in its reasonable judgment, is required to obtain a license from any third party that is not an Affiliate of ProNAi under any patent in order to practice the Licensed Technology, and if ProNAi is required to pay a royalty under such license calculated on sales of such AG License Product in any country, and the infringement of such patent cannot reasonably be avoided by ProNAi, or if ProNAi is required by a court of competent jurisdiction to pay such a royalty, then ProNAi’s obligation to pay royalties to Verwaltungs with respect to such AG License Product shall be reduced by [***] of the amount of the royalty paid to such third party with respect to such AG License Product; provided however, that the royalties payable to Verwaltungs shall not be reduced in any such event below [***] of the applicable amount set forth in Section 5.4(b)(i) above. Prior to ProNAi exercising its reasonable judgment under this subparagraph (iv), ProNAi shall provide Verwaltungs and Marina with written notice of a potential need to obtain any license from third parties. (v) ProNAi may withhold from payments due to Ipsen pursuant Verwaltungs amounts for payment of any withholding tax that it is required by law to this Article 4 pay to any taxing authority with respect to such payment amounts due to Verwaltungs; provided, however, that in regard to any such tax withholding, ProNAi shall give Verwaltungs such documents and provide any other cooperation or assistance on a reasonable basis as may be necessary to enable Verwaltungs to claim exemption therefrom to receive a full refund of such withholding tax or claim a foreign tax credit and shall, upon Verwaltungs’ request, give proper evidence from time to time as to the payment of such tax. (vi) Translation of sales recorded in local currencies to ProNAi’s or sublicensee’s global currency will be performed in a manner consistent with ProNAi or sublicensee’s normal practices used to prepare its audited financial statements for internal and external reporting purposes, and which uses a widely accepted source of published exchange rates. Royalties will be calculated and paid in Euros, using the rate of conversion from applicable global currency to Euros published in The Wall Street Journal (U.S.) two business days before the due date; provided, however, that for purposes of converting ProNAi’s cash payment obligations upon achievement of milestones with respect to the AG License Product as contemplated by Section 5.11 below, any such milestone payment in Euros shall be adjusted so that the rate of conversion of U.S. Dollars to Euros is not more than two percent (2%) greater or less than such rate of conversion as published in The Wall Street Journal (U.S.) as of the Effective Date. (vii) All royalty and milestone payments not paid within the time period set forth in this Section 5.4(b) shall bear interest at a rate of one percent (1%) per month from the due date until paid in full; provided that, in no event shall such annual rate exceed the maximum interest rate permitted by law in regard to such payments. Such royalty or milestone payment when made shall be accompanied by all interest so accrued. (c) If within thirty (30) days of the date of this Agreement ProNAi fulfills the requirements for a fully paid-up license set forth in accordance with paragraph (d) of Section 5.11 and makes the provisions Initial Cash Payment to Verwaltungs as set forth therein, then in lieu of the payment obligations set forth in paragraph (b), (i) ProNAi shall pay to Verwaltungs a royalty of [***] of Net Sales of ProNAi or any of its sublicensees in respect of such Net Sales of the AG License Product (the “Fully Paid-up Royalty Rate”). To the extent that a sublicense royalty received by ProNAi exceeds [***] of the sublicensee’s Net Sales of the AG License Product, the Fully Paid-up Royalty Rate shall increase by [***] for every full percentage point in excess of such [***] level. Royalties shall be payable on a country-by-country and AG License Product-by-AG License Product basis until the expiration in such country of the last to expire Valid Claim and all SPCs. On a jurisdiction-by-jurisdiction basis, for all periods during which there is no Valid Claim or SPC in a particular jurisdiction, the Royally Rate shall be reduced to [***]% for the use of Licensed Know-how until the earlier of (i) the three (3) year anniversary of the date of the last to expire of all Valid Claims and SPCs in such jurisdiction or (ii) the date upon which a third party legally introduces a generic version of the AG License Product in such jurisdiction; and (ii) except as expressly set forth in this paragraph (c), all financial obligations of ProNAi set forth in this Agreement are terminated as of the Fully Paid-Up Effective Time (as defined in Section 5.11(d)). (d) If ProNAi exercises the Substitution Right, then in addition to royalties payable to Verwaltungs under this Section 5.4, ProNAi shall pay to Marina a royalty of [***] of Net Sales of ProNAi or any of its sublicensees in respect of such Net Sales of the AG License Product. 12. Article 5 hereof.of the Marina License is hereby amended to add Section 5.11, which shall read in its entirety as follows:

Appears in 2 contracts

Samples: Second License Amendment and Consent to Termination (ProNAi Therapeutics Inc), Second License Amendment and Consent to Termination (ProNAi Therapeutics Inc)

Royalties. In (a) Gelesis shall pay to PureTech, during the applicable term described in Section 2(b) below, earned royalties at the following rates: Type of Licensed Product Rate A royalty on all Net Sales by Gelesis-Bermuda, its affiliates or any Sublicensee of Licensed Products that are not FoodProducts: 2 % A royalty on all Net Sales by Gelesis-Bermuda or its affiliates of Licensed Products that are Food Products: 2 % If the manufacture, use, lease, or sale of any Licensed Product is covered by more than one of the Valid Claims under the Patent Rights in the Field, or any patents in the Improvements or Food IP, multiple royalties shall not be due. (b) The Parties hereby agree that should intellectual property rights owned by a third party pose as an obstacle to the development or commercialization of any Licensed Product that is not a Food Product (the “Blocking IP”), Gelesis-Bermuda or an applicable affiliate of Gelesis-Bermuda shall, after consulting in good faith with PureTech, seek a potential settlement solution with the Blocking IP holder and the royalty rates for Licensed Products that are not Food Products set forth in Section 2(a) shall be reduced by the amount of such consideration paid for the rights and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net SalesBlocking IP; provided, however, that, subject however that in no case shall the royalty rates for Licensed Products that are not Food Products set forth in Section 2(a) be reduced by more than fifty percent (50%) as a result of the application of this Section 2(b). (c) The obligation of Gelesis to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pay royalties pursuant to Section 2.11.1 and (iii2(a) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and terminate on a country-by-country basis. Payment basis concurrently with (i) the expiration or termination of royalties due to Ipsen pursuant to this Article 4 shall be made the applicable Valid Claim under the Patent Rights in accordance with the provisions country in which the Licensed Product is sold, or (ii) the withdrawal, cancellation, or disclaiming of Article 5 hereofthe applicable Valid Claim under the Patent Rights in the country in which the Licensed Product is sold.

Appears in 2 contracts

Samples: Royalty Assignment Agreement (PureTech Health PLC), Royalty and Sublicense Income Agreement (PureTech Health PLC)

Royalties. In consideration (a) Licensee will pay a running royalty at the rate set forth in Section 3.2 of the Patent License Agreement on [***], payable on or before the Quarterly Payment Deadline for the rights and license granted under this Agreement, Licensee shallsuch Contract Quarter, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties following: (b) No more than one royalty shall be paid to Ipsen based upon Net Sales Licensor hereunder with respect to the Sale of any given one unit of Licensed Product whether or not more than one patent or Valid Claim is applicable to the Licensed Product, or the development, manufacture, or performance thereof. (c) If (i) a Licensed Product cannot be made or used without also using patent(s) or patent application(s) owned, licensed, or controlled by a third party in any country of the Territory, and Licensee, an Affiliate, or any Sublicensee licenses such third party patent(s) or patent application(s) in order to minimize, mitigate, or avoid the risk of infringement-related litigation with respect to the manufacture, use, sate, marketing or provision of a Licensed Product in any given country of the Territory, then Licensee shall be entitled to deduct [***] of the consideration paid to any such third party for any such rights in a particular country (such consideration, “Third Party Royalties”) from any payments due Licensor under Section 3.2(a) of this Agreement for the infringing Net Sales in that particular country, provided that such amounts payable shall not be reduced, with respect to any Contract Quarter below [***] of the amounts otherwise due Licensor with respect to such Contract Quarter for said Net Sales without such offset (with any amount of any such consideration not used to reduce payments due Licensor hereunder as a result of such limit remaining available for deduction from amounts due Licensor in future Contract Quarter for the infringing Net Sales in that particular country, subject to such [***] limit in each Contract Quarter)or (ii) Licensee, an Affiliate, or any Sublicensee licenses such third party patent(s) or patent [***]Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. Confidential treatment has been requested with respect to this information. Licensee: AEMase Inc. CONFIDENTIAL Exclusive PLA application(s) where such Licensee, Affiliate, or Sublicensee reasonably determines that it is necessary or advisable to obtain a license to any patent(s) or patent application(s) owned, licensed, or controlled by a Third Party then Licensee shall be entitled to deduct [***] of the consideration paid to any such third party for any such rights in a particular country (such consideration, “Third Party Royalties”) from any payments due Licensor under Section 3.2(a) of this Agreement for the infringing Net Sales in that particular country, provided that such amounts payable shall not be reduced, with respect to any Contract Quarter below [***] of the amounts otherwise due Licensor with respect to such Contract Quarter for said Net Sales without such offset (with any amount of any such consideration not used to reduced payments due Licensor hereunder as a result of such limit remaining available for deduction from amounts due Licensor in future Contract Quarter for the infringing Net Sales in that particular country, subject to such [***] limit in each Contract Quarter). (d) Should a compulsory license be granted, or be the subject of a possible grant, to a third party under the applicable laws, rules, regulations, guidelines, or other directives of any Government in the Territory during under the Royalty Term applicable Patent Rights, the Party receiving notice thereof or otherwise becoming aware thereof shall promptly notify the other Party thereof including any material information concerning such compulsory license, and the total amount payable under Section 3.2(a) with respect to sales of Licensed Products in such country will be adjusted to match any lower amount such third party may be allowed to pay with respect to the sales of such Licensed Product Products in such country, which royalties shall be equal to [ ]* of with such Net Sales; provided, however, that, lower amount subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee further adjustments pursuant to Section 2.11.1 and Sections 3.2(c) above. (iiie) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable Subject to Net Sales any earlier termination of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* this Agreement, (Bamounts due under Section 32(a) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall only be made payable on a country-by-country and Licensed Product-by-Licensed Product basis and for Licensed Products that are made or sold in a particular country prior to the first date on which there are no Valid Claims of any Patent Right Covering such Product in such country, (such period for a particular Licensed Product in a particular country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made , the “Royalty Term” for such Product in accordance with the provisions of Article 5 hereof.such country)

Appears in 2 contracts

Samples: Patent License Agreement (Aeglea BioTherapeutics, Inc.), Patent License Agreement (Aeglea BioTherapeutics, Inc.)

Royalties. In consideration for Beginning with the rights and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales First Commercial Sale in any country of any given Licensed Product by LICENSEE or any of its Affiliates or Sublicensees, LICENSEE shall pay to LICENSOR royalties in any given accordance with the following schedule for Licensed Products sold by LICENSEE or its Affiliates and Sublicensees until the later to occur of (i) the expiration date of the last to expire of the Licensed Patents; or (ii) when a competitive generic product utilizing the Licensed Technology is marketed in the particular country in the Territory during Territory., LICENSEE will pay to LICENSOR the Royalty Term applicable to sales royalty specified below, for the manufacture, use, sale, import or offer for sale of such Licensed Product in the country where such countrymanufacture, which royalties shall be equal to [ ]* use, sale, import or offer for sale of such Net Sales; providedLicensed Product occurs, however, that, subject to infringe a Valid Claim of any Licensed Patent or violate an exclusive marketing right granted by any governmental agency in such country in the provisions absence of Sections 4.2, 4.3 and 4.4 below, if the License granted by Article 2 or a sublicense granted under Article 2: (i) Three percent (3%). (ii) For sales of Licensed Products by Sublicensees, ten percent (10%) of the total revenue received by LICENSEE, or any Affiliate of LICENSEE, from any other person or organization in the form of royalties, milestone payments or any other consideration (including the proportionate share of such non-cash consideration, for example and without limitation, stock, real property, and ownership interests) in respect of sublicense(s) granted by LICENSEE or any of its Affiliates under Article 2 (the “Sublicensee Revenue) in all countries in the Territory with the exception for Israel where LICENSOR shall receive eighteen percent (18%) of the Sublicensee Revenue. Notwithstanding the foregoing, in no event shall LICENSOR receive Sublicensee Revenue that is less cumulatively than the three percent (3%) royalty LICENSOR is entitled to if the sale had been made by LICENSEE to the Third Party. Additionally, regardless of LICENSEE’s sublicense to a Third Party, LICENSOR shall receive the Milestone Payments as set forth in Section 5.2 either from the LICENSOR or the Sublicensee; (iii) To the extent funds received by the LICENSEE or any Affiliate, from a Sublicensee or any other source are provided for and used for developing Licensed Products, such funds are not considered Sublicensee Revenue under Section 5.1(iii) and such funds shall not be subject to any royalty payment whatsoever to LICENSOR. Only one royalty under this Section 5.1 shall be due and payable to LICENSOR by LICENSEE in respect of the sale of any Licensed Product, regardless of the number of Valid Claims covering such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in or any given country in the Territory during the other considerations. Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 payments shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment within sixty (60) days after the end of royalties due to Ipsen pursuant to this Article 4 shall be made the Accounting Period in accordance with which the provisions of Article 5 hereofsale is made.

Appears in 2 contracts

Samples: Exclusive License Agreement (Intiva BioPharma Inc.), Exclusive License Agreement (Intiva BioPharma Inc.)

Royalties. In consideration for (a) ESPERION shall pay to INEX during the rights term of the licenses granted in Section 2.1 of this Agreement earned royalties at the rate set forth on Schedule A hereto on all Net Annual Sales in the Territory of Licensed Products by ESPERION, its Affiliates, and license granted Distributors. If a Licensed Product is made, used or sold by a Sublicensee in any part of the Territory, ESPERION shall pay to INEX the earned royalties on all Sublicensing Royalties as set out in Schedule A hereto. One royalty on either Licensed Patents or Know-How shall be due with respect to each sale of a Licensed Product; and under this Agreement, Licensee shall, subject no circumstance shall ESPERION be obligated to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen both royalties. (b) Royalties based upon Net Sales Licensed Products solely involving Know-How and not involving Licensed Patents shall be payable for a period of any given Licensed Product ten (10) years after the first sale in any given each such country in the Territory of Licensed Products. Upon the expiration of the royalty obligations set forth in subsection (a) above with respect to any Know-How in any country in the Territory, the licenses granted under Section 2. 1 (b) of this Agreement with respect to such Know-How in such country in the Territory shall become fully paid licenses. ESPERION may, upon such expiration, elect to continue in effect the exclusive nature of the license of any Know-How in any country in the Territory by continuing to pay to INEX fifty percent (50%) of the earned royalty specified on Schedule A hereto. Such exclusive license shall remain in effect so long as ESPERION pays such royalty; if and when such royalty payments are terminated, the license shall become a fully paid, non-exclusive license with respect to such Know-How in such country in the Territory. All royalty obligations under this paragraph 4. 1 (b) shall cease should information cease to be Know-How under the circumstances provided in Section 1.10. (c) For purposes of calculating royalties, in the event that a Licensed Product which is approved for commercial sale by an applicable regulatory authority includes both component(s) covered by a Valid Claim of a Licensed Patent (a "Patented Component") and a component which is diagnostically useable or therapeutically active alone or in a combination which does not require the Patented Component, and such component is not covered by a Valid Claim of a Licensed Patent (an "Unpatented Component"), then Net Annual Sales of the Combination Product shall be calculated using one of the following methods: (i) By multiplying the Net Annual Sales of the Combination Product during the Royalty Term applicable to royalty accounting period ("accounting period") by a fraction, the numerator of which is the aggregate gross selling price of the Patented Component(s) contained in the Combination Product if sold separately, and the denominator of which is the sum of the gross selling price of both the Patented Component(s) and the Unpatented Component(s) contained in the Combination Product if sold separately; or (ii) In the event that no such separate sales are made of such Licensed Product the Patented Component(s) or the Unpatented Component(s) during the applicable accounting period, or in such countrythe event that either the Patented Component(s) or the Unpatented Component(s) have not been sold separately for at least one (1) year, which Net Annual Sales for purposes of determining royalties payable hereunder shall be equal to [ ]* calculated by multiplying the Net Sales of such Net Salesthe Combination Product by a fraction, the numerator of which is the fully allocated production cost of the Patented Component(s) and the denominator of which is the sum of the fully allocated production costs of the Patented Component(s) and the Unpatented Component(s) contained in the Combination Product; provided, however, that, subject to that Net Annual Sales for purposes of determining such royalties shall not be less than fifty percent (50%) of the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Annual Sales of such Ipsen MC4 the Combination Product in any given country in for the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country accounting period, The fully allocated production costs shall be determined by using ESPERION's accounting procedures, which procedures must conform to generally accepted accounting procedures (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofGAAP).

Appears in 2 contracts

Samples: License Agreement (Esperion Therapeutics Inc/Mi), License Agreement (Esperion Therapeutics Inc/Mi)

Royalties. In consideration For royalties calculated according to Exhibit “A”, royalties are paid on Gross License Fees and are based on the type of license model and/or Collection through which Appointed Content, Syndicated Content and/or Direct Sales is actually licensed as specified in Exhibit “A”. “Gross License Fees” means (a) the amount charged by Xxxxx or a Distributor/Client to each of their Clients (or the amount charged by Xxxxx to certain of its Distributors for certain royalty free licenses, where applicable); (b) the rights and license granted under this Agreement, Licensee shall, subject amount recovered from a third party infringer in connection with a Claim or (c) the amount of revenue received from consumer products/services that is allocated to the provisions of Sections 4.2Appointed Content. In all cases, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties following deductions shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if made from Gross License Fees before royalties are calculated: any (i) such Licensed Product is an Ipsen MC4 Product that utilizes applicable VAT, duty, levy or impost of any nature required to be withheld, deducted or paid by Xxxxx from any current or future sums due to Producer by any law, regulation, or treaty (excluding: (a) any taxes on the Ipsen MC4 [ ]*, net profits of Xxxxx or any Distributor; and (b) any withholding taxes imposed on remittances to Xxxxx from countries outside of the United States); (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 unauthorized use detection/enforcement fees and expenses, if any; and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rightsshipping charges, then the royalty rate applicable to Net Sales insurance charges and service fees such as, for example, special formatting requests, printing/framing costs and technology delivery/access services, in all cases arising out of such Ipsen MC4 Product in or resulting from any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date license of the MC4 [ ]* Agreement, same Appointed Content (B“License Fee Deductions”). Xxxxx may deduct the following amounts from the Royalties payable to Producer (together the “Royalty Deductions”): (a) [ ]* if advances on earnings or royalties under any agreement with Xxxxx; (b) cancellations of a license where the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product original sale has been reported in a formulation consisting current or past sales report (“Sales Report”) including where due to a fraudulent transaction; (c) overpayment of the Ipsen MC4 [ ]* is used by Licensee Royalties in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) a prior Royalty period; and (Bd) amounts that may be deducted or withheld. Xxxxx will notify Producer of any Royalty Deductions in a Sales Report before deducting amounts from payments to Producer. Other than Royalties for Content that is applicable. For purposes improperly credited to Producer or any cancellations under (b), if Xxxxx has not notified Producer of clarificationany Royalty Deduction within 1 year after it has been incurred, Xxxxx waives the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant right to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofrecoup it.

Appears in 2 contracts

Samples: Producer Agreement, Producer Agreement

Royalties. In further consideration for of the rights and license granted to Akouos in this Agreement and subject to Sections 3.3.1, 3.4 and 3.5, Akouos shall pay to MEE, during each applicable Royalty Term, royalties at the applicable royalty rates set forth in Schedule C, based on the portion of annual worldwide Net Sales within each of the royalty tiers set forth in such Schedule C. For the avoidance of doubt, such royalties shall be payable in respect of annual worldwide Net Sales of each Licensed Product in the Field of Use recorded by Akouos, Affiliates and Sublicensees, including any Sublicensees having a Pass-Through Sublicense. In addition, in no event shall the mere manufacture of a Licensed Product without a sale or other transfer give rise to a royalty obligation. Notwithstanding anything to the contrary in this Agreement, the Parties agree that, unless and until Akouos obtains an exclusive commercial license from either BCH or its Affiliate (or otherwise under any applicable Inter-Institutional Agreement) for BCH’s jointly owned undivided half share of the applicable BCH Patent Rights (the “BCH Joint Share”), no royalties shall be due or payable under this Agreement in respect of sales of Licensed Products (i) in the Field of Use, where such Licensed Products are Covered by one or more Valid Claims of BCH Patent Rights but not by any Ancestral Technology Patent Rights or Ancestral Technology Know-How or (ii) outside the Field of Use. Once Akouos obtains under a definitive written agreement the BCH Joint Share of the applicable BCH Patent Rights, Akouos will thereafter be responsible to pay an additional royalty to MEE on the annual Net Sales of Licensed Products which meet the criteria set forth in clause (i) and/or clause (ii) above, during the applicable Royalty Term, such additional royalty to be in the same amount as the royalty to be paid to BCH under such definitive written agreement, and shall be in addition to the other royalty payments owed to MEE under this Section 3.3. For clarity, the BCH Joint Share and any related agreement which provides or grants the BCH Joint Share will not be considered to qualify as a Third Party License Agreement under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof.

Appears in 2 contracts

Samples: License Agreement (Akouos, Inc.), License Agreement (Akouos, Inc.)

Royalties. (a) In consideration for of the rights and license granted under this Agreementgrants made to EASi hereunder, Licensee shall, EASi agrees to pay to Extended royalty payments on EASi IR Products as follows: Aggregate Number of Royalty Units of EASi IR Products Sold per Unit ------------------------------ -------- [*] $[*] [*] $[*] [*] $[*] [*] $[*] [*] $[*] subject to the provisions remainder of Sections 4.2, 4.3 and 4.4 below, pay royalties this Section 2.10 (the "Earned Royalties"). No Earned Royalties shall be due or payable by EASi to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable Extended with respect to sales of such EASi IR Products by EASi to Extended. Notwithstanding the above, in the event Extended licenses any or all of the Licensed Product in such country, Technology for a fee or royalties which are less than the royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rightspayable hereunder, then the royalty rate applicable payable hereunder shall thereafter be reduced to Net Sales such lower fee or rate. (b) Within [*] ([*]) days after the end of such Ipsen MC4 Product in each calendar [*] with respect to which EASi owes Extended any given country in Earned Royalties, EASi shall furnish Extended with a statement, together with payment for any amount shown thereby to be due to Extended. The royalty statement shall be based upon unit sales of the Territory EASi IR Products during the Royalty Term calendar quarter then ended, and shall contain information sufficient to discern how the royalty payment, if any, was computed. (c) EASi agrees to keep all proper records and books of account and all proper entries therein relating to the manufacture and sale of EASi IR Products and the sublicensing of the Licensed Technology. Extended may, at Extended's expense, cause an audit to be made of the applicable records in order to sales of verify statements rendered hereunder. Any such Ipsen MC4 Product in such country audit shall be conducted only by a certified public accountant (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in other than on a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (Acontingency-fee bass) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * shall be conducted during regular [*] CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof.

Appears in 2 contracts

Samples: Sales, License and Noncompetition Agreement (Extended Systems Inc), Sales, License and Noncompetition Agreement (Extended Systems Inc)

Royalties. In consideration for Guardian acknowledges and agrees that it will pay Intermolecular: a. For products covered by any Project-Related Technology developed under one or more of: the rights and Task Order effective February 8, 2010, the Task Order effective Jul. 22, 2010, the Task Order effective Oct. 22, 2010, or the Task Order effective May 1, 2011 as amended on November 1, 2011 under the Wet Coater Master Agreement (“AR Task Orders”), i. If the license granted is exclusive, a royalty as defined in Exhibit 2 of this Agreement; or ii. If the license is non-exclusive, a royalty of [***] of Net Sales (as defined in Exhibit 2 of this Agreement). b. For any other Task Orders under this Agreement, Licensee shallthe royalties, subject duration of royalties and method of calculation for the royalties will be defined in the applicable Task Order. c. The Field for the AR Task Orders is defined in Section 5.7 of Amendment Number One. For all other Task Orders, the Field will be defined in the Task Order. d. Any royalties under this Agreement will go for [***] after Guardian's first commercial sale of products based on Project-Related Technology where the Project-Related Technology is covered by intellectual property that is owned or co-owned by Intermolecular, or as long as the unexpired term of at least one issued and valid patent that covers the relevant Project-Related Technology and is owned or co-owned by Intermolecular, whichever is longer, but in either case not to exceed [***] from the completion of the Task Order which gave rise to the provisions development of Sections 4.2, 4.3 and 4.4 below, pay royalties the relevant Project-Related Technology. e. Guardian will provide quarterly reports to Ipsen based upon Net Sales of any given Licensed Product in any given country in Intermolecular on the Territory during the Royalty Term applicable to sales of licensed products and will pay the applicable royalties on a quarterly basis. For any royalties that are due to Intermolecular, no later than [***] days after the end of each Guardian fiscal quarter, Guardian will issue Intermolecular a written report containing the number of licensed products shipped by or on behalf of Guardian and all applicable Guardian Affiliates to any Third Parties during such Licensed Product in such countryquarter and the corresponding royalty amount to be paid to Intermolecular, which royalties Guardian will make all applicable royalty payments at the same time as issuing the report. Each party shall be equal responsible for all of its own costs of commercializing products or licensing intellectual property rights, including any payments to [ ]* Third Parties for work done by such Third Parties or for licenses necessary for the manufacture, sale, or use of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing Products by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* party or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Productits Affiliates or sub-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereoflicensees.

Appears in 2 contracts

Samples: Research Agreement (Intermolecular Inc), Research Agreement (Intermolecular Inc)

Royalties. 5.1 In consideration for of the rights and license granted under this Agreement, the Licensee shallwill pay to UBC a royalty equal to [***]% of the Revenue. The Licensee’s obligation to pay royalties on the Revenue shall commence on the date of the first sale of a Product by the Licensee and shall continue, subject on a Product-by-Product basis, until the expiration (or invalidation or unenforceability, as the case may be) of the last Valid Claim within an issued Patent licensed under this Agreement covering the using or selling of such Product, after which time no royalties on the Revenue shall be due for the sale of such Product. 5.2 In consideration of the license granted under this Agreement, the Licensee will pay to UBC a royalty equal to [***]% of the Sublicensing Revenue. 5.3 If any product sold by the Licensee contains, in addition to one or more biomarkers licensed to the provisions Licensee under this Agreement, one or more royalty-bearing biomarkers licensed by the Licensee from one or more arm’s length third parties (other than from one of Sections 4.2its Sublicensees) or those biomarkers were developed independently by the Licensee (and only to the extent such biomarkers, 4.3 whether licensed from a third party or developed independently by the Licensee, increase the overall performance of the Product) (a “Multi-marker Product”), then the Revenue attributable to the biomarker licensed to the Licensee under this Agreement shall for the purposes of calculating the royalty payable in Article 5.1 be determined by multiplying the total Revenue received from the sale of the Multi-marker Product by the fraction A / (A + B), in which “A” is the number of biomarkers licensed to the Licensee under this Agreement, and 4.4 below“B” is the number of biomarkers licensed by the Licensee from one or more arm’s length third parties (other than from one of its sublicensees) or those biomarkers developed independently by the Licensee (but only to the extent such biomarkers increase the overall performance of the Product), pay royalties provided that the fraction shall never be less than [***]. [***]=CERTAIN CONFIDENTIAL INFORMATION OMITTED (a) If any product sold by the Licensee in any country is in the form of a Combination Product, the Revenue attributable to Ipsen based upon Net Sales the license under this Agreement from the sale of any given Licensed such Combination Product shall be adjusted down by multiplying the actual total Revenue from such Combination Product in any given such country by the fraction A / (A + B) where A is the average invoice price in such country of a Product containing the Territory during same amount of Product that is included in such Combination Product sold without the Royalty Term applicable to sales Non-Covered Components, when sold separately in such country, and B is the average invoice price of the Non- Covered Component(s) containing the same amount of such Licensed Non-Covered Component that is included in such Combination Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product when sold separately in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreementcountry. If, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis, either the Product is not sold without the Non-Covered Components and/or the Non- Covered Components are not sold separately, Revenue for the purpose of determining royalties of the Combination Product owed under this Agreement shall be reasonably determined in good faith based on the relative values of the Non-Covered Components and the Product components. (b) for the purposes of calculating the downward reduction, the fraction A / (A + B) shall never be less than [***]. 5.4 The royalty is due and payable within 30 days of each respective Royalty Due Date and is to be calculated with respect to the Revenue and the Sublicensing Revenue in the six month period immediately before the applicable Royalty Due Date. Payment For greater clarity it is confirmed that the [***]% royalty payable on Revenue under Article 5.1 will be calculated and payable by the Licensee on both Revenue received by the Licensee, and on a “reach through” basis on all Revenue received by any Affiliated Companies, and the Licensee shall require all Affiliated Companies to completely and accurately report all such Revenue, directly to UBC or through consolidated report by Licensee, at Licensee’s election. 5.5 All royalties paid by the Licensee to UBC under this Agreement will be in U.S. dollars without any reduction or deduction of royalties due any nature or kind at all except as specifically set forth in this Agreement. If the Licensee receives any Revenue or Sublicensing Revenue in a currency other than US dollars, the currency will be converted to Ipsen pursuant the equivalent in US dollars on the date that any amount is payable to UBC, at the rate of exchange set by the Bank of Canada for buying Canadian dollars with such currency. The amount of US dollars resulting from the conversion is to be included in Revenue or Sublicensing Revenue. 5.6 In addition to the above payments, the Licensee will pay to UBC milestone payments of (a) $[***] upon the first commercial sale (by the Licensee, any Affiliated Company or any Sublicensee) of the first Product; (b) $[***] once cumulative Revenue reaches $[***]; and (c) $[***] once cumulative Revenue reaches $[***]. For clarity: a) each milestone payment referred to in this Article 4 5.7 will be payable once only, regardless of how many Products achieve such milestone event; and b) for the purposes of calculating the $[***] and $[***] milestones, the cumulative Revenue from Multi- marker Products and Combination Products shall be made subject the reductions set out in accordance with the provisions of Article 5 hereof.Articles 5.3 and 5.4. [***]=CERTAIN CONFIDENTIAL INFORMATION OMITTED

Appears in 2 contracts

Samples: License Agreement (Decipher Biosciences, Inc.), License Agreement (Decipher Biosciences, Inc.)

Royalties. In consideration for the rights and license granted under this Agreement, Licensee shall, subject (a) Subject to the provisions of set forth below in Sections 4.29.5(b) through 9.5(j), 4.3 Section 9.6 and 4.4 belowSection 9.7, AstraZeneca shall pay royalties to Ipsen based upon Ardelyx, with respect to each Licensed Product, an incremental royalty on aggregate Annual Net Sales of each such Licensed Product made by AstraZeneca, its Affiliates, or its Sublicensees as follows: Portion of aggregate Annual Net Sales of relevant Licensed Product Royalty Rate >U.S. $[***] and £ U.S. $[***] [*** ] >U.S. $[***] and £ U.S. $[***] [*** ] >U.S. $[***] and £ U.S. $[***] [*** ] >U.S. $[***] and above [*** ] (b) The calculation of royalties under this Section 9.5 shall be conducted separately for each Licensed Product. Thus, if AstraZeneca sells more than one Licensed Product in the Territory, the thresholds and ceilings in section 9.5(a) shall apply separately to each Licensed Product. (c) Sales between AstraZeneca, its Affiliates and Sublicensees shall not be subject to royalties hereunder. Royalties shall be calculated on AstraZeneca’s, its Affiliates’ and Sublicensees’ sales of the Licensed Products to a Third Party, including Distributors (but excluding for the avoidance of doubt Sublicensees). Royalties shall be payable only once for any given batch of the Licensed Products. For the purpose of determining Net Sales, the Licensed Product shall be deemed to be sold when invoiced and a “sale” shall not include, and no royalties shall be payable on, transfers by AstraZeneca, its Affiliates or Sublicensees of free samples of Licensed Product or clinical trial materials, or other transfers or dispositions for charitable, promotional, pre-clinical, clinical, manufacturing, testing or qualification, regulatory or governmental purposes. (d) In the event that Ardelyx exercises the Co-Funding Option, the royalty rates set forth in Section 9.5(a) above shall, when the relevant Co-Funding Amount has been paid to AstraZeneca in its entirety by Ardelyx (failing which, no such increase shall apply), be increased by the number of percentage points set forth in the chart below, such increase to apply only to the royalties payable on Net Sales of the Licensed Product for which the Co-Funding Option was exercised. The increase shall apply to the royalties payable on Net Sales of such Licensed Product for all indications for which the relevant Licensed Product is sold. The increase shall be determined based upon the Co-Funding Amount committed and paid by Ardelyx for the relevant Licensed Product, as set forth below: Co-Funding Amount Percentage Point Increase in Royalty Rate U.S. $20,000,000 1% U.S. $30,000,000 2% U.S. $40,000,000 3% [***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. (e) If, at any time, in any particular country in the Territory, a given Licensed Product in any given country in [***], then, the Territory during the Royalty Term applicable to sales royalties that would otherwise have been payable on Net Sales of such Licensed Product in such country, which royalties country under this Agreement shall be equal to [ ]* reduced by [***] as from the first Calendar Quarter in which this Section 9.5(e) applies, and thereafter for so long as this Section 9.5(e) applies in such particular country. The calculation of such Net Sales; providedthe royalty reduction under this Section 9.5(e) shall be conducted separately for each Licensed Product in each country. (f) If, howeverat any time, thatin any particular country in the Territory, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) a Generic Product receives Regulatory Approval in such country and (ii) [***] decrease by more than [***] compared to the Calendar Quarter immediately preceding the first Calendar Quarter in which the Generic Product is sold, then, the royalties that would otherwise have been payable on Net Sales of such Licensed Product in such country under this Agreement shall be reduced by [***] as from the first Calendar Quarter in which this Section 9.5(f) applies and thereafter for so long as [***] in the Calendar Quarter immediately preceding the first Calendar Quarter in which the Generic Product is an Ipsen MC4 sold. The calculation of the royalty reduction under this Section 9.5(f) shall be conducted separately for each Licensed Product that utilizes in each country. (g) If, at any time, in any particular country in the Ipsen MC4 [ ]*Territory, a court or a governmental agency of competent jurisdiction requires AstraZeneca or its Affiliate or Sublicensee to grant a compulsory license to a Third Party permitting such Third Party to make and sell a Licensed Product in one or more countries in the Territory (iia “Compulsory License”), and the royalty rate for royalties payable to AstraZeneca, its Affiliate or Sublicensee on Net Sales (which term for the purpose of this Section 9.5(g) shall apply mutatis mutandis to sales by such grantee) of Licensed Products by or on behalf of such grantee of the Ipsen MC4 [ ]* was accepted in writing by Licensee Compulsory License is less than the royalty rate for royalties on Net Sales due to Ardelyx pursuant to this Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights9.5 in such country, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable for royalties due to sales of such Ipsen MC4 Product Ardelyx in such country shall be reduced to [***]. If AstraZeneca or its Affiliate receives any compensation (Aother than royalty payments) [ ]* if for the Ipsen MC4 [ ]* Compulsory License from the grantee of the Compulsory License, then [***] (but such compensation shall otherwise be disregarded for the purpose of calculating royalties due to Ardelyx hereunder, including for purposes of applying thresholds and ceilings). If AstraZeneca, its Affiliates or Sublicensees learn that a Third Party is delivered seeking a Compulsory License in any country in the Territory, AstraZeneca shall use Commercially Reasonable Efforts to oppose the granting of such Compulsory License. The royalty rate reduction set forth herein shall be effective as from the first Calendar Quarter in which this Section 9.5(g) applies and thereafter for so long as this Section 9.5(g) applies. The calculation of the royalty rate reduction under this Section 9.5(g) shall be conducted separately for each Licensed Product in each country. [***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. (h) Any reductions set forth in Sections 9.5(e), 9.5(f), 9.5(g) and 9.5(j) shall be applied in the order in which the event triggering such reduction occurs, provided that in no event shall, due to the cumulative reductions set out in Sections 9.5(e), 9.5(f), 9.5(g) and 9.5(j), the royalties that would otherwise have been payable to Ardelyx under this Section 9.5 in a particular Calendar Quarter be reduced by Ipsen to Licensee more than [***] of that which would be due pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement9.5(a), (Bas modified by Section 9.5(d) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen applicable. Credits not exhausted in any Calendar Quarter may however be carried into future Calendar Quarters, subject to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses sentence. (Ai) and (B) is applicable. For purposes of clarification, the determination of the amount of AstraZeneca’s obligation to pay royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to under this Section 4.1 9.5 shall be made on a Licensed Product-by-Licensed Product basis and commence on a country-by-country basis, with respect to each separate Licensed Product, on the date of the First Commercial Sale of such Licensed Product in such country and shall expire, on a country-by-country basis, with respect to such Licensed Product, at the latest of: (i) the [***] of the First Commercial Sale of such Licensed Product in such country (or, in the case of [***] of such Licensed Product in [***]), and (ii) the date on which there is no longer a Valid Claim covering the sale of such Licensed Product in such country. Payment At such time as AstraZeneca’s obligation to pay royalties under this Section 9.5 have terminated in a country, the license granted to AstraZeneca under Section 2.1 shall automatically, and without further action on the part of royalties due Ardelyx or AstraZeneca, become non-exclusive, fully-paid, irrevocable and perpetual with respect to Ipsen pursuant to this Article 4 such country and the Net Sales of such Licensed Product in such country shall be made excluded from royalty calculations under this Section 9.5 (including for purposes of applying thresholds and ceilings). (j) If (i) AstraZeneca, in accordance with its reasonable judgment, determines that it is required to obtain a license from any Third Party in order to avoid infringement of such Third Party’s Patent, (ii) such Patent covers or claims the provisions composition, use, or method of Article 5 hereofmanufacturing, or method of treatment, of a Licensed Compound in order to import, manufacture, use, or sell any Licensed Product, (iii) AstraZeneca does not have any other commercially reasonable alternatives available to avoid such infringement, and (iv) AstraZeneca is required to pay to such Third Party a royalty, milestone payments or other monetary compensation in consideration for the grant of such license (“Third Party Compensation”), then for the period during which AstraZeneca owes royalties to Ardelyx hereunder, the amounts that would otherwise have been payable as royalties to Ardelyx under this Agreement shall be reduced by [***].

Appears in 2 contracts

Samples: License Agreement (Ardelyx, Inc.), License Agreement (Ardelyx, Inc.)

Royalties. In consideration 6.1 For Licensed Products covered by Regents' Patent Rights, IntraBiotics shall pay to The Regents for sale of such Licensed Products in the rights Field sold by IntraBiotics or its Affiliates, an earned royalty of [ * ]. 6.2 The royalties payable pursuant to Paragraph 6.1 (and license granted not those payable under this AgreementParagraph 4.2) shall be reduced (but in no event to less than [ * ]) by amounts equal to [ * ] the sum of royalties, Licensee shallif any, subject payable to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties third parties with respect to Ipsen based upon Net Sales of any given Licensed Products, unless such third party royalties result from a combination package as described below, in which case no third party deductions shall be allowed hereunder. 6.3 For Licensed Products covered by Joint Patent Rights but not covered by Regents' Patent Rights, IntraBiotics shall pay to The Regents for sale of such Licensed Products in the Field sold by IntraBiotics or its Affiliates, an earned royalty of [ * ]. 6.4 In the event a Licensed Product is sold in any given country in a combination package with one or more other products not covered by Regents' Patent Rights or Joint Patent Rights, or is sold as part of a single product containing such other products, for purposes of calculating earned royalties on such package, Net Sales will be calculated by multiplying the Territory during the Royalty Term applicable to sales Net Sales of such package by the fraction A/(A+B), where A is the gross selling price of the Licensed Products when sold separately and B is the gross selling price of the other products(s) when sold separately. In no event will the Net Sales of the Licensed Product in such countrya combination package be less than the Net Sales of the Licensed Product when sold separately. In the event that the Licensed Products are sold in a combination package and there have been no separate sales of a Licensed Product but there have been separate sales of the other product(s) in the combination package, which Net Sales shall be the difference between the gross selling price of the combination package and that of the other product(s), irrespective of how IntraBiotics may invoice the selling price of such combination package. In the event that neither the Licensed Product nor the other product or products contained in a combination package have had separate sales, Net Sales will be calculated by multiplying the Net Sales of the combination product by the fraction A/(A+B), where A is the fully burdened manufacturing cost of the Licensed Product and B is the fully burdened manufacturing cost of other products contained in a combination package. 6.5 Paragraphs 1.1, 1.2, 1.3, 1.4 and 1.5 define Regents' Patent Rights, Joint Patent Rights, Licensed Products, Licensed Methods and the Field so that royalties shall be equal to payable on a country by country basis on products covered by pending patent applications and issued patents. If patents have not issued before the First Commercial Sale, earned royalties on the sale of Licensed Products shall accrue for seventeen (17) years or, when patent(s) are extended under the Drug Price Competition and Patent Term Restoration Act of 1984 or by other acts of law, for seventeen years plus the term of the extension. If patents have issued before the First Commercial Sale, earned royalties on the sale of Licensed Products shall accrue for [ ]* ] , respectively. The term of such Net Sales; provided, however, that, subject to earned royalties due The Regents on the provisions sale of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Products covered under Regents' Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country Rights shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarificationMARKED BY BRACKETS, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. HAS BEEN OMITTED PORTIONS AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER OF THE SECURITIES ACT OF 1933, AS AMENDED. independent of the term of earned royalties due Ipsen pursuant The Regents on the sale of Licensed Products covered under Joint Patent Rights. 6.6 Royalties accruing to this Section 4.1 The Regents shall be paid to The Regents on a quarterly basis. Each such payment will be for royalties which accrued within the most recently completed calendar quarter and payment shall be made by IntraBiotics within [ * ] of the end of such calendar quarter. 6.7 All monies due The Regents shall be payable in United States funds collectible in Los Angeles, California. When Licensed Products are sold for monies other than United States dollars, the earned royalties will first be determined in the foreign currency of the country in which such Licensed Products were sold and then converted into equivalent United States funds. The exchange rate will be that established by the Bank of America in San Francisco, California on the last day of the reporting period. 6.8 Any tax for the account of The Regents required to be withheld by IntraBiotics under the laws of any foreign country shall be promptly paid by IntraBiotics for and on behalf of The Regents to the appropriate governmental authority, and IntraBiotics shall use its best efforts to furnish The Regents with proof of payment of such tax. All payments made by IntraBiotics in fulfillment of The Regents' tax liability in any particular country shall be credited against earned royalties or fees due The Regents for that country. 6.9 If at any time legal restrictions prevent the prompt remittance of part or all royalties by IntraBiotics with respect to any country where a Licensed ProductProduct is sold, IntraBiotics shall have the right and option to make such payments by depositing the amount thereof in local currency to The Regents' account in a bank or other depository in such country. If after [ * ] of good-by-faith efforts by The Regents to recover the monies, the royalties still cannot be returned to the United States, and if IntraBiotics has been able to recover its revenues from Net Sales of Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 Products, IntraBiotics will be responsible for payment in the United States. 6.10 In the event that any patent or any claim thereof included within the Regents' Patent Rights or Joint Patent Rights shall be made held invalid or unenforceable in accordance with a final decision by a court of competent jurisdiction from which no appeal has or can be taken, all obligation to pay royalties based on such patent or claim or any claim patentably indistinct therefrom shall cease as of the provisions date of Article 5 hereofsuch final decision. IntraBiotics shall not, however, be relieved from paying any royalties that accrued before such decision or that are based on another patent or claim not involved in such decision. 6.11 In the event that no patents covering Licensed Products or Licensed Methods have issued in a country after six (6) years from the Effective Date, the royalty obligations under paragraph 6.1 and paragraph 6.3 shall cease in such country until such time as patents covering Licensed Products and Licensed Methods do issue, after which time The Regents shall notify IntraBiotics, and IntraBiotics' payment obligations shall be resumed as of the issue date of the patents.

Appears in 2 contracts

Samples: License Agreement (Intrabiotics Pharmaceuticals Inc /De), License Agreement (Intrabiotics Pharmaceuticals Inc /De)

Royalties. In consideration for Subject to the rights terms and license granted under conditions of this Agreement, Licensee shallcommencing on the Effective Date of this Agreement, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, NEWLINK shall pay CIHS royalties to Ipsen based upon on Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such countryProducts by NEWLINK, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 its Affiliates and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made Sublicensees on a country-by-country and Licensed Product-by-Licensed Product basis as follows: (a) In countries where the manufacture, use, sale, offer for sale, or import of Licensed Products would, but for the grant of the license under the Agreement, infringe a Valid Claim of the Licensed Patents, NEWLINK shall pay to CIHS a royalty on Net Sales of Licensed Products in such countries at a rate equal to [*] of annual Net Sales of Licensed Products. In the event that the manufacture, sale or use of any Licensed Product is not covered by a Valid Claim within the Licensed Patents in a country, then NEWLINK shall pay to CIHS a royalty with respect to Net Sales in such country of such Licensed Products by NEWLINK, its Affiliates and Sublicensees at a rate equal to [*]. (b) The royalty obligations of NEWLINK shall expire on a country-by-country basisand Licensed Product-by-Licensed Product basis upon the later of (i) the expiration of the last to expire Valid Claim within the Licensed Patents covering the Licensed Product in a country (such expiration to occur only after expiration of extensions of any nature to such patents which may be obtained under applicable statutes or regulations in the respective countries of the Territory, such as the Drug Price Competition and Patent Term Restoration Act of 1984 in the U.S.A., and similar patent extension laws in other countries), or (ii) until [*] following the first commercial sale of a Licensed Product in a country. Payment Following expiration of royalties due the royalty obligations for each Licensed Product in each country, NEWLINK shall retain a fully-paid, [*] license under the Licensed Technology to Ipsen pursuant to this Article 4 shall be made make, have made, use, sell, offer for sale, and import such Licensed Products in accordance with the provisions of Article 5 hereofsuch country.

Appears in 2 contracts

Samples: License Agreement (Newlink Genetics Corp), License Agreement (Newlink Genetics Corp)

Royalties. 5.1 In partial consideration for the rights and license licenses granted under hereunder by TI to LANSTAR during the period commencing on January 1, 1996 through the date of expiration or termination of this Agreement, Licensee shallLANSTAR shall pay to TI royalties, in United States dollars, at the rate of ten percent (10%) of NET SALES BILLED, for all DRAMs that are directly or indirectly: used, leased, sold, imported or otherwise disposed of by LANSTAR or any of its SUBSIDIARIES sublicensed hereunder, in any ROYALTY BEARING COUNTRY, and at the rate of five percent (5%) of NET SALES BILLED, for all SRAMs, ROMs, PROMs, EPROMs, FLASH EPROMS, or EEPROMs that are directly or indirectly: used, leased, sold, imported or otherwise disposed of by LANSTAR or any of its SUBSIDIARIES sublicensed hereunder, in any ROYALTY BEARING COUNTRY. 5.2 With respect to LICENSED PRODUCTS which are leased, sold or otherwise disposed of by LANSTAR in any ROYALTY FREE COUNTRY and which are not made totally or in substantial part in a ROYALTY BEARING COUNTRY, the following provisions shall apply: W subject to the provisions of Sections 4.2Article 5.2 (ii), 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties LICENSED PRODUCTS shall be equal presumed to [ ]* be indirectly used, 1. By way of such Net Salesexample, "made in substantial part" shall encompass the manufacture or partial manufacture of semiconductor wafers, or the process of assembly. 5.3 Royalties shall not be due from LANSTAR to TI, under Articles 5.1 through 5.2, for any LICENSED PRODUCTS (i) the manufacture, use, lease, importation, sale or other disposition of which is not licensed hereunder; (ii) which are supplied directly to TI or any of its SUBSIDIARIES; (iii) which are manufactured under the "have made" right of a third party licensed by TI; or (iv) obtained from a third party by LANSTAR pursuant to Article 3.4(b); provided, however, that, subject to in the provisions cases of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) and (iv), LANSTAR obtains from TI (in the Ipsen MC4 [ ]* is Covered case of (iii) and with respect to the period after the EFFECTIVE DATE: prior to such manufacture, use, lease, sale, or other disposition, by Ipsen MC4 [ ]* Patent Rights, then LANSTAR) written confirmation that such third party has a license from TI permitting such activities. 5.4 The parties acknowledge that the royalty rate applicable amounts and rates specified in Article 5.1 take into consideration the value of the licenses granted to Net Sales of such Ipsen MC4 Product TI in any given country in this Agreement, and the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country method for calculating royalties. 5.5 All royalty payments shall be made to TI in U.S. dollars by telegraphic transfer to TI's bank account at Nations Bank of Texas, Account 'No. 125 210 4040, Dallas, Texas, or to such other financial institution and account number as TI may designate in writing to LANSTAR. If LANSTAR fails to make such payments on or before the required dates, a supplemental royalty equal to one percent (A1%) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on paid by LANSTAR for each month, or part of a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 month, that such payment is late. 5.6 LICENSED PRODUCTS shall be made in accordance with the provisions deemed to be put into use, or sold, leased or otherwise disposed of, when billed by LANSTAR, or a SUBSIDIARY of Article 5 hereofLANSTAR sublicensed hereunder, to a third party, or upon use by LANSTAR or any of its SUBSIDIARIES sublicensed hereunder, whichever event occurs first. once royalty has been accounted for, for any LICENSED PRODUCT, no further royalty shall be payable thereon under this Agreement.

Appears in 2 contracts

Samples: License Agreement (Lanstar Semiconductor Inc), License Agreement (Lanstar Semiconductor Inc)

Royalties. In consideration If Connetics exercises its option under Section 4.1 then: (a) Connetics shall pay royalties to InterMune on all Net Sales of Licensed Protein Products by Connetics, its Affiliates and its Dermatology Sublicensees at the applicable royalty rate set forth in Section 8.3 of the Genentech License (as may be reduced pursuant to Section 8.4 of the Genentech License). (b) Royalty payments shall be made to InterMune quarterly within sixty (60) days following the end of each calendar quarter for which royalties are due. Each royalty payment shall be accompanied by a report summarizing the total Net Sales by Connetics, its Affiliates and its Dermatology Sublicensees during-the relevant three-month period, and the calculation of royalties, if any, due thereon pursuant to subsection (a) above. (c) Connetics, its Affiliates and its Dermatology Sublicensees hereunder shall keep full, true and accurate books of account containing all particulars which may be necessary for the rights purpose of showing Net Sales. Said books of account shall be kept at the principal place of business of Connetics, its Affiliates or its Dermatology Sublicensees, as the case may be. Said books and license granted the supporting data shall be open at all reasonable times, for three (3) years following the end of the calendar year to which they pertain (and access shall not be denied thereafter, if reasonably available), to the inspection of an independent public accountant retained by InterMune or Genentech and reasonably acceptable to Connetics (or its Affiliate or Dermatology Sublicensee) for the purpose of verifying Net Sales under this Agreement, Licensee shall, ; subject to the provisions of Sections 4.2subsection (e) below. (d) Connetics shall, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales within sixty (60) days after the end of any given each calendar quarter beginning with the quarter of the first commercial sale of a Licensed Protein Product in any given country the Dermatology Field in the Territory by Connetics, its Affiliates or its Dermatology Sublicensees, deliver to InterMune a true and accurate report, setting forth such particulars of the business conducted by Connetics, its Affiliates and its Dermatology Sublicensees during the Royalty Term applicable preceding quarter as are pertinent to sales of such Licensed Product in such country, which royalties an accounting for Net Sales and deductible expenses as permitted under the Genentech License. Such reports shall be equal to [ ]* of such Net Sales; provided, however, that, subject to include at least the provisions of Sections 4.2, 4.3 and 4.4 below, if following: (i) such the total gross sales of Licensed Product is an Ipsen MC4 Product Protein Products occurring during that utilizes the Ipsen MC4 [ ]*calendar quarter, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and allowable deductions therefrom, (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to total Net Sales of such Ipsen MC4 Product Licensed Protein Products occurring during that calendar quarter and (iv) the calculation of royalties, if any, due thereon pursuant to subsection (a) above. (e) At InterMune’s or Genentech’s request and expense, Connetics shall permit a certified public accountant selected by InterMune or Genentech and reasonably acceptable to Connetics to examine, not more than once in any given country in the Territory four consecutive calendar quarters during the Royalty Term applicable to term of this Agreement, but including one (1) post-termination audit, Connetics’ books of account and records of all sales of Licensed Protein Products by Connetics, its Affiliates and its Dermatology Sublicensees for the sole purpose of determining the correctness of the reports provided by Connetics under subsection (a) above. If such Ipsen MC4 Product accountant reasonably determines that the royalties owed by Connetics to InterMune under subsection (a) above have been, for any calendar year in total, understated by Connetics, Connetics shall immediately pay to InterMune all understated royalties, together with interest on such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after royalties from the date accrued at a rate of prime plus 2% and shall pay the reasonable costs of the MC4 [ ]* Agreement, (B) [ ]* examination if the Ipsen MC4 [ ]* is delivered Connetics has understated such royalties by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofmore than 5%.

Appears in 2 contracts

Samples: Assignment and Option Agreement (Horizon Pharma PLC), Assignment and Option Agreement (Vidara Therapeutics International LTD)

Royalties. In As consideration for the rights and license licenses granted under in Paragraphs 2.A (i) of this Agreement, Licensee shall, subject to LICENSEE shall [***]. In the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, event that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable with respect to Net Sales of such Ipsen MC4 Product in any given country Licensed Products in the Territory during Renal Field, LICENSEE is paying royalties to unaffiliated third parties and the Royalty Term applicable total royalties, including those payable to sales RUSH hereunder, exceed 5 percent (5%) of such Ipsen MC4 Product in such country Net Sales, the amount due and payable to RUSH hereunder shall be proportionally reduced, but in no event shall the royalty payable to RUSH be less than [***] of Net Sales. (AFor example, if [***]. As partial consideration for the licenses granted in Paragraph 2.A.(i) [ and 2.A.(iii) of this Agreement, LICENSEE shall pay RUSH a Royalty equal to [***] of Net Sales of Licensed Products in the Non-renal Field and for diagnosis in the field of cancer by LICENSEE. In the event that, with respect to Net Sales of Licensed Products in the Non-renal Field and for diagnosis in the field of cancer, LICENSEE is paying royalties to unaffiliated third parties and the total royalties, including those payable to RUSH hereunder, [***] of Net Sales, the amount due and payable to RUSH hereunder shall be proportionally reduced, but in no event shall the royalty payable to RUSH be less than [***] of Net Sales. As partial consideration for the licenses granted in Paragraph 2.A(i) and 2.A(iii) of this Agreement, LICENSEE shall pay to RUSH the following milestone payments: [***]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee . No royalties shall be owing on any Licensed Products produced for or under any United States government agency contract pursuant to the reservation of rights referenced in Section 2.11.1 within [ ]* after the date 2.C. of the MC4 [ ]* this Agreement, (B) [ ]* if but only to the Ipsen MC4 [ ]* extent that LICENSEE can show that the United States government received a discount on Licensed Product sales, which discount is delivered by Ipsen equivalent to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of greater than the amount of royalties * CONFIDENTIAL TREATMENT REQUESTEDany such royalty that would otherwise be due. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 Any safes for United States government purposes shall be made reported under this Agreement by providing: (1) a United States government contract number; (2) identification of the United States government agency; and (3) a description as to how the benefit of the royalty-free sale was passed on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofUnited States government.

Appears in 2 contracts

Samples: License Agreement (NantKwest, Inc.), License Agreement (Conkwest, Inc.)

Royalties. 4.01 In consideration for of the licenses and rights and license granted to Licensee by Sisvel under this Agreement, Licensee shallshall pay: (a) a non-refundable, non-recoupable sum of Three Thousand Euros (3,000.00 €) as an entrance fee; and (b) a royalty as specified in the royalty schedule under Section 4.02 for each Licensed Product. 4.02 The royalty shall be based on the number of Licensed Products Manufactured, used, imported, offered for Sale, Sold, or otherwise disposed of by Licensee and Affiliates during each calendar year. The royalty rates payable for each Licensed Product shall be the Royalty Rates according to the schedule set out below: 4.03 If Licensee or any Affiliates purchase Licensed Products from a third party that is licensed by Sisvel or all the DVB-S2X Patent Owners to Manufacture and Sell Licensed Products under the DVB- S2X Essential Patent Claims, and such third party (i) has timely fulfilled its royalty payment obligations under such license(s) for all such Licensed Products, and (ii) has provided Sisvel with a written declaration, subject to written approval by Sisvel, stating that it will be responsible for paying the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of for such Licensed Product Products prior to such Licensed Products being purchased from that third party by Licensee, then Licensee shall have no royalty obligation under this Agreement for such Licensed Products purchased from such third party. If Licensee Sells Licensed Products to a third party that is licensed by Sisvel or all the DVB-S2X Patent Owners to Manufacture and Sell Licensed Products under the DVB-S2X Essential Patent Claims, Licensee shall have the royalty payment obligation under this Agreement for such Licensed Products Sold to such third party, unless: (x) the third party is a licensee in good standing of Sisvel and has fulfilled all its royalty payment obligations under such country, which royalties shall be equal license at the time Licensee Sells such Licensed Products to [ ]* of such Net Salesthe third party; provided, however, that(y) the third party provides Sisvel with a written declaration, subject to written approval by Xxxxxx, stating that it will be responsible for paying the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) royalties for such Licensed Product is an Ipsen MC4 Product Products prior to such Licensed Products being Sold to that utilizes the Ipsen MC4 [ ]*, third party by Licensee; and (iiz) the Ipsen MC4 [ ]* was accepted in writing by third party timely pays royalties on such Licensed Products to Sisvel. The Licensed Products for which Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the has no royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant payment obligation according to this Section 4.1 shall 4.03 will not be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties considered when calculating the royalty due by Licensee according to Ipsen pursuant Section 4.02, but they need to this Article 4 shall be made listed in accordance with the provisions of Article 5 hereof.royalty statements as per Section

Appears in 2 contracts

Samples: Patent Portfolio License Agreement, Patent Portfolio License Agreement

Royalties. In consideration AMICUS shall pay to UMBC [***] of NET SALES as a running royalty for all LICENSED PRODUCTS sold by AMICUS, its AFFILIATED COMPANIES, and SUBLICENSEES during the rights and license granted under term of this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]provided [*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * **] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED PORTIONS MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 24b-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 19331934, AS AMENDED. AMICUS THERAPEUTICS, INC. Exclusive License Agreement however, AMICUS, its AFFILIATED COMPANIES, and SUBLICENSEES shall pay a [***] of NET SALES during the term of this agreement when a LICENSED PRODUCT is a DERIVED PRODUCT. Should AMICUS be required to license patent rights from a third party other than those already licensed by AMICUS from New York University's Mt. Sinai School of Medicine (i.e. allowed U.S. patent applications 09/604,053 and 09/948,348, pending U.S. patent application 10/172,604, entitled "A Method For Enhancing Mutant Enzyme Activity In Gaucher Disease," and any continuations, divisionals, and reissues thereof) to sell a LICENSED PRODUCT, AMICUS shall be entitled to credit [***] of any royalties payable under said third party license against the royalties due Ipsen pursuant to this Section 4.1 UMBC for such LICENSED PRODUCT, provided however, in any case, the royalty rate payable to UMBC shall not be reduced below [***]. Royalty payments shall be made quarterly on either a Licensed Productcalendar or fiscal quarterly schedule, at AMICUS' election, provided said quarterly schedule is reasonably consistent during the term of this Agreement. All non-by-Licensed Product basis US taxes related to the sales of LICENSED PRODUCTS shall be paid by AMICUS and on a country-by-country basis. Payment of royalties shall not be deducted from any royalty or other payments due to Ipsen pursuant to this Article 4 UMBC. In the event any LICENSED PRODUCT shall be made sold by AMICUS or an AFFILIATED COMPANY to an AFFILIATED COMPANY, or any person, corporation, firm or association with which AMICUS or an AFFILIATED COMPANY has any agreement, understanding or arrangement with respect to consideration (such as, among other things, an option to purchase stock or actual stock ownership, or an arrangement involving division of profits or special rebates or allowances), the royalties to be paid hereunder for any such LICENSED PRODUCT shall be based upon the greater of: 1) the net selling price at which the purchaser of LICENSED PRODUCTS resells such products to the end user, 2) the fair market value of the LICENSED PRODUCT which shall be determined based on the sales price of similar products or services sold in accordance with the provisions market, as applicable, or as may be mutually agreed by the parties, or 3) the net selling price of Article 5 hereof.LICENSED PRODUCTS paid to AMICUS or an AFFILIATED COMPANY. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. AMICUS THERAPEUTICS, INC. Exclusive License Agreement

Appears in 2 contracts

Samples: License Agreement (Amicus Therapeutics Inc), License Agreement (Amicus Therapeutics Inc)

Royalties. In consideration for the rights and license granted under this AgreementOn a Product-by-Product basis, Licensee shall, subject Rhythm shall pay to Camurus royalties (“Royalties”) equal to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon percentages on the below annual Net Sales of any given Licensed Product in any given country in the Territory during as described below. For the Royalty Term applicable to sales portion of such Licensed aggregate annual Net Sales of Product in such country, which royalties shall be equal to of less than [ ]* of such Net Sales; provided, however, that, subject to in the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 Territory [ ]*, (ii) % For the Ipsen MC4 portion of aggregate annual Net Sales of Product equal to or greater than [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 less than [ ]* is Covered by Ipsen MC4 in the Territory [ ]*% For the portion of aggregate annual Net Sales of Product equal to or greater than [ ]* Patent Rights, then and less than [ ]* in the royalty rate applicable to Territory [ ]*% For the portion of aggregate annual Net Sales of such Ipsen MC4 Product in any given country equal to or greater than [ ]* in the Territory during [ ]*% Royalties shall be payable for a time period calculated on a Product-by-Product and country-by-country basis in respect of the Royalty Term applicable licenses granted to sales Rhythm by Camurus hereunder beginning on the First Commercial Sale of such Ipsen MC4 Product in such country shall be and ending on the later of (Aa) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of such First Commercial Sale of such Product in such country and (b) the MC4 expiration of the last to expire Valid Claim covering such Product within (i) Camurus Platform Patents or (ii) Patent Rights claiming Collaboration Inventions, in such country. The period during which Royalties are payable in respect of a Product in any country is referred to as the “Royalty Term”. Notwithstanding the foregoing, royalty rates shall be reduced by [ ]* Agreement*% with respect to sales of a Product in any country of the Territory during the Royalty Term if the sale, manufacture or use of the Product in such country is not covered by any Valid Claim within (B1) the Camurus Platform Patents or (2) Patent Rights covering Collaboration Inventions and in each case there is a Generic Product sold in such country. In no event may the Royalties set forth first above in this Section 5.3 be reduced by more than [ ]* if the Ipsen MC4 [ ]* is delivered *% by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date application of the MC4 [ ]* Agreement and such Ipsen MC4 Product one or more royalty reduction provisions in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofAgreement.

Appears in 2 contracts

Samples: License Agreement (Rhythm Pharmaceuticals, Inc.), License Agreement (Rhythm Pharmaceuticals, Inc.)

Royalties. In consideration If this Agreement is terminated in its entirety or with respect to one or more Products, other than by RevMed pursuant to Section 12.2(b) (Termination for Material Breach) or 12.2(c) (Termination for Insolvency), RevMed shall pay to Sanofi on a Product-by-Product basis royalties on sales of terminated Products (such Products, which for the rights purpose of clarity shall not include any Non-SHP2 Product, hereinafter referred to as “Termination Products”), calculated based on worldwide Net Sales (as such term is applied mutatis mutandis to RevMed and license granted under including sales in the U.S.) by RevMed and its Affiliates and Sublicensees of such Termination Products as follows: [***]. RevMed shall pay Sanofi such royalties until the earlier of (x) expiration of the Post-Termination Royalty Term therefor and (y) a Change of Control of Sanofi. Upon any termination of this Agreement, Licensee shallRevMed shall pay to Sanofi any amounts owed to Third Parties under license agreements to which Sanofi is a party that grant Sanofi a license under such Third Party’s Patent Rights or Know-How that is sublicensed to RevMed pursuant to Section 12.3(c)(ii)A, unless RevMed declines in writing to obtain such sublicense. “Post-Termination Royalty Term” means: (I) with respect to a particular country and a particular Termination Product that is the subject to of the provisions royalty obligations under Section 12.3(c)(ii)B(1), the period of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based time commencing upon Net Sales the First Commercial Sale of any given Licensed such Termination Product in any given such country in (by RevMed or its Affiliates or sublicensees) and ending upon the Territory during latest of (a) the Royalty Term applicable date on which there is no Valid Claim (as such term is applied mutatis mutandis to sales Sanofi Sole Program Patents) of a Sanofi Sole Program Patent that would be infringed by the sale of such Licensed Termination Product in such country; (b) the expiration of any Regulatory Exclusivity granted with respect to such Termination Product in such country[***] and (II) with respect to a particular country and a particular Termination Product that is subject of the royalty obligations under Section 12.3(c)(ii)B(2) or Section 12.3(c)(ii)B(3), which royalties shall be equal to [ ]* the period of time commencing upon the First Commercial Sale of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Termination Product in such country shall be (Aby RevMed or its Affiliates or sublicensees) [ ]* if and ending upon the Ipsen MC4 [ ]* is delivered by Ipsen latest of (a) the expiration of any Regulatory Exclusivity granted with respect to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Termination Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) such country; and (Bb) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof[***].

Appears in 2 contracts

Samples: Collaborative Research, Development and Commercialization Agreement (Revolution Medicines, Inc.), Collaborative Research, Development and Commercialization Agreement (Revolution Medicines, Inc.)

Royalties. In consideration (a) ANAPTYS will pay MRC royalties as follows: (i) Licensed Methods (ii) Licensed Products for the rights and license granted therapeutic or prophylactic uses in humans or animals [*] (iii) Licensed Products for non-therapeutic uses: [*] (b) All royalties payable under this Agreement, Licensee shall, Section 4.3 shall be subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which following conditions: (i) No multiple royalties shall be equal to [ ]* owed because the use or sale of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such any Licensed Product or Licensed Methods is an Ipsen MC4 covered by more than one valid and unexpired claim contained in the Patent Rights. For clarification, royalties shall only be owed either for a Licensed Product that utilizes or Licensed Method and solely based upon one of the Ipsen MC4 [ ]*, following sections: 4.3(a)(i) or 4.3(a)(ii) or 4.3(a)(iii) above. (ii) If ANAPTYS, its affiliate or its Sublicensee is required to obtain a license or patent rights from one or more independent third parties in order to make, have made, use, have used, sell, have sold, offer for sale, import or have imported Licensed Products or Licensed Methods without infringement of such patents, and if the Ipsen MC4 [ total royalty burden (including royalties payable to MRC) for such Licensed Products or Licensed Methods exceeds, [*]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Licensed Product or Licensed Method by ANAPTYS, its affiliates and its Sublicensees payable to MRC shall be adjusted as follows: (1) For Licensed Products for therapeutic or prophylactic uses in any given country humans or animals, the royalty rate applicable to Net Sales of such Licensed Product shall be adjusted to the rate determined by [*]. (2) For Licensed Products for non-therapeutic uses, the royalty rate applicable to Net Sales of such Licensed Product shall be adjusted to the rate determined by [*]. (3) For Licensed Methods, the royalty rate applicable to Net Sales of such Licensed Method for the first [*] years following the First Commercial Service Activity shall be adjusted to the rate determined by [*]. (4) For Licensed Methods, the royalty rate applicable to Net Sales of such Licensed Method after the end of the [*] year of First Commercial Service Activity as below shall be adjusted to the rate determined by [*]; provided that (i) in the Territory during case of any royalty due on services using Licensed Methods [*], and (ii) any royalty due on services using Licensed Methods, [*]. In no event, however, shall the Royalty Term applicable royalty rate payable to sales MRC for any Licensed Product, or Licensed Method be reduced by greater than [*]% of the royalty rate otherwise due to the MRC under this provision. (iii) In the case of any combination product, Net Sales for such Combination Product shall be calculated by multiplying actual Net Sales of such Ipsen MC4 combination product by the fraction A/(A+B) where A is the invoice price of the Licensed Product if sold separately, and B is the total invoice price of the other active ingredient or ingredients in the combination product, if sold separately. If neither the Licensed Product nor the other active ingredient(s) are sold separately, the Parties shall determine Net Sales for such country shall combination product by mutual agreement based on the relative contribution of the Licensed Product and each other active ingredient to the combination product. (iv) In the event that any patent or claim thereof included within the Patent Rights is held invalid in a final decision by a court of competent jurisdiction and last resort and from which no appeal has or can be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen taken, or has been pending for more than [*] years without issuance, then all obligation to Licensee pursuant to Section 2.11.1 within [ ]* after pay royalties based on that patent or claim or any claim patentably indistinct there from will cease as of the date of the MC4 [ ]* Agreementfinal decision or [*] year anniversary. ANAPTYS will not, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at however, be relieved from paying any time after the [ ]* following the date of the MC4 [ ]* Agreement and royalties that accrued before such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* final decision or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofanniversary.

Appears in 2 contracts

Samples: License Agreement (Anaptysbio Inc), License Agreement (Anaptysbio Inc)

Royalties. In consideration for of CFFT’s payments and licenses to PTI hereunder, PTI shall pay to CFFT the rights following royalties, which shall be payable as set forth hereinafter in this Section 4.2: 4.2.1. a royalty equal to four (4) times the amount of the Award (the “Royalty Cap”), such royalty to be paid by PTI to CFFT in as follows: (a) within [***] of First Commercial Sale, an amount equal to [***]; and (b) an amount equal to the Royalty Cap minus [***] in two (2) equal installments paid within [***] of the first and license granted under this Agreementsecond anniversaries of First Commercial Sale. provided that, Licensee shall, the royalty payments pursuant to Section 4.2.1(b) above shall not exceed [***] of Net Sales in the year preceding any year in which a payment is due; any excess of [***] of Net Sales shall be carried over to the following year(s) and added to the payments otherwise due subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during aforementioned [***] limitation until the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ Cap is fully offset; CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. 4.2.2. due Ipsen pursuant an additional royalty payment payable within [***] after [***] of First Commercial Sale equal to this Section 4.1 [***] if aggregate Net Sales of the Product in the Field exceed [***] in the first [***] after First Commercial Sale; 4.2.3. an additional royalty payment payable within [***] after the [***] of First Commercial Sale equal to [***] if aggregate Net Sales of the Product in the Field exceed [***] by the [***] of First Commercial Sale; and 4.2.4. [***] of any amount PTI receives in connection with the license, sale, or other transfer to a Third Party of rights in the Research Plan Technology other than a Change of Control (a “Disposition Royalty”), provided, however, that the Disposition Royalty shall not exceed and shall be made on credited against the Royalty Cap. PTI shall notify CFFT promptly of any transaction that would cause the payment of a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofDisposition Royalty.

Appears in 2 contracts

Samples: Research, Development and Commercialization Agreement, Research, Development and Commercialization Agreement (Proteostasis Therapeutics, Inc.)

Royalties. In 4.5.1 As further consideration for the rights License and license granted subject to [****] provided for under the STTA (as such terms are restated in pertinent part below in Section 4.5.2 of this Agreement), on a Product-by-Product basis and until the later of: (a) the expiration of the last to expire Valid Claim covering such Product; or (b) [****] after the First Commercial Sale of such Product (“Royalty Term”), Licensee shallshall pay to Penn a non-refundable, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon [****] royalty on all Net Sales of Product as set forth in Exhibit B attached hereto (“Royalty”). 4.5.2 [****] 4.5.3 Notwithstanding anything in this Section 4.5, in the event that Penn or Licensee receives a request for a Compulsory License anywhere in the world, it shall promptly notify the other Party. If any given Licensed Product Third Party obtains a Compulsory License in any given country in country, then Penn or Licensee (whoever has first notice) shall promptly notify the Territory during other Party. Thereafter, as of the Royalty Term applicable to sales of date the Third Party obtained such Licensed Product Compulsory License in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable payable under this Section 4.5 to Penn for Net Sales in such country will be adjusted to equal any lower royalty rate granted to such Third Party for such country with respect to the Sales of such Ipsen MC4 Product in therein. 4.5.4 If, after the Effective Date, Licensee determines upon the advice of outside intellectual property counsel that a license to Patent Rights from a Third Party is reasonably necessary to research, develop, make have made, use, sell, offer for sale, commercialize or import a Product, Licensee may obtain such a license to such Patent Rights from such Third Party and Licensee may deduct from any given country in the Territory during the Royalty Term applicable royalty payments due to Penn hereunder an amount equal to [****] of any royalty paid by Licensee to such Third Party on sales of a particular Product; provided that in no event will the deduction under this Section reduce any Royalty payment in respect of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination more than [****] of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTEDotherwise payable hereunder. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to In no event shall royalty reductions under this Section 4.1 4.5.3 reduce the royalty owed to Penn under Section 4.5.1 to less than [****]. 4.5.5 Licensee must pay Royalties owed to Penn on a calendar quarter basis on or before the following dates: (a) [****] for any Sales that took place on or before the last day of the calendar quarter ending [****]; (b) [****] for any Sales that took place on or before the last day of the calendar quarter ending [****]; (c) [****] for any Sales that took place on or before the last day of the calendar quarter ending [****]; and (d) [****] for any Sales that took place on or before the last day of the calendar quarter ending [****]. 4.5.6 Licensee shall pay to Penn the minimum annual royalties (“Minimum Annual Royalty”) provided in Exhibit B attached hereto during each of the following calendar years after the year in which the First Commercial Sale occurred in any country. Licensee will pay the Minimum Annual Royalty on [****] of each calendar year it is due, provided that the Minimum Annual Royalty paid for a calendar year shall be made on a Licensed Product-by-Licensed [****]. 4.5.7 With respect to any Product basis that is covered solely by part (d), and on a country-by-country basis. Payment not by parts (a) through (c), of royalties due to Ipsen pursuant to this Article 4 the definition of Product (Section 1.24), the Royalty payable for such Product shall be made [****] of the Royalty that would otherwise be payable in accordance with the provisions of Article 5 hereofterms set forth above.

Appears in 2 contracts

Samples: License Agreement (Cabaletta Bio, Inc.), License Agreement (Cabaletta Bio, Inc.)

Royalties. In 9.1 During the term of this Agreement, the Licensee agrees to pay to the Licensor a royalty of (i) four percent (4%) of Licensee's gross selling price with respect to each Licensed Product, parts therefor or manuals relating thereto sold by the Licensee, up to Five Million Dollars ($5,000,000.00) annually, and (ii) two percent (2%) of such gross selling price in excess of Five Million Dollars ($5,000,000.00) annually, provided, however, that no royalty payment shall be paid or required with respect to Licensed Products, parts or manuals sold by Licensee to Licensor. 9.2 The Licensee agrees to pay to the Licensor a minimum royalty with respect to each year during the term of this Agreement as follows: 9.2.1 No minimum royalty shall be due with respect to the first year of the term of this Agreement; 9.2.2 The amount of Twenty-Five Thousand Dollars ($25,000) shall be due and payable as a minimum annual royalty; and, unless the percentage royalties above shall exceed such amount, shall be paid on the tenth day following the second year of this Agreement; and 9.2.3 The amount of Fifty Thousand Dollars ($50,000) shall be due and payable as a minimum annual royalty, and, unless the percentage royalties above shall exceed such amount, shall be paid on the tenth day following the third and each successive year of this Agreement. 9.2.4 The minimum annual royalty shall only be due and payable if and to the extent that the percentage royalties provided under this Agreement do not equal the applicable minimum annual royalty due hereunder. 9.3 Subject to payment of the minimum royalty set forth in Section 9.2 above, the Licensor's right to receive payment of the royalty shall accrue when such Licensed Product, or part or manual therefor, shall have been shipped by the Licensee and payment or other consideration for is received therefor. 9.4 For the rights and license granted purpose of computing royalties under this Agreement, Licensee's "gross selling price" shall be (1) Licensee's gross invoice price, without deductions, for Licensed Products and parts and manuals therefor as packed for shipment, exclusive of transportation costs, taxes, duties and other miscellaneous changes paid by the Licensee, regardless of whether subsequently reimbursed by the customer. 9.5 In addition to the royalties provided for above, the Licensee shall, subject upon execution of this Agreement, receive from the Licensor one hundred thousand (100,000) shares of the common stock of the Licensee and, further, upon the commencement of sales of the Licensed Product by the Licensee, the Licensee shall issue and deliver to the provisions Licensor shares of Sections 4.2, 4.3 and 4.4 below, pay royalties common stock of the Licensee with a value upon issuance of One Hundred Thousand (100,000). The shares of common stock of the Licensee to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject transferred to the provisions Licensor hereunder shall, upon delivery to the Licensor, be fully paid and non-assessable. The Licensee has a single class of Sections 4.2authorized and issued capital stock, 4.3 being the common stock described herein. Excepting the common stock, and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant warrants and options to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date purchase or acquire common stock of the MC4 [ ]* AgreementLicensee, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date there are no other securities, classes of capital stock, rights or preferences of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* existing or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofoutstanding.

Appears in 1 contract

Samples: Patent License Agreement (Majestic Safe-T-Products LTD)

Royalties. In consideration for the rights (a) Provided that Employer and license granted under this AgreementEmployee are not in material default hereunder, Licensee shallCompany shall pay to Employer, subject to the provisions in respect of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country top-line LPs consisting entirely of Masters produced hereunder and sold by Company or its licensees for distribution through Normal Retail Channels in the Territory during United States, a basic royalty computed at four percent (4%) (the "Basic Rate") of the applicable Royalty Term applicable Base Price with respect to sales the Record concerned, it being agreed that such royalties will be computed and paid in accordance with all other provisions herein. With respect to each top-line LP consisting entirely of Masters produced hereunder, the following escalations shall apply: should the Net Sales through Normal Retail Channels in the United States ("USNRC Net Sales") of such Licensed Product in such countryLP exceed 250,000 units, which royalties the Basic Rate shall be equal to [ ]* four and one-half percent (4-1/2%) for USNRC Net Sales between 250,001 and 500,000 units of such Net SalesLP; provided, however, that, subject to should the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to USNRC Net Sales of such Ipsen MC4 Product LP exceed 500,000 units, the Basic Rate shall be five percent (5%) for USNRC Net Sales between 500,001 and 1,000,000 units of such LP; and should the USNRC Net Sales of such LP exceed 1,000,000 units, the Basic Rate shall be five and one-half percent (5-1/2%) for USNRC Net Sales in any given country excess of 1,000,000 units of such LP. (b) Royalty rates payable to Employer in respect of Net Sales of Records other than top-line LPs sold by Company or its licensees for distribution through Normal Retail Channels in the Territory during United States shall bear the Royalty Term applicable same respective proportions to the Basic Rate (determined without regard to escalations) that the royalty rates payable to Artist with respect to such sales bear to the royalty rate payable to Artist on the first Net Sale of such Ipsen MC4 Product in such country a top-line LP pursuant to the recording agreement between Company and the Artist (the "Artist Agreement"). (c) All royalties hereunder shall be subject to the same proportionate reductions, deductions and configurational, territorial, category and other variations (Abut not escalations) [ ]* if contained in the Ipsen MC4 [ ]* is delivered by Ipsen applicable Artist Agreement. Royalties shall be computed and prorated, paid and not paid, in all respects in the same manner, upon the same bases, at the same times and (notwithstanding paragraph 8 below) subject to Licensee the same applicable definitions as Company computes the royalties payable to the Artist pursuant to Section 2.11.1 within [ ]* after the date applicable Artist Agreement. (d) The royalty with respect to any Master produced hereunder for which Company utilizes the services of other producers shall be multiplied by a fraction, the MC4 [ ]* Agreement, numerator of which is one (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A1) and the denominator of which is the total number of producers (Bincluding Employee) is applicableutilized on such Master. For purposes Company will utilize the services of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant other producers with respect to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due Masters produced by Employee only with Employer's prior consent. (e) The royalty with respect to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof.Records that embody Masters other

Appears in 1 contract

Samples: Music Producer's Agreement (N2k Inc)

Royalties. In (a) As partial consideration for the grant by Halo-Bio to Protiva of the licenses and other rights hereunder and license granted under subject to the terms of this Agreement, Licensee shallProtiva will pay to Halo-Bio, subject to the provisions of Sections 4.2without duplication, 4.3 and 4.4 below, pay royalties to Ipsen based upon on Net Sales of any given Licensed Product by Protiva, its Affiliates or their Sublicensees, in any given country the Territory, as follows: (i) for all Products sold in the Territory during where the Royalty Term applicable Product is Covered by a Licensed Patent solely owned by Halo-Bio or jointly owned by Halo-Bio with Protiva or its Affiliate, either in the country of manufacture or the country of sale, the following royalty rates apply: [*] [*] [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to sales the omitted portions. [*] [ *] [*] [ *] and (ii) for all Products sold in the Territory where the Product is only Covered by a Licensed Patent jointly owned by Halo-Bio with any Person (and not Covered by a Licensed Patent solely owned by Halo-Bio or jointly owned by Halo-Bio with Protiva or its Affiliate), either in the country of manufacture or the country of sale, the following royalty rates apply: [*] [ *] [*] [ *] where such royalties shall accrue until the date of expiration of the last Valid Claim within the Licensed Patents Covering the Product in such countrythe country of manufacture or sale, which as applicable. (b) No multiple royalties shall be equal to [ ]* due or payable under this Section 3.5 because the sale or manufacture of such any Product is or shall be Covered by more than one Valid Claim under the Licensed Patents in the country of manufacture and/or the country of sale. (c) Royalties on Net SalesSales shall be payable on a Product-by-Product basis regardless of the number of Targets with which each Product interacts; provided, however, thatfor purposes of this Section 3.5, subject Products shall be considered the same Product if their intended Target(s) remains the same, even though changes have been made to the provisions Product, including, for example, any changes in or additions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country Multivalent RNAs or Other API contained in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof.

Appears in 1 contract

Samples: License and Collaboration Agreement (TEKMIRA PHARMACEUTICALS Corp)

Royalties. (a) In consideration for the rights and license granted to LICENSEE under this AgreementSection 3.1(b), Licensee LICENSEE, on a Product-by-Product and country-by-country basis shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable for such Product, pay to AGTC a royalty on Net Sales of (a) [***] plus (b) all royalties, if any, payable to the Existing Licensors pursuant to the Existing License Agreements as a result of Net Sales hereunder; provided that, in any case, the royalties due hereunder shall not exceed [***] of Net Sales. (b) Following expiration of the Royalty Term for any Product in a country, no further royalties shall be payable in respect of sales of such Licensed Product in such countrycountry and, which royalties shall be equal thereafter the license granted to [ ]* of LICENSEE under Section 3.1(b) with respect to such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be a fully paid-up, perpetual, exclusive, irrevocable, royalty-free license. (Ac) [ ]* if Any obligation to pay royalties under this Agreement shall be imposed only once with respect to any sale of any Product. (d) Subject to the Ipsen MC4 [ ]* is delivered provisions of Section 5.4(a), AGTC shall be solely responsible for all obligations (including any royalty or other obligations that relate to the [***] Manufacturing Technology) under the Existing License Agreements and any other agreements with Third Parties that are in effect as of the Effective Date. Solely to the extent that LICENSEE elects to take a sublicense under Section 8.7(b)(i) under any license to Third Party IP Rights that AGTC or any of its Affiliates enters into during the Term, LICENSEE shall be responsible for any payment obligations under the applicable AGTC Third Party Agreements arising out of the Development, Manufacture, Commercialization or use of any Product, provided that any upfront payments under such AGTC Third Party Agreements shall be allocated equitably by Ipsen AGTC in good faith and proportionately among the applicable Products and other relevant programs of AGTC and its Affiliates. AGTC shall be solely responsible for all other obligations under any such AGTC Third Party Agreements. Notwithstanding anything to Licensee the contrary, in the event that LICENSEE obtains a direct license from any licensor under an AGTC Third Party Agreement upon termination of such AGTC Third Party Agreement pursuant to Section 2.11.1 within [ ]* after the date 13.6, then, if AGTC had been paying all amounts due under such AGTC Third Party Agreement prior to such termination, any payments otherwise payable to AGTC under Section 5.4(a) with respect to a Product shall be reduced by [***] of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen payments paid to Licensee Third Parties pursuant to Section 2.11.1 at any time after such Third Party licenses arising out of and directly attributable to the [ ]* following the date Development, Manufacture, Commercialization or use of the MC4 [ ]* Agreement and such Ipsen MC4 Product without any limitation described in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on 5.4. (e) On a country-by-country and Product-by-Product basis. Payment , any royalty otherwise payable to AGTC under this Agreement with respect to Net Sales of royalties due to Ipsen pursuant to this Article 4 such Product in such country shall be made reduced by [***] at any time when (a) there is no Valid Claim included in accordance the [***] Manufacturing Patent Rights in such country that Covers the Manufacture of such Product and (b) there is no Orphan Drug Exclusivity, or Orphan Drug Exclusivity has terminated, with respect to such Product in such country. (f) In the provisions event that the Royalty Term for any Product extends beyond the [***] anniversary of Article 5 hereofthe First Commercial Sale of such Product solely because the Manufacture of such Product is Covered by a Valid Claim of an [***] Manufacturing Patent Right Controlled by AGTC under an AGTC Third Party Agreement that AGTC enters into during the Term, then, for the remainder of the Royalty Term, any royalty payments otherwise payable to AGTC under this Agreement with respect to such Product shall be reduced to an amount equal to [***]. Notwithstanding anything to the contrary, this Section 5.4(f) shall not apply in the event that the Manufacture of such Product is Covered by a Valid Claim of an [***] Manufacturing Patent Right Controlled by AGTC under an AGTC Third Party Agreement that AGTC enters into during the Term, but for which AGTC provided all or substantially all of the funding that contributed to the invention Covered by such Valid Claim.

Appears in 1 contract

Samples: Manufacturing License and Technology Transfer Agreement (Applied Genetic Technologies Corp)

Royalties. In consideration for 6.1 Subject always to Licensor's material compliance with its obligations and warranties hereunder Licensee shall pay to Licensor in the rights and license granted under this Agreement, Currency royalties based on Net Receipts less Cost of Manufacture in respect of all Products Exploited by Licensee shall, subject to the provisions or any of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country its Affiliates in the Territory during the Royalty Term applicable at the rates specified in Schedule VI ("Royalties"). 6.2 Notwithstanding anything herein to sales the contrary Licensee shall be unconditionally entitled to recoup all instalments of such Licensed Product the Advance paid by it to Licensor pursuant to Clause 5.1 against the Royalties (if any) payable by Licensee to Licensor pursuant to Clause 6.1 in such countryrespect of Exploitation of Wallace and Gromit Properties. For the avoidance of doubt, which adxxxxxx paid in respect of a specific Property shall not be recoupable from Royalties due in relation to a different Property. 6.3 Licensee shall be entitled to recoup all Advances paid to Licensor hereunder against the Royalties (if any) payable to Licensor hereunder as specified in Clause 6. 1. For the avoidance of doubt Licensee shall not be entitled to recoup any Advance more than once. 6.4 Notwithstanding anything herein to the contrary, Licensee shall not be obliged to pay any Royalties to Licensor in respect of Products (a) used free of charge for bona fide promotional purposes, or (b) furnished free to the trade, press or for public relations use, or (c) sold as a Clearance Sale Devices, or (d) lost, stolen, damaged or destroyed. 6.5 Licensee shall pay to Licensor in accordance with Clause 7(a) [*] of any advance of or on account of royalties or any good or valuable consideration credited to or received by Licensee or any of its Affiliates for the grant of a sublicence in whole or in part of any Interactive Entertainment Right, and (b) sublicence royalties calculated in accordance with Clause 6.6. 6.6 Sublicence royalties shall be calculated on the basis of sublicensees' reports to or receipts by Licensee or its Affiliates, Exploitation reported by sublicensees being treated as Net Receipts for this purpose (whether or not actually received by Licensee). In the event that the value or quantity of units Exploited cannot be determined from such sublicensees' reports, it shall be assumed for the purpose of royalty calculations that the Net Receipts attributable to the Exploitation of a Product are equal to [ ]* the mean of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if that (iexcluding returns) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing reported by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered for sales of Product of that format by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales Licensee or any of such Ipsen MC4 Product in any given country its Affiliates in the Territory during the Royalty Term applicable to sales of most recent prior period in which such Ipsen MC4 Product in such country Exploitation has taken place and Licensee's royalty statement shall be (Awhere applicable) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to state what assumption has been made. 6.7 Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of may recoup the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen any portion of a sublicence advance paid to Licensor pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of Clause 6.5 from sublicence royalties due to Ipsen Licensor under Clause 6.5 pursuant to this Article 4 that sublicence and/or in respect of the Property or Product to which the sub-licence relates but not otherwise. 6.8 Notwithstanding anything herein to the contrary:- ------------------ [*] Confidential portion omitted and filed separately with the Commission. 6.8.1 no consideration for its grant of the rights granted hereunder to Licensee and Grantor shall be made payable to Licensor hereunder other than the Advances and (to the extent applicable) the Warrants and the Royalties , which Licensor acknowledges shall constitute a full and final discharge of Licensee's obligations to it hereunder; 6.8.2 Except by way of cross-collateralisation of Royalties and Advances between different Licensed Properties Licensee shall be entitled to pay any Advance, Royalty or other sum payable to Licensor hereunder subject to any set-off, deduction or counter-claim by Licensee and/or Grantor against Licensor under the Agreement; and 6.8.3 in accordance the event of any material breach of the Agreement or Insolvency by Licensor Licensee and Grantor shall be entitled without liability and without prejudice to their other remedies hereunder to suspend the payment to Licensor of any Advance and/or Royalty and the grant to Licensor of any Warrant that would otherwise have been payable or grantable (as the case may be) to Licensor provided that any such suspension shall be effective only for so long as Licensor's breach has not been remedied. 6.9 Licensee shall have the right to establish reserves (not to exceed [*] of Net Receipts) for returns and defective Products. Unused reserves shall be liquidated within 12 (twelve) months of being established if not applied to returns and defective Products. 6.10 To the extent that Licensee receives Net Receipts in a currency other than the Currency, such Receipts shall for the purpose of calculating Royalties be converted to the Currency at the rate prevailing for the purchase of the Currency with such other currency as designated by Licensee's bankers on the provisions of Article 5 hereofdate when the Receipt is first received by the Licensee.

Appears in 1 contract

Samples: Licence and Option Agreement (Bam Entertainment Inc)

Royalties. In consideration (a) NOVARTIS shall pay a royalty on NET SALES of ROYALTY BEARING PRODUCTS sold or distributed by NOVARTIS or its AFFILIATES or any of their licensees, distributors, or co-marketers that is sufficient to pay LOXO's royalty obligations to BTI and NOVARTIS, provided that the total royalty paid by NOVARTIS to LOXO under this Section 5.1(a) and under Section 5.1(b) shall not exceed [**] percent ([**]%) of such NET SALES of ROYALTY BEARING PRODUCT; (b) To the extent that royalties and milestones are [**] with respect to a XENOGRAFT PRODUCT [**] or any of [**]s, LOXO [**] such royalties and milestones [**]. The payments required by the Section 4.1(b) shall be made [**] prior to the date on which royalties and milestones are due [**] and shall be [**] that will enable [**] obligations [**]. (c) NOVARTIS agrees that it will not artificially discount the price of ROYALTY BEARING PRODUCTS for the rights purpose of promoting sales or increasing the price of EXCLUDED PRODUCTS. (d) In the event that ROYALTY BEARING PRODUCTS are sold in combination with EXCLUDED PRODUCTS, for the purpose of calculating royalties due on ROYALTY BEARING PRODUCTS, the PARTIES shall mutually agree to an allocation of the NET SALES of the combination between ROYALTY BEARING PRODUCTS and license granted under this AgreementEXCLUDED PRODUCTS. If the PARTIES do not mutually agree, Licensee shall, subject either PARTY may submit the issue to the provisions of Sections 4.2, 4.3 and 4.4 below, binding arbitration in accordance with Appendix C. 5.2. NOVARTIS' obligation to pay royalties to Ipsen based upon Net Sales under Section 5.1 shall continue on a country-for-country basis and ROYALTY BEARING PRODUCT by ROYALTY BEARING PRODUCT basis beginning on the EFFECTIVE DATE of any given Licensed Product this Agreement and ending ten (10) years after the first commercial sale of each ROYALTY BEARING PRODUCT in any given a country when generally available in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, thatthat if the manufacture, subject to use or sale of ROYALTY BEARING PRODUCT is covered by a granted LOXO PATENT after the provisions expiration of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rightsperiod, then the royalty rate applicable obligation to Net Sales pay royalties thereon shall continue until such ROYALTY BEARING PRODUCT is no longer covered by such granted LOXO PATENT. 5.3. NOVARTIS shall keep, and shall cause each of such Ipsen MC4 Product in any given country in its AFFILIATES and licensees distributors and co-marketers to keep, full and accurate books of account containing all particulars that may be necessary for the Territory during the Royalty Term applicable purpose of calculating all royalties payable to sales LOXO. Such books of such Ipsen MC4 Product in such country account shall be (A) [ ]* if kept at their principal places of business and, with all necessary supporting data, shall, during normal business hours be open for inspection by an independent certified accountant reasonably acceptable to NOVARTIS upon reasonable notice and no more than once a calendar year for the Ipsen MC4 [ ]* is delivered by Ipsen sole purpose of verifying and auditing royalty statements or compliance with this Agreement. Such accountant shall report to Licensee pursuant LOXO only as to Section 2.11.1 within [ ]* after the date accuracy of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen royalty calculation and as to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTEDany under- or over-payment. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 LOXO shall be made on responsible for the costs of any such verification and audit, except that NOVARTIS shall be responsible for the costs of any such audit in the event that as a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment result of such verification and/or audit royalties due and payable to Ipsen pursuant LOXO are determined in any calendar quarter to this Article 4 exceed by five percent (5%) those actually paid by NOVARTIS. If the report indicates an underpayment, NOVARTIS shall pay to LOXO the amount of such underpayment within thirty (30) days of receiving notice thereof. 5.4. With quarterly payments, NOVARTIS shall deliver to LOXO a full and accurate accounting to include at least the following information: (a) Quantity of each ROYALTY BEARING PRODUCT subject to royalty sold (by country) by NOVARTIS and its AFFILIATES and their licensees, co-marketers and distributors: (b) Total receipts for each ROYALTY BEARING PRODUCT subject to royalty (by country); (c) An accounting for amounts deductible, if any, against total overall receipts in calculating total overall NET SALES; and (d) Total royalties payable to LOXO. NOVARTIS shall provide any other information reasonably requested by LOXO to determine the calculation and amount of royalties. 5.5. In each year the amount of royalty due shall be calculated quarterly as of March 31, June 30, September 30 and December 31 and shall be paid quarterly within the thirty (30) days next following such date, every such payment shall be supported by the accounting prescribed in Section 5.4 and shall be made in Swiss Francs. Whenever for the purpose of calculating royalties conversion from any foreign currency shall be required, all amounts will first be calculated in the currency of sale and then converted into Swiss Francs using as rates of exchange NOVARTIS exchange rates which are established by NOVARTIS in the ordinary course of business monthly on the basis of an average of rates during each month from external unaffiliated banks which will then, for those royalties to be paid directly to BTI under paragraphs 5.1(b) above, be converted into United States Dollars, using as the rate of exchange reported in the WALL STREET JOURNAL, Eastern edition, on the last business day of the calendar quarter to which the payment relates. 5.6. Any tax required to be withheld by NOVARTIS under the laws of any foreign country for the account of LOXO, shall be promptly paid by NOVARTIS for and on behalf of LOXO to the appropriate governmental authority, and NOVARTIS shall furnish LOXO with proof of payment of such tax. Any such tax actually paid on LOXO's behalf shall be deducted from royalty payments due LOXO. 5.7. In the event that NOVARTIS is prohibited in any country by applicable law from paying royalties for any portion of the term required by Section 5.2, then NOVARTIS shall not be obligated to pay such royalty for such portion provided that the party receiving the royalty is notified in writing and that NOVARTIS shall negotiate an amendment so that LOXO receives essentially the same economic benefit as if the royalty was paid for the full term. If the PARTIES do not reach agreement within ninety (90) days after such notification, either PARTY may submit the issue to binding arbitration in accordance with the provisions of Article 5 hereof.Appendix C.

Appears in 1 contract

Samples: Shareholder Agreement (Biotransplant Inc)

Royalties. In consideration for the rights and license granted under this Agreement, Licensee shall, subject (a) Rates; Royalty Term. Subject to the provisions other terms of Sections 4.2this Section 8.4.2, 4.3 and 4.4 belowwith respect to each Licensed Product, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable for such Licensed Product, each Payor shall pay Payee for the benefit of AlCana and UBC (as set forth in Section 8.4.4 below) royalties of (i) [**] percent ([**]%) of Net Sales by such Payor and its Related Parties with respect to sales each Licensed Product sold during the Royalty Term covered by a Valid Claim of a UBC Controlled Patent Right and (ii) [**] percent ([**]%) of Net Sales by such Payor and its Related Parties with respect to each Licensed Product sold during the Royalty Term covered by a Pending Claim of a UBC Controlled Patent Right. Notwithstanding anything in this Agreement to the contrary, if a Licensed Product is (x) covered by an Issued Claim of a UBC Controlled Patent Right in a country, or (y) the manufacture of such Licensed Product is covered by an Issued Claim of a UBC Controlled Patent Right in the country or countries of manufacture, in each case at the time of such First Commercial Sale in such country, then even if there is no Outstanding Claim of a UBC Controlled Patent Right covering such Licensed Product in either such country or the country or countries of manufacture, the Royalty Term for such Licensed Product shall not terminate until twelve (12) years from the date of First Commercial Sale of such Licensed Product in such country, which royalties country and the royalty rate set forth in Section 8.4.2(a)(ii) above shall be equal apply to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* after expiration of all Valid Claims of UBC Controlled Patent Rights, then the royalty rate applicable to Net Sales of Rights covering such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Licensed Product in such country shall be (A) [ ]* if and the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date country or countries of manufacture. For clarity, examples of the MC4 [ ]* Agreement, (Bapplication of this Section 8.4.2(a) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date are set forth in Exhibit G. After expiration of the MC4 [ ]* Agreement and Royalty Term for such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarificationLicensed Product, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant Licenses with respect to this Section 4.1 shall be made on a Licensed Product-by-such Licensed Product basis shall become fully paid and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofperpetual.

Appears in 1 contract

Samples: Sponsored Research Agreement

Royalties. In consideration for the rights and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, shall pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be MIPS a nonrefundable royalty equal to [ ]* [†] of such the Net Sales; Revenue for each unit of a Licensee Chip shipped by Licensee to Licensee's customer for which royalty has accrued in accordance with the Master Agreement and pursuant to this Technology Schedule (provided, however, thatthat the royalty paid for each unit of a Licensee Chip shall in no event be less than the minimum royalty per MIPS Core set forth below), subject to which royalty shall vary depending upon the provisions cumulative volume of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing Licensee Chips shipped by Licensee as described in the chart below: [†] Information redacted pursuant to Section 2.11.1 a confidential treatment request by Wintegra, Inc. under 17 CFR §§ 200.80(b)(4) and 230.406 and submitted separately with the Securities and Exchange Commission. Product Volume Units (iiiin Units of Licensee Chips Shipped) Minimum Royalty Per MIPS Core (“Floor”) MIPS64 5Kc [†] [†] [†] [†] [†] [†] provided, however, that no royalty shall accrue on Licensee Chips in which the Ipsen MC4 [ ]* Licensed MIPS Core under this Technology Schedule has been disabled by Licensee using hardware, such that the Licensed MIPS Core is Covered not operable and cannot be made operable by Ipsen MC4 [ ]* Patent RightsLicensee or any third party; but provided further, then the royalty rate applicable to Net Sales of however, that for any and all such Ipsen MC4 Product Licensee Chips, Licensee shall use different and clearly distinguished names and numbers, and Licensee shall in addition include in any given country in the Territory during the Royalty Term royalty reports or other applicable reports provided to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to MIPS under Section 2.11.1 within [ ]* after the date 5 of the MC4 [ ]* Master Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (Avolume, part name(s) and (B) is applicable. For purposes of clarification, the determination of the amount of all other relevant information for such Licensee Chips reasonably sufficient to enable MIPS to track and audit license fees under Paragraph 6.1 and 6.2 and royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to under this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis Paragraph 7 for any and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofall Licensee Chips.

Appears in 1 contract

Samples: Master Technology License Agreement (Wintegra Inc)

Royalties. In a. On a Program Licence by Program Licence basis, in partial consideration for of the rights and license granted under this Agreementgrant of that particular Program Licence, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term Autolus shall pay to UCLB a royalty on Net Sales of the applicable to sales Royalty Product supplied by Autolus or its Sub-Licensees or any Assignee Entity within the applicable field under that Program Licence within the Territory, such royalty calculated as the percentage value of such Licensed Product in such country, which royalties shall be equal to [ ]* of such the Net Sales; provided, however, that, Sales at the following rates subject to the terms and conditions of this Agreement, and in particular the remaining provisions of Sections 4.2, 4.3 this Clause 14 (individually per Royalty Product a “Royalty” and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes collectively the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to “Royalties”): 42 Net Sales of such Ipsen MC4 BCMA Products within the BCMA Field [***] Net Sales of [***] Product in any given country in within the Territory during Field (with effect from grant of the [***] Licence) [***] Net Sales of GD2 Products within the Field [***] Net Sales of Logic Gate Products within the Field [***] Net Sales of NSG Products within the Field [***] Net Sales of RQR8 Product within the Field [***] Net Sales of TRBC1/2 Products within the Field [***] Net Sales of ZipCAR Products within the Field [***] Net Sales of ccCAR Products within the Field [***] Net Sales of Epitope Tag Products within the Field [***] Net Sales of iCAR Products within the Field [***] Net Sales of RapaiCASP9 Products within the Field [***] Net Sales of Retrostim Products within the Field [***] Net Sales of TetCAR Products within the Field [***] Net Sales of ZAP-CAR Products within the Field [***] Net Sales of CAT19 1st Gen Product within the Field [***] Net Sales of CAT19 CNS Product within the Field [***] Net Sales of CAT19 Binder Product within the Field [***] Net Sales of TRBC2 Dx Products within the Field [***] b. Subject to Clause 14.4, only one Royalty Rate shall be payable per Royalty Product and the Royalty Term applicable to sales of such Ipsen MC4 payable on a Royalty Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date calculated only once and payable only once. c. The Royalty Rate in respect of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 a Royalty Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 set out above shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made adjusted, as applicable, in accordance with the provisions of Article 5 hereofClause 14.4 to 14.10, and the order of reduction or adjustment in the Royalty Rate or Royalty due shall be applied sequentially in the order of those remaining clauses.

Appears in 1 contract

Samples: Licence Agreement (Autolus Therapeutics PLC)

Royalties. In consideration for the rights and license granted under this Agreement4.1 With respect to Licensed Products manufactured or sold by Licensee in a country in which such manufacture or sale is covered by a Valid Claim of a Licensed Patent, Licensee shall, subject agrees to the provisions pay Caltech [***] of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in Licensed Products wherein the Territory during Licensed Products are instruments or apparatus directly used for the Royalty Term applicable to sales reading and/or analysis of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date data from other Licensed Products, including microfluidic chips that are Licensed Products, and [***] of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date Net Sales of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used Licensed Products by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarificationfor all such other Licensed Products, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933including microfluidic chips that are Licensed Products, AS AMENDED. Royalties due Ipsen pursuant to under this Section 4.1 shall be made payable on a country-by-country and Licensed Product-by-Licensed Product basis until the expiration of the last-to-expire issued Valid Claim covering such Licensed Product in such country. 4.2 With respect to Licensed Products manufactured or sold by Sublicensees in a country in which such manufacture or sale is covered by a Valid Claim of a Licensed Patent, Licensee agrees to pay Caltech [***] of the revenues received by Licensee from Sublicensees’ Net Sales of such Licensed Products wherein the Licensed Products are instruments or apparatus directly used for the reading and/or analysis of data from other Licensed Products, including microfluidic chips that are Licensed Products, and [***] of the revenues received by Licensee from Sublicensees’ Net Sales of Licensed Products for all such other Licensed Products, including microfluidic chips that are Licensed Products. Royalties due under this Section 4.2 shall be payable on a country-by-country basisand Licensed Product-by-Licensed Product basis until the expiration of the last-to-expire issued Valid Claim covering such Licensed Product in such country. 4.3 With respect to Licensed Products manufactured or sold by Licensee in a country in which such manufacture or sale is not covered by Valid Claim of a Licensed Patent but the Technology is utilized, Licensee agrees to pay Caltech [***] of Net Sales of such Licensed Products by Licensee, wherein the Licensed Products are instruments or [***] Information has been omitted and filed separately with the Securities and Exchange Commission. Payment Confidential treatment has been requested with respect to the omitted portions. Confidential Treatment Requested by Fluidigm Corporation apparatus directly used for the reading and/or analysis of data from other Licensed Products, including microfluidic chips that are Licensed Products, and [***] of Net Sales of Licensed Products by Licensee for all such other Licensed Products, including microfluidic chips that are Licensed Products. Royalties due under this Section 4.3 shall be payable on a country-by-country and Licensed Product-by-Licensed Product basis for a period of [***] years from the Effective Date or the issuance of a U.S. patent that covers the Licensed Product, whichever first occurs. 4.4 With respect to Licensed Products manufactured or sold by Sublicensees in a country in which such manufacture or sale is not covered by a Valid Claim of a Licensed Patent but the Technology is utilized, Licensee agrees to pay Caltech [***] of the revenues received by Licensee from Sublicensees’ Net Sales of such Licensed Products wherein the Licensed Products are instruments or apparatus directly used for the reading and/or analysis of data from other Licensed Products, including microfluidic chips that are Licensed Products, and [***] of the revenues received by Licensee from Sublicensees’ Net Sales of Licensed Products for all such other Licensed Products, including microfluidic chips that are Licensed Products. Royalties due under this Section 4.4 shall be payable on a country-by-country and Licensed Product-by-Licensed Product basis for a period of [***] years from the Effective Date or the issuance of a U.S. patent that covers the Licensed Product, whichever first occurs. 4.5 Notwithstanding the above, it is understood and agreed that Caltech shall not be entitled to any share of amounts received by Licensee for equity, debt, pilot studies, to support research or development activities to be undertaken by Licensee, research and development or other performance based milestones, the achievement by Licensee or Sublicensee of specified milestones or benchmarks relating to the development of Licensed Products, the license or sublicense of any intellectual property other than the Licensed Patents, reimbursement for patent or other expenses, or with respect to products other than Licensed Products. 4.6 In the event that a Licensed Product is sold in combination with one or more other products or other items that are not Licensed Products, Net Sales for such combination products will be reasonably calculated on a country-by-country and Licensed Product-by-Licensed - 7 - [***] Information has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. Confidential Treatment Requested by Fluidigm Corporation Product basis by Licensee by multiplying the Net Sales of that combination by a fraction equal to the relative value of the combination attributable to the Licensed Product, in relation to the relative value of the combination, as reasonably determined by Licensee in good faith. In addition, in the event that a Licensed Product is not sold in combination with one or more other products or other items that are not Licensed Products, but instead comprises multiple components, some of which would constitute a Licensed Product if sold separately (each, a “Licensed Component”), and the others would not constitute a Licensed Product if sold separately, then Net Sales for such Licensed Product will be calculated by multiplying the Net Sales of such Licensed Product by the fraction A/B, where A is the gross selling price of the Licensed Component sold separately and B is the gross selling price of such Licensed Product. If no such separate sales are made by Licensee, its Affiliate or Sublicensee, Net Sales for such Licensed Product shall be calculated by multiplying Net Sales of such Licensed Product by the fraction C/(C+D), where C is the fully allocated cost of the Licensed Component and D is the fully allocated cost of the other components. 4.7 Commencing on January 1, 2004, and continuing for each anniversary thereof during the term of this Agreement, if Licensee has not paid, during the preceding calendar year, a minimum of [***] in royalties under Sections 4.1, 4.2, 4.3, and 4.4, Licensee agrees to pay, on or before March 1 of that calendar year, an additional royalty for the prior calendar year equal to the difference between [***] and any lower amount paid under Sections 4.1, 4.2, 4.3, and 4.4 for the prior calendar year. 4.8 In the event Licensee or Sublicensee becomes obligated to pay amounts to a third party with respect to a Licensed Product for patent rights of a third party, Licensee may deduct [***] of the amounts owing to such third party (prior to reductions) from the amount owing to Caltech for such Licensed Product; provided, however, the amounts otherwise due to Ipsen Caltech shall not be so reduced by more than [***]. 4.9 For the purpose of determining royalties payable under this Agreement, any royalties or other revenues Licensee receives from Sublicensees in currencies other than U.S. dollars and any Net Sales denominated in currencies other than U.S. dollars shall be converted [***] Information has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. Confidential Treatment Requested by Fluidigm Corporation into U.S. dollars according to Licensee’s reasonable standard internal conversion procedures, including Licensee’s standard internal rates and conversion schedule. 4.10 No more than one royalty payment shall be due with respect to a sale of a particular Licensed Product. No multiple royalties shall be payable because any Licensed Product, or its manufacture, sale or use is covered by more than one Valid Claim in a given country. No royalty shall be payable under this Article 4 with respect to Licensed Products distributed for use in research and/or development or as promotional samples or otherwise distributed without charge to third parties. 4.11 Any sublicenses granted by Licensee, including, without limitation, any nonexclusive sublicenses, shall remain in effect in the event this license terminates pursuant to Article 12; provided, the financial obligations of each Sublicensee to Caltech shall be limited to the amounts Licensee shall be obligated to pay Caltech for the activities of such Sublicensee pursuant to this Agreement. 4.12 Royalties due under this Article 4 shall be made payable on a country-by-country and Licensed Product-by-Licensed Product basis until the expiration of the last-to-expire issued Valid Claim covering such Licensed Product in accordance with such country, if the manufacture or sale of such Licensed Product was at the time of the first commercial sale in such country covered by a Valid Claim. Otherwise, royalties due under this Article 4 shall be payable on a country-by-country and Licensed Product-by-Licensed Product basis until [***] whichever first occurs. 4.13 Notwithstanding the provisions of this Article 5 hereof4, no royalty shall be payable to Caltech with respect to any sales of Licensed Products to the U.S. Government on sales made solely to permit the U.S. Government to practice or have practiced or have practiced or xxx on its behalf any invention or process covered by the Licensed Patents.

Appears in 1 contract

Samples: License Agreement

Royalties. In consideration for (a) Subject to the rights terms and license granted under conditions of, and during the term of, this Agreement, Licensee shallIsis will pay to Alnylam royalties on sales of Double Stranded RNA Products that are Isis Products by Isis, subject its Affiliates or sublicensees equal to [***]% of Net Sales. Isis may reduce the royalty due under this section by [***]% of any additional royalties that Isis owes to Third Parties on such Double Stranded RNA Products that are Isis Products that arise from Isis acquiring access to new technologies after the Restatement Date; provided, however that (i) the royalty due under this section can never be less than a floor of [***]%, (ii) additional royalties arising as the result of the addition, pursuant Section 11.8, of Alnylam Future Chemistry Patents or Alnylam Future Motif and Mechanism Patents to the provisions Alnylam Patent Rights licensed to Isis, or as the result of Sections 4.2an expansion of Isis’ licenses pursuant to Section 6.5(d), 4.3 cannot be used to reduce the royalty and 4.4 below(iii) Isis shall not be entitled to reduce, pursuant to this sentence, its royalty obligation to Alnylam below a royalty obligation equal to the lesser of (y) Alnylam’s aggregate royalty obligations [***] existing as of the Effective Date [***] [***] and (z) Alnylam’s aggregate royalty obligations [***] [***] as such obligations may be reduced from time to time after the Effective Date. (b) Subject to the terms and conditions of, and during the term of, this Agreement, Isis will pay to Alnylam royalties to Ipsen based upon on Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such countryIsis Single Stranded RNAi Products by Isis, which royalties shall be its Affiliates or sublicensees equal to [ [***]* % of such Net Sales; provided, however, thatthat if Isis is the subject of an Acquisition, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to payable under this Section 8.2(b) on the Net Sales of Isis Single Stranded RNAi Products following such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall Acquisition will be (A) [ [***]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof%.

Appears in 1 contract

Samples: Strategic Collaboration and License Agreement (Isis Pharmaceuticals Inc)

Royalties. (a) In consideration for the rights event ARIAD or HMRI develops a Product that is [*] Validated Target or Validated Protein or the associated Candidate Gene, it shall pay a [*] royalty on its Net Sales and license granted under this Agreement, Licensee shall, subject those of its Affiliates -5- 157 to the provisions other party. (b) In the event ARIAD or HMRI shall grant a sublicense to a third party to make, use or sell a Product that is [*] a Validated Target or Validated Protein, the royalty shall be the lesser of Sections 4.2, 4.3 the amount set forth in Section 10(a) calculated on the sublicensee's Net Sales or [*] of the royalties actually received by a party from the sublicensee. (c) In the event that ARIAD and 4.4 below, HMRI shall be obligated to pay royalties to Ipsen based upon in excess of [*] of its Net Sales and those of any given Licensed its Affiliates or sublicensees to a third party with respect to a particular Product in any given country in being developed or sold by it under a license from the Territory during third party for a Gene or Protein necessary to develop or sell such Product, then the Royalty Term applicable to sales of such Licensed Product in such country, which royalties paying party shall be equal entitled to [ ]* of such Net Sales; provided, however, that, subject reduce the royalty payable hereunder to the provisions other party [*] ; provided that the royalty payable to the other party under Section 10(a) shall not be reduced below [*] of Sections 4.2Net Sales and the royalty payable to the other party under Section 10(b) shall not be reduced below [*] of the royalties actually received by the paying party from the sublicensee. (d) In the event that ARIAD or HMRI shall be obligated to pay royalties or other payments to a third party with respect to a particular Product being developed or sold by the other party or its Affiliates or sublicensees as a result of the grant of a sublicense to the Company or the other party, 4.3 and 4.4 below[*] after receipt of an invoice for such payment from the party granting the sublicense. The party receiving the license shall not be obligated [*] , if except for those: (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]based on or resulting from [*, ] or (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country as otherwise expressly provided in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofJoint Venture Agreements.

Appears in 1 contract

Samples: Joint Venture Master Agreement (Ariad Pharmaceuticals Inc)

Royalties. In consideration for (a) Subject to the rights terms and license granted under conditions of, and during the term of, this Agreement, Licensee shallIsis will pay to Alnylam royalties on sales of Double Stranded RNA CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934. Products that are Isis Products by Isis, subject its Affiliates or sublicensees equal to [***]% of Net Sales. Isis may reduce the royalty due under this section by [***]% of any additional royalties that Isis owes to Third Parties on such Double Stranded RNA Products that are Isis Products that arise from Isis acquiring access to new technologies after the Effective Date; provided, however, that (i) the royalty due under this section can never be less than a floor of [***]%, (ii) additional royalties arising as the result of the addition, pursuant to Section 11.8, of Alnylam Current Chemistry Patents or Alnylam Current Motif and Mechanism Patents to the provisions Alnylam Patent Rights licensed to Isis, or as the result of Sections 4.2an expansion of Isis’ licenses pursuant to Section 6.5(d), 4.3 cannot be used to reduce the royalty and 4.4 below(iii) Isis shall not be entitled to reduce, pursuant to this sentence, its royalty obligation to Alnylam below a royalty obligation equal to the lesser of (y) Alnylam’s aggregate royalty obligations [***] existing as of the Effective Date [***] and (z) Alnylam’s aggregate royalty obligations to [***] as such obligations may be reduced from time to time after the Effective Date. (b) Subject to the terms and conditions of, and during the term of, this Agreement, Isis will pay to Alnylam royalties to Ipsen based upon on Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such countryIsis Single Stranded RNAi Products by Isis, which royalties shall be its Affiliates or sublicensees equal to [ [***]* % of such Net Sales; provided, however, thatthat if Isis is the subject of an Acquisition, the royalty payable under this Section 8.2(b) on the Net Sales of Isis Single Stranded RNAi Products following such Acquisition will be [***]%. (c) Subject to the terms and conditions of this Agreement, and during the Isis Extended Field Royalty Term, Isis will pay to Alnylam royalties on sales of Isis Extended Field Products by Isis, its Affiliates or sublicensees equal to [***]% of Net Sales of such Products. (d) Subject to the terms and conditions of this Agreement, and during the Isis Exclusive Target Royalty Term, Isis will pay to Alnylam royalties on sales of Isis Exclusive Target Products by Isis, its Affiliates or sublicensees equal to [***]% of Net Sales of such Products. Upon expiration of the Isis Exclusive Target Royalty Term, the license granted under Section 6.1(l) will terminate. (e) The royalties payable to Alnylam pursuant to Section 8.2(d) are in addition to, and not in lieu of, the royalties payable to Alnylam pursuant to Sections 8.2(a) and (b), as applicable. Specifically, if an Isis Exclusive Target Product is subject to the provisions payment of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee royalties to Alnylam pursuant to Section 2.11.1 8.2(d) during the applicable Isis Exclusive Target Royalty Term and (iii) is also a Double Stranded RNA Product that is an Isis Product or an Isis Single Stranded RNAi Product, as the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rightscase may be, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee calculated pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B8.2(a) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ b), as applicable, will also be payable to Alnylam with respect to such Isis Exclusive Target Product for so long as such Isis Exclusive Target Product is a Double Stranded RNA Product that is an Isis Product or an Isis Single Stranded RNAi Product, as the case may be. However, if an Isis CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 406 PROMULGATED UNDER 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED1934. due Ipsen Exclusive Target Product that is subject to the payment of royalties to Alnylam pursuant to this Section 4.1 shall 8.2(d) is also an Isis Extended Field Product, it will not be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of subject to additional royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofunder Section 8.2(c).

Appears in 1 contract

Samples: Strategic Collaboration and License Agreement (Alnylam Pharmaceuticals, Inc.)

Royalties. In consideration for (a) Subject to the rights and license granted under remainder of this AgreementSection 8.06 (Royalties), Licensee shall, subject to shall pay Agios the provisions of Sections 4.2, 4.3 and 4.4 below, pay following royalties to Ipsen based upon on aggregate Net Sales of any given all Licensed Product Products, at an incremental royalty rate determined by aggregate annual Net Sales of all Licensed Products in any given country each calendar year during the Term in the Territory during the Royalty Term applicable to sales Territory: By way of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 example and 4.4 belownot limitation, if Net Sales of all Licensed Products in a calendar year are [**] Dollars (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ $[**]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights), then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be [**]. (Ab) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used Running royalties paid by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to under this Section 4.1 8.06 (Royalties) shall be made paid on a Licensed Product-by-Licensed Product basis and on a countryJurisdiction-by-country basisJurisdiction basis until the latest of (i) the expiration of the last-to-expire Valid Claim in the Agios Patent Rights or Joint Combination Therapy Patent Rights that Covers such Licensed Product in the Field in such Jurisdiction, (ii) expiration of marketing or regulatory exclusivity with respect to such Licensed Product in such Jurisdiction, or (iii) ten (10) years from the First Commercial Sale of such Licensed Product in the Field in such Jurisdiction (each, a “Royalty Term”). Payment Following the expiration of royalties due the Royalty Term with respect to Ipsen a particular Licensed Product in the Field in a Jurisdiction (but not following an earlier termination of this Agreement), the licenses granted by Agios to Licensee pursuant to this Article 4 Section 2.01(a) with respect to such Licensed Product in the Field in such Jurisdiction shall be made perpetual, irrevocable, fully-paid and royalty-free, and Net Sales of such Licensed Product shall no longer be included in the aggregate Net Sales calculation in Section 8.06(a) but shall be included in calculations of Net Sales for the purposes of Section 8.05 (Sales Milestones Payments). (c) Notwithstanding the provisions of Section 8.06(a), on a Jurisdiction-by-Jurisdiction basis, during any period in such Jurisdiction in which (i) the sale of a given Licensed Product would not infringe a Valid Claim of the Agios Patent Rights or a Valid Claim of the Joint Combination Therapy Patent Rights and (ii) there is no marketing or regulatory exclusivity with respect to such Licensed Product in such Jurisdiction, Licensee shall pay royalty rates for sales of such Licensed Product in such Jurisdiction that shall be set at [**] percent ([**]%) of the applicable royalty rate determined in accordance with Section 8.06(a). (d) In the event that Licensee or Agios obtains, after the Effective Date, a license under, or other rights to, Patent Rights or Know-How from any Third Party(ies) that are necessary in order to Commercialize a given Licensed Product in the Field in a given Jurisdiction, [**] percent ([**]%) of any and all royalty payments actually paid directly, or indirectly in accordance with Section 2.06(a), as applicable, under such Third Party licenses by Licensee or its Affiliates for sales of such Licensed Product in the Field in such Jurisdiction in a given calendar quarter shall be creditable against the royalty payments due to Agios by Licensee for sales of such Licensed Product in such Jurisdiction in such calendar quarter. (e) Notwithstanding the provisions of Article 5 hereofSection 8.06(a), on a Jurisdiction-by-Jurisdiction basis, during any period in such Jurisdiction in which (i) the sale of a given Licensed Product would infringe a Valid Claim of the Joint Combination Therapy Patent Rights but not a Valid Claim of the Agios Patent Rights and (ii) there is no marketing or regulatory exclusivity with respect to such Licensed Product in such Jurisdiction, Licensee shall pay royalty rates for sales of such Licensed Product in such Jurisdiction that shall be set at [**] percent ([**]%) of the applicable royalty rate determined in accordance with Section 8.06(a). (f) Notwithstanding the provisions of the above subparts (c), (d) and (e) of this Section, in no event shall the total royalty rate reduction(s) allowable under such subparts with respect to a given Licensed Product in a given Jurisdiction in a given calendar quarter, alone or together, lead to a reduction of more than [**] percent ([**]%) of the applicable royalty rate determined in accordance with Section 8.06(a).

Appears in 1 contract

Samples: License Agreement (Agios Pharmaceuticals Inc)

Royalties. In (a) As further consideration for Cephalon’s grant of the rights and license granted under this Agreementlicenses to FBIO hereunder, Licensee shall, subject FBIO shall pay to Cephalon a royalty at the graduated royalty rates specified in the table below with respect to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon aggregate annual worldwide Net Sales of any given all such Licensed Product in any given country Products by FBIO and its Affiliates and Sublicensees in the Territory during in a Calendar Year: For that portion of aggregate annual Net Sales of all Licensed Products up to and including $* * % For that portion of aggregate annual Net Sales of all Licensed Products that is greater than $* * % The applicable royalty rate shall be calculated as provided in this Section 5.3(a) by reference to the aggregate annual worldwide Net Sales of all Licensed Products in a Calendar Year. By way of example, in a given Calendar Year, if the aggregate annual worldwide Net Sales of all Products for which royalties are due under this Section 5.3(a) were US$*, the following Royalty payment would be payable under this Section 5.3(a): (*% x US$*) + (*% x US$*) = US$*. (b) Royalties shall be payable from the First Commercial Sale of a Licensed Product until the expiration of the Royalty Term applicable Term, on a country-by-country basis. (c) Only one royalty shall be due with respect to sales the sale of the same unit of Licensed Product. Only one royalty shall be due hereunder on the sale of a Licensed Product even if the manufacture, use, sale, offer for sale or importation of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date infringes more than one claim of the MC4 [ ]* Agreement, Cephalon Patents. (Bd) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on On a Licensed Product-by-Licensed Product basis and on a country-by-country basis, upon expiration of the Royalty Term for a Licensed Product in a country, the rights and licenses granted to FBIO under Section 2.1 with respect to such Licensed Product in such country shall continue in effect but become fully paid-up, royalty-free, and perpetual. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance * Confidential material redacted and filed separately with the provisions of Article 5 hereofCommission.

Appears in 1 contract

Samples: License Agreement (Checkpoint Therapeutics, Inc.)

Royalties. In As consideration for the rights and granted hereunder, LICENSEE shall make the following royalty payments to YALE: 4.01 LICENSEE shall pay to YALE a one-time license granted under fee of * within 30 days of the execution of this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties . Such payment shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 separate from and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in not credited against any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicableEARNED ROYALTIES. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED 4.02 LICENSEE shall pay to YALE EARNED ROYALTIES of * of NET SALES in respect of any LICENSED PRODUCTS sold for use as a human therapeutic. 4.03 LICENSEE shall pay to YALE EARNED ROYALTIES of * of NET SALES in respect of any LICENSED PRODUCTS sold for any use other than use as a human therapeutic. 4.04 In the event that LICENSEE sublicenses the LICENSED TECHNOLOGY to a third party without having first conducted any research and development work itself in relation to the LICENSED TECHNOLOGY, then LICENSEE shall pay to YALE * of all SUBLICENSE INCOME from that third party (the "PURE SUBLICENSE PAYMENTS"). 4.05 In the event that LICENSEE first conducts research and development work in relation to the LICENSED TECHNOLOGY, and the LICENSED TECHNOLOGY together with the additional research and development work and information is sublicensed to a third party, then the LICENSEE shall pay YALE the following: 4.06 LICENSEE shall make milestone payments to YALE according to the following schedule, but such milestone payments shall be paid only once, irrespective of the number of LICENSED PRODUCTS that are covered by this Agreement. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. If at the time any of these milestone payments become due Ipsen pursuant to under this Section 4.1 4.06(a)-(j), no LICENSED PATENT has been granted by the United States Patent and Trademark Office ("PTO"), then LICENSEE may withhold and place in escrow * of each such milestone payment (the "Escrow Amount"). LICENSEE shall pay to YALE the whole Escrow Amount within 30 days after issuance of a LICENSED PATENT by the PTO. In the event that a) all patents and patent applications relative to the INVENTION are either denied, withdrawn, abandoned, unenforceable or not actively pursued at any time during the term of this Agreement, or b) a * CONFIDENTIAL TREATMENT REQUESTED LICENSED PATENT has not issued prior to the expiration or termination of this Agreement, then LICENSEE shall be made on a Licensed Product-by-Licensed Product basis entitled to retain and on a country-by-country basiskeep the Escrow Amount. Schedule of Payments Payment of royalties due to Ipsen pursuant to this Article 4 Due Date * * * CONFIDENTIAL TREATMENT REQUESTED 4.07 EARNED ROYALTIES, PURE SUBLICENSE PAYMENTS and VALUE ADDED SUBLICENSE PAYMENTS shall be payable by LICENSEE during the period that any LICENSED PATENT remains pending or effective in any applicable country. In the event that a LICENSED PATENT lapses or if all of its claims are finally declared invalid by a non-appealable decision of a court of competent jurisdiction through no fault or cause of LICENSEE, the obligation to pay royalties for that patent on sales made subsequent to the lapse or declaration of invalidity shall terminate but this Agreement shall remain in accordance with effect as to the provisions remaining LICENSED PATENTS or claims thereunder. If all LICENSED PATENTS lapse or all of Article 5 hereoftheir claims are so finally declared invalid, either in a particular jurisdiction or worldwide, the obligation of LICENSEE to pay royalties or other compensation to YALE shall terminate but LICENSEE and its permitted sublicenses may continue to make, have made, use, all and practice the LICENSED TECHNOLOGY and LICENSED PRODUCTS in such jurisdictions or worldwide, as the case may be. 4.08 If LICENSEE believes that it must obtain or utilize a license under any other patent(s) from any third party in order to make, have made, use or sell LICENSED PRODUCTS in any particular country, LICENSEE shall advise YALE. If YALE disagrees, the parties shall negotiate in good faith to resolve the disagreement or make alternative arrangements. If the parties are unable to agree, LICENSEE, in its sole discretion, shall make the final decision as to whether such a license is required unless YALE provides to

Appears in 1 contract

Samples: License Agreement (Codon Pharmaceuticals Inc)

Royalties. In consideration (a) The following undertaking having been agreed to for the rights purpose of reflecting and advancing the mutual convenience of the parties, beginning with the FIRST COMMERCIAL EXPLOITATION in any country, (i) on all sales of PRODUCTS anywhere in the world by PALOMAR and its AFFILIATES, or (ii) for any SERVICE performed by PALOMAR or its AFFILIATES or any other third party by virtue of any right or license granted by PALOMAR or its AFFILIATES, then in either case of clause (i) or (ii), PALOMAR shall pay GENERAL, during the term of the license granted under this AgreementParagraph 2.1(a), Licensee shallwhere a PRODUCT or SERVICE, subject to respectively, is covered by a VALID CLAIM of the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product PATENT RIGHTS in any given the country in question and the Territory during PATENT RIGHTS are exclusively licensed in the Royalty Term applicable LICENSE FIELD to sales PALOMAR hereunder, a royalty of such Licensed Product in such country, which royalties shall be equal to [ ](A)** of such Net Sales; providedthe applicable NET REVENUES of PRODUCTS or SERVICES, howeverrespectively, thatfor which no other royalty applies pursuant to any SUBJECT AGREEMENT (as defined below), subject or (B)** of the applicable NET REVENUES of PRODUCTS or SERVICES, respectively, for which any other royalty applies pursuant to the provisions of Sections 4.2, 4.3 and 4.4 below, if any SUBJECT AGREEMENT. (i) such Licensed Product is an Ipsen MC4 Product that utilizes GENERAL shall receive twenty-five percent (25%) of the Ipsen MC4 [ ]*, sublicensing revenues received by PALOMAR or its AFFILIATES from each SUBLICENSEE (iithe “SUBLICENSE FEES”) attributable to VALID CLAIMS of PATENT RIGHTS licensed exclusively to PALOMAR hereunder in the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable question. PALOMAR and GENERAL agree that for SUBLICENSE FEES that include a non-monetary component, PALOMAR and GENERAL will agree to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date a specific allocation of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered non-monetary component by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofseparate letter agreement.

Appears in 1 contract

Samples: License Agreement (Palomar Medical Technologies Inc)

Royalties. 3.1 In consideration for of the rights and license granted under Section 2.2 of this Agreement for the development of Products, Licensee shall pay to Licensor a royalty during the term of this Agreement, within 90 days of each calendar year end, on all sales by Licensee shallof Products at the rate of 4.5% of the gross sales of the Product without deduction therefrom. 3.2 In consideration of the right to sublicense third parties granted under Section 2.2 of this Agreement, subject if Licensee so sublicenses third parties, then Licensee shall pay to Licensor 25% of all royalties, payments or other direct remuneration received by Licensee during the term of this Agreement pursuant to any such sublicense, promptly after Licensee’s receipt of-such consideration, less any direct expenses incurred with respect to such sublicense. 3.3 Licensee shall deliver to Licensor a statement of sales and royalties with respect to and concurrent with each payment made to Licensor under this Section 3, certified by the Licensor’s Chief Financial Officer (the “Royalty Statement”). Unless within thirty (30) days of delivery of the Royalty Statement by Licensee to Licensor, Licensee shall have received a written objection from Licensor to the provisions Royalty Statement, then such draft shall be considered the final Royalty Statement for such period. If within thirty (30) days of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales delivery of any given Licensed Product in any given country in the Territory during the Royalty Term applicable Statement by Licensee to sales Licensor, Licensee shall have received a written objection from Licensor to the Royalty Statement, then the Licensee and Licensor shall attempt to reconcile their differences diligently and in good faith and any resolution by them shall be final, binding and conclusive. If the Licensee and Licensor are unable to reach a resolution with such effect within ten (10) days of the Licensor’s receipt of the Licensor’s written notice of objection, the parties shall submit such Licensed Product in such countrydispute for resolution to an independent accounting firm mutually appointed by the parties (the “Independent Accounting Firm”), which royalties shall determine and report to the parties and such report shall be equal to [ ]* final, binding and conclusive on the parties hereto. The fees and disbursements of such Net Salesthe Independent Accounting Firm shall initially be paid by the Licensor; provided, however, that, subject in the event that the Independent Accounting Firm determines that the Licensor’s objection to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent RightsRoyalty Statement are valid, then the royalty rate applicable Licensee shall pay the fee payable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofIndependent Accounting Firm.

Appears in 1 contract

Samples: License Agreement (Synova Healthcare Group Inc)

Royalties. In consideration for the rights and license granted under this Agreement, Licensee Company shall, subject during the relevant Royalty Periods (on a country by country and Licensed Product by Licensed Product basis), pay the Licensors, through the Leading Licensor, royalties equal to [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION]of all Net Sales by the Company and its Affiliates. During the Royalty Period, following the later of there being no Valid Claim, or the end of the Exclusivity Rights (if any), applicable to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given the country of sale, the said royalty rate in the Territory during the Royalty Term applicable to sales country of such Licensed Product in such country, which royalties sale shall be equal reduced to [ [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION]* . Company shall be entitled to deduct [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION] of such Third Party Royalties from the consideration due the Licensors as a result of Net Sales; Sales by the Company or its Affiliates after all credits and deductions permitted by this Agreement have been taken, provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to which the Company shall pay Licensors, through the Leading Licensor, for Net Sales of by the Company or its Affiliates shall not be reduced by more than [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION] during any particular payment period (namely that such Ipsen MC4 Product in any given country in the Territory Net Sales shall not be reduced to less than [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION] during the Royalty Term applicable period in which there is a Valid Claim or Exclusivity Right, and to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date less than [THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAS BEEN FILED SEPARATELY WITH THE COMMISSION] during any remaining period of the MC4 [ ]* Agreement, Royalty Term) (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * "[THE CONFIDENTIAL PORTION HAS BEEN SO OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS AND HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofCOMMISSION]").

Appears in 1 contract

Samples: License Agreement (New York Global Innovations Inc.)

Royalties. In consideration for 5.1. As from the rights and license granted under this Agreementfirst commercial sale by Protalix, Licensee shallits Affiliates and/or sub-licensees of any Licensed Product, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, Protalix shall pay Icon royalties to Ipsen based upon (“Royalties”) on Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* at the rate of [***] of such Net Sales; provided, however, that, subject to the provisions until such time as Net Sales in respect of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is reach an Ipsen MC4 aggregate amount of [***]. Thereafter, and for the remainder of the Royalty Period (as defined below), Protalix shall pay Royalties to Icon with respect to such Licensed Product that utilizes the Ipsen MC4 [ ]at a rate of [*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to **] on Net Sales of such Ipsen MC4 Product Licensed Product, unless otherwise provided hereunder. 5.2. Notwithstanding the provisions of the preceding Section 5.1 of this Agreement: Should the [***] in any given country Licensed Product exceed [***] grown in Protalix’s plant cells bio-reactor systems, the Royalties payable with respect to such Licensed Product shall be increased to [***] of the Net Sales of such Licensed Product, for as long as aggregate Net Sales of such Licensed Product are below [***]. Once aggregate Net Sales of such Licensed Product exceed [***], the Royalty rate payable in respect of such Licensed Product shall be increased to [***] of Net Sales of such Licensed Product, for the remainder of the Royalty Period. 5.3. For the avoidance of doubt, it is hereby clarified that sales of one Licensed Product shall not be taken into consideration for purposes of calculation of the Royalties required to be paid in connection with any other Licensed Product. It is hereby further clarified that Protalix or its licensee have to pay royalties once only, on “Licensed Product” sold in the Territory form of a pharmaceutical, and not on sales of an active ingredient. [***] Omitted pursuant to a confidential treatment request. The confidential portion has been filed separately with the Securities and Exchange Commission. 5.4. Protalix’s obligation to pay Royalties to Icon in respect of Licensed Products shall remain in force and effect until the first to occur of the following (the “Royalty Period”): (i) the expiration of the [***] period commencing as from the first commercial sale of the first US Food and Drug Administration — or European Medicines Agency — approved Licensed Product or (ii) until the expiration of [***] years from the first commercial sale of any Licensed Product not requiring FDA or similar approval as a active drug ingredient. 5.5. Royalties shall be payable on a [***] basis with respect to the Net Sales of the preceding [***]. Each [***] shall be made no later than [***]as from the lapse of the [***] period for which the payment is due and shall be accompanied by a report specifying the Net Sales during such [***] along with a calculation of the Royalties owed to Icon. 5.6. For the avoidance of doubt, it is hereby recorded and agreed that following the expiry of the Royalty Term applicable to sales Period by reason of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee passage of time pursuant to Section 2.11.1 within [ ]* after 5.4 of this Agreement, then notwithstanding such expiry, Protalix shall be entitled to continue to utilize the date Icon Patents, to make commercial use of the MC4 [ ]* AgreementIcon Technology in the Protalix Field, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen without having to Licensee pursuant pay royalties to Section 2.11.1 at any time after the [ ]* following the date Icon in respect of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicableactivities. 5.7. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen All payments to be made to Icon pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 Agreement shall be made in accordance United States Dollars to such bank account as Icon may direct from time to time during the Term. 5.8. All payments are quoted net and are made by adding the statutory value added tax, if any. 5.9. Protalix shall withhold and pay to the appropriate authorities in respect of any amount due to Icon, any and all withholding and other taxes as may be imposed by any taxing authority. In such event, Protalix shall provide Icon with evidence of such withholding and payment. 5.10. Foreign currency shall be converted into United States Dollars using an exchange rate equal to the exchange rate for the purchase of United States Dollars, as reported by The Wall Street Journal, on the last business day of the [***] period for which the payment is due. 5.11. Protalix shall endeavor to prepare accurate and complete records relating to the Net Sales of the Licensed Products during each accounting period. Icon or its duly authorized representatives may during the Term of this Agreement and for up to 6 (six) months thereafter upon giving reasonable notice – in any event of not less than 14 (fourteen) days – to Protalix within the premises of Protalix during [***] Omitted pursuant to a confidential treatment request. The confidential portion has been filed separately with the provisions Securities and Exchange Commission. normal business hours and not more frequently then once in any 12 (twelve) months period to inspect and make copies of Article 5 hereofall such records in respect of the period of 1 (one) year immediately proceeding the date of such inspection. Icon’s right referred to in this Section shall be exercised by Icon at its own expense save that in the event that any such inspection discloses that the total amount which should have been accounted for hereunder by Protalix during the period covered by the inspection exceeds by [***]or more the total amount that was so accounted for by Protalix during such a period and that Protalix auditors shall certify in writing such error exists that Protalix shall forthwith reimburse Icon for reasonable costs of Icon’s inspection. If any inspection reveals that Protalix has under-reported the amount payable to Icon Protalix agrees to make immediate payment to Icon of the proper amount due.

Appears in 1 contract

Samples: License Agreement (Orthodontix Inc)

Royalties. In consideration for the rights and license granted under this Agreement, 4.01 Licensee shall, subject shall pay to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Licensor a royalty on Net Sales of any given Licensed Product in any given country in (the Territory "Royalty" or Royalties") during the Term in accordance with the following subject only to those withholdings provided for in this Agreement and as such rates may be modified by clause 4.04: (a) if a Product infringes a claim or claims of a Licensed Patent, the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* four (4%) percent of such Net Sales; providedand (b) if 4.01(a) is not applicable, howeverthe Royalty shall be two (2%) percent of Net Sales. 4.02 Notwithstanding Clause 4.01, thatwith respect to sales made by sublicensees where Licensee is in receipt of royalties based on sales or other commercial dispositions of Products made by such sublicensees, subject Licensee shall pay to Licensor the lesser of: (a) twenty-five (25%) percent of the net royalties payable to Licensee by such sublicensees; and (b) the amount otherwise due to Licensor pursuant to Clause 4.01. As used in subclause 4.02 (a) above, "net royalties" means the gross amount of royalties recoverable by Licensee from such sublicensees after deduction of applicable withholdings or similar taxes less any royalties or similar payments that Licensee has to make to any party other than Licensor in connection with sales of Products. Furthermore, in jurisdictions which restrict or prohibit the payment of funds out of the jurisdiction, Licensee shall have no obligation to make any payments to Licensor except from and after Licensor electing to receive payment in such jurisdiction. If Licensor makes such election in regards to any such jurisdiction, Licensee's obligation in respect of royalties in such jurisdiction shall not exceed fifty (50%) percent of its royalty entitlements net of applicable taxes in such jurisdiction. 4.03 This clause left intentionally blank. 4.04 If the Royalties payable to the provisions Licensor and/or other third parties would exceed seven (7%) percent of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Net Sales for a Product that utilizes infringes a claim or claims of the Ipsen MC4 [ ]*, Licensed Patents or three and one-half percent (ii3 1/2 %) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rightsfor a Product that does not, then the Royalty rates provided for in clause 4.01 shall be reduced to a point that the total royalties payable by the Licensee to the Licensor and/or such third parties do not exceed 7%. The Licensee shall use reasonable efforts to ensure that any royalty rate applicable to Net Sales of reduction necessary under this clause is allocated between the Licensor and such Ipsen MC4 Product third party in any given country in the Territory during an equitable manner. However, under no circumstances shall the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (Arates provided for under clause 4.01(a) and (Bb) is applicable. For purposes of clarification, the determination be reduced to less than one-third (1/3) of the amount otherwise determinable under such clauses. 4.05 If a third party initiates any legal or administrative proceeding challenging the validity, scope or enforceability of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-Patent in any country basis. Payment of royalties due to Ipsen then Licensee's royalty obligations pursuant to this Article 4 IV shall be adjusted as if that particular Product did not infringe the claim or claims of a Licensed Patent relating to such country. If the enforceability of the claim in dispute in such proceedings is upheld by a court or other legal or administrative tribunal from which no appeal is or can be taken, then the balance of the payment that should have been made during the period of reduction shall be promptly paid by Licensee to Licensor with interest calculated in accordance with clause 5.05. If the provisions claims of a Licensed Patent which cover that Product are held to be invalid or otherwise unenforceable by a court or other legal or administrative tribunal from which no appeal is or can be taken, then no such payment shall be made. Licensee acknowledges that the foregoing constitutes the full extent of Licensor's liability to Licensee in the event of any such suit and is a bar to any proceedings for recovery of any other damages of any description. 4.06 In addition to the amounts payable under clause 4.02, Licensee shall remit to Licensor twenty-five (25%) percent of all option fees, license fees, or other cash payments, equity or other consideration of any kind that Licensee receives from Sublicensees, pursuant to sublicenses Licensee enters into as contemplated by Article 5 hereofXI, other than payments that fall into the following categories: (a) payments made on account of royalties pursuant to such sublicense; (b) payments made to Licensee to fund research or development, or both, of Product(s) to the extent that such payments are used for such purposes; (c) payments made to reimburse Licensee for expenses incurred in the research or development, or both, of Product(s); and (d) payments made to reimburse Licensee for payments made to Licensor under this Agreement. Licensee shall be responsible for demonstrating to Licensor whether any payments made to Licensee by a sublicensee fall into categories (a) through (d) above.

Appears in 1 contract

Samples: License Agreement (Ym Biosciences Inc)

Royalties. In consideration 1. For the granting of the described license for the rights and license granted under this AgreementContractual Rights, Licensee shall, subject SEQUENOM shall pay to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product Inventor a royalty in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties *** CONFIDENTIAL TREATMENT REQUESTEDof the net sales realized by SEQUENOM using the Contractual Rights - independently of the number of Contractual Rights used. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen Sales are the proceeds - after receipt of payment by SEQUENOM - from the sale of *** Portions of this page have been omitted pursuant to this Section 4.1 a request for Confidential Treatment and filed separately with the Commission. products, which are based on Contractual Rights and/or the application of which requires the use of the Contractual Rights, or services which are rendered using the Contractual Rights. 2. For sales that are realized using exclusively the Contractual Rights, which result from the collaboration (see (S)1) of SEQUENOM and the Inventor, and in which the Inventor or one of his co-workers is named as (co-)inventor, the royalty is *** . 3. In case the sum total of all royalties which SEQUENOM has to pay to third parties exceeds the value of *** for given proceeds, the royalties payable to the Inventor shall be made on *** in order to reduce it to exactly *** of the given proceeds. 4. SEQUENOM refunds all expenses to the Inventor which he has incurred or incurs in connection with applying for, maintaining and defending patents for the Contractual Rights, provided that these Contractual Rights are transferred *** to SEQUENOM. Included herein is the cost of applying for, maintaining and defending patents in other countries. The parties to the agreement shall discuss the procedures concerning patents matters as required. If licenses for a Licensed Product-by-Licensed Product basis given patent or a given patent application are granted to third parties for areas of application which are not exclusive to SEQUENOM, then all expenses as described above are shared as a rule proportionately by SEQUENOM and on a country-by-country basisthis (these) third party (parties). Payment of royalties due to Ipsen pursuant to this Article 4 Expenses already paid by SEQUENOM shall be made reimbursed proportionately by this (these) third party (parties). The Inventor is thus obliged to transfer this obligation to possible third party licensees. The Inventor shall also, by prior agreement, be reimbursed for expenses which arise in accordance connection with obtaining or reinstatement of patent right according to Annex 2, paragraph 2. 5. Royalties are always due at the provisions end of Article 5 hereofa calendar year and after receipt of payment for the underlying sales by SEQUENOM.

Appears in 1 contract

Samples: License Agreement (Sequenom Inc)

Royalties. In 4.1 For the rights, privileges and license(s) granted hereunder, during the effective term of the patents upon which Patent Rights are based, or until this Agreement shall be sooner terminated as herein otherwise provided, LICENSEE shall pay RESEARCH FOUNDATION: (a) royalties (hereinafter “Running Royalties”) equal to [***] percent ([***]%) of Gross Sales of the Licensed Product made, used, leased or sold by or for LICENSEE and it’s sublicensees, provided (1) that if it is necessary for LICENSEE to acquire one or more royalty-bearing licenses from third parties in order to fully exercise the rights granted by. RESEARCH FOUNDATION hereunder, or in the event that LICENSEE shall sell or lease product(s) (hereinafter “Combination Product(s)”) consisting of a Licensed Product and one or more additional active ingredients which must be purchased outright by LICENSEE for use in the composition of such Combination Product, then in either such event, LICENSEE shall be entitled to credit against the royalty payments due RESEARCH FOUNDATION hereunder cumulative amounts equal to royalties and/or the price actually paid to third parties on such account(s), up to a maximum of [***] percent ([***]%) of the amounts due RESEARCH FOUNDATION on account of royalties as herein otherwise provided; and further provided (2) that in the event that LICENSEE shall sell or lease any product(s) (hereinafter “Cross-Licensed Products”) pursuant to rights obtained in exchange for rights to Licensed Products or the Technology, LICENSEE shall be obligated to pay RESEARCH FOUNDATION Running Royalties and License Fees on such cross-licensed Products as herein otherwise provided, on the same basis as it shall be obligated to pay such amounts on Licensed Products; and (b) license fees (hereinafter “License Fees”) equal to [***] percent ([***]%) of anything of value other than sublicensee royalties, received by LICENSEE as consideration for the rights use of the Technology. Specifically excluded from characterization and license granted treatment as License Fees, for purposes of this paragraph 4.1 (b), are sublicensee royalties analogous to LICENSEE’S Running Royalties under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 Agreement (whether commensurate or otherwise) and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of amounts received as advances on future or forthcoming royalties; further excluded from such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 characterization and 4.4 below, if treatment are (i) such Licensed Product payments for which LICENSEE is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*obligated to perform technical, research or development services, (ii) sales of one hundred per cent (100%) of the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 common stock of LICENSEE, and (iii) sales of some lesser percentage of the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rightscommon stock of LICENSEE, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales nature of such Ipsen MC4 Product investments in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofLICENSEE.

Appears in 1 contract

Samples: License Modification Agreement (NTN Buzztime Inc)

Royalties. In consideration 4.01 Subject to 4.02, the Licensee shall pay to the Licensor a royalty on Net Sales (the “Royalty” or Royalties”) during the Term in accordance with the following subject only to those exclusions provided for in this Agreement and as such rates may be modified by clause 4.04: (a) if a Product infringes a claim or claims of a Licensed Patent related to the rights Adjuvant Technology, the Royalty shall be [***]; and (b) if a Product infringes a claim or claims of a Licensed Patent related to the Bovine Technology, the Royalty shall be [***]; and (c) if a Product infringes a claim or claims of a Licensed Patent related to the Pasteurella Technology, the Royalty shall be [***]; and (d) if 4.01(a) is not applicable and license granted a Product utilizes any part of the Licensed Technology related to the Adjuvant Technology, the Royalty shall be [***], and (e) if 4.01(b) is not applicable and a Product utilizes any part of the Licensed Technology related to the Bovine Technology, the Royalty shall be [***], and (f) if 4.01(c) is not applicable and a Product utilizes any part of the Licensed Technology related to the Pasteurella Technology, the Royalty shall be [***]. 4.02 Notwithstanding 4.01, other than during the application of the applicable Threshold, with respect to Net Sales made by a Major Species Sublicensee where the Licensee is entitled to the receipt of royalties based upon Net Sales of Products made by such sublicensees (other than Value Added Receipts), the Licensee shall pay to the Licensor in respect of such Net Sales (other than Value Added Receipts) the lesser of : (a) [***] of the royalties payable by such sublicensees to the Licensee in respect of its Net Sales; or (b) the amount otherwise determined pursuant to 4.01 on the basis of the Net Sales of the sublicensee. For greater particularity, this provision 4.02 has no application to Value Added Receipts. 4.03 Notwithstanding the foregoing, a minimum royalty shall be payable as follows: 4.03.1 in respect of calender year 2000, [***] prorated for such calendar year as and from the Effective Date; 4.03.2 in respect of calender year 2001 and 2002, [***]; and 4.03.3 in respect of calendar years 2003, 2004 and 2005, [***]; and 4.03.4 in respect of each calendar year thereafter, [***] (collectively, the amounts referred to in 4.03.1 through 4.03.4 are referred to as “Minimum Annual Royalty”). The Licensee shall be responsible to make the Minimum Annual Royalty payments as outlined in section 4.03 in four equal quarterly installments within thirty (30) days of the end of each calendar quarter (other than in respect of the first year of this Agreement in respect of which the Minimum Royalties shall be made in two equal installments after the third and fourth calendar quarter). Notwithstanding any credits against Royalties permitted the Licensee under this Agreement, no such credits shall apply to reduce Minimum Royalties payable pursuant to this clause 4.03. 4.04 If the Royalties payable to the Licensor and/or the other royalties payable for other Product components or associated delivery systems by the Licensee shallwould exceed seven [***] for a Product, then the Royalty rates provided for in clause 4.01 shall be reduced to a point that the total royalties payable by the Licensee to the Licensor and/or such third parties do not exceed [***]. The Licensee shall use reasonable efforts to ensure that any royalty reduction necessary under this clause is allocated between the Licensor and such third party in an equitable manner. With respect to the Net Sales of a Minority Joint Venture or Major Species Sublicensee, the foregoing reference to Licensee shall be construed as a reference to the Minority Joint Venture or Major Species Sublicensee, as the case maybe, and not a reference to the Licensee. With respect to the Net Sales of a Majority Joint Venture, the Licensee may elect to have the foregoing reference to Licensee with respect to the particular Majority Joint Venture be construed as a reference to the Majority Joint Venture in lieu of the application of this Agreement without such substitution. For greater particularity, during application of the applicable threshold but subject to the provisions of Sections 4.21.01(w), 4.3 and 4.4 below, pay royalties this provision 4.04 shall apply to Ipsen based upon Net Sales of any given Licensed Product payments received by Licensee in any given country connection with arrangements giving rise to the Value Added Receipts in the Territory during manner contemplated by 1.01 (w). However, under no circumstances shall the Royalty Term applicable rates provided for under clause 4.01 be reduced to sales less than one-third (1/3) of the amount otherwise determinable under such Licensed Product clause in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable respect to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be Myostatin Products or one-half (A1/2) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount otherwise determinable under such clause in respect of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933Net Sales of Products other than Myostatin Products. 4.05 If a third party initiates any legal or administrative proceeding challenging the validity, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on scope or enforceability of a Licensed Product-by-Licensed Product basis and on a country-by-Patent in any country basis. Payment of royalties due to Ipsen then the Licensee’s royalty obligations pursuant to this Article 4 IV shall be adjusted as if that particular Product did not infringe the claim or claims of a Licensed Patent relating to such country. If the enforceability of the claim in dispute in such proceedings is upheld by a court or other legal or administrative tribunal from which no appeal is or can be taken, then the balance of the payment that should have been made during the period of reduction shall be promptly paid by the Licensee to the Licensor with interest calculated in accordance with clause 5.05. If the provisions claims of Article 5 hereofa Licensed Patent which cover that Product are held to be invalid or otherwise unenforceable by a court or other legal or administrative tribunal from which no appeal is or can be taken, then no such payment shall be made. The Licensee acknowledges that the foregoing constitutes the full extent of the Licensor’s liability to the Licensee in the event of any such suit and is a bar to any proceedings for recovery of any other damages of any description. 4.06 In addition to the amounts payable under 4.01 or 4.02, the Licensee shall remit to the Licensor [***] (which rate is applicable other than during the application of the applicable threshold) of Other Consideration and for the purposes hereof the term “Other Consideration” shall include the following specific inclusions or exclusions (the intent of the parties in connection with this 4.06 is described in the attached Exhibit “B” which Exhibit is to be employed as an aid to interpretation of this provision): (i) INCLUDE other than during the application of the applicable Threshold, payments and amounts that are paid to the Licensee in connection with the arrangements giving rise to Value Added Receipts which are not directly calculated on the basis of value added benefits and during the application of the applicable Threshold the payments and amounts contemplated by 1.01 (w) to be included in Other Consideration PROVIDED that if other than during the application of the applicable Threshold, License shall have received separate and identifiable reimbursement or payment for delivery of Product, including delivery of Product for purposes of being given away for promotional or similar purposes, which are paid to the Licensee in connection with the arrangements giving rise to the Value Added Receipts but which are not directly calculated on the basis of value added benefits, then to the extent that such reimbursement or payment has been included in the calculation of Other Consideration the Licensee shall be entitled to deduct from Other Consideration the cost to the Licensee for such Product calculated on the basis of the aggregate of: third party costs of manufacture incurred by the Licensee, plus the Licensee’s direct labor cost, plus the Licensee’s direct materials cost plus 40% percent of the direct labor and materials cost excluding third party costs. Manufacturing for the purposes of determining direct material or direct labor or third party costs of manufacturing under this Agreement includes the packaging of Product but excludes shipping, warehousing and distribution. (ii) EXCLUDE Conventional Sales and Value Added Receipts; INCLUDE other than receipts that constitute Conventional Sales or Value Added Receipts all payments of any nature and kind including royalties on net sales made by Minor Species Sublicensees;

Appears in 1 contract

Samples: Licensing Agreement (MetaMorphix Inc.)

Royalties. In consideration (a) Xxxxxxx agrees to pay Sepracor, for the rights and license granted under this Agreementto Xxxxxxx with respect to OTC Product pursuant to Section 2.1 above, Licensee shalla royalty for OTC Product covered by a Valid Claim of a Sepracor Patent Right sold by or on behalf of Xxxxxxx or its Affiliates, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country Permitted Sublicensees or assigns in the Territory during the Royalty Term applicable to sales amount of [**] for such Licensed OTC Product. Such royalty shall be payable on a country by country basis commencing upon first sale of OTC Product in such countrycountry by or on behalf of Xxxxxxx or its Affiliates, which royalties Permitted Sublicensees or assigns. (b) Each royalty for OTC Product described in Section 4.1(a) shall be equal to [ ]* payable for sales in a country until the date upon which the last of the Sepracor Patent Rights expire, are abandoned, or are declared no longer valid in such Net Salescountry; provided, however, thatthat after expiration, subject to the provisions abandonment, or declaration of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* invalidity of Sepracor Basic Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product Rights in such country shall be (A) [ country, [**]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on On a country-by-country basis, upon expiration of all Sepracor Patent Rights, the license of the Licensed Technology shall be considered fully paid up in such country and no royalties shall be payable to Sepracor for sales of such OTC Product in such country of sale. (c) Xxxxxxx agrees to pay Sepracor, for the rights granted to Xxxxxxx with respect to Rx Products pursuant to Section 2.1 above, a royalty for Rx Product covered by a Valid Claim of a Sepracor Patent Right sold by or on behalf of Xxxxxxx or its Affiliates, Permitted Sublicensees or assigns. Payment Such royalty shall be payable commencing upon first sale in a country of Rx Product by or on behalf of Xxxxxxx or its Affiliates, Permitted Sublicensees or assigns. Such royalty for Rx Product shall be: [**] (d) Each royalty for Rx Product described in Section 4.1(c) shall be payable for sales in a country until the date upon which the last of the Sepracor Patent Rights expire, are abandoned, or are declared no longer valid in such country, provided, however, that after expiration, Confidential Materials omitted and filed separately with the Securities and Exchange Commission. Asterisks denote omissions. abandonment, or declaration of invalidity of Sepracor Basic Patent Rights in such country,[**]. On a country-by-country basis, upon expiration of all Sepracor Patent Rights, the license of the Licensed Technology shall be considered fully paid up in such country and no royalties due shall be payable to Ipsen Sepracor for sales of such Rx Product in such country of sale. (e) Once a royalty becomes payable on a Product in accordance with this Section 4.1, no other royalty shall ever become payable on such Product, regardless of whether and how such Product may subsequently be sold. For the purposes of this Section 4.1, a sale shall be deemed to occur when Xxxxxxx, its Affiliates or its Permitted Sublicensees or assigns sends an invoice to an independent third party with respect to such sale. (f) If Xxxxxxx pays a royalty on a Product pursuant to this Article 4 Section 4.1 which has been or is subsequently returned to Xxxxxxx, its Affiliates or its Permitted Sublicensees or assigns or if Xxxxxxx pays such a royalty on a Product, the sale of which is subsequently cancelled, and any money paid to Xxxxxxx is returned to the buyer, the royalty so paid shall be made in accordance with deemed a credit against royalties payable by Xxxxxxx for subsequent Payment Periods. If no royalty amounts are payable for a subsequent Payment Period pursuant to this Section 4.1, then the provisions remaining balance of Article 5 hereofsuch credits shall be refunded to Xxxxxxx within [**] after Sepracor's receipt of Xxxxxxx'x report for such Payment Period prepared pursuant to Section 4.3 below.

Appears in 1 contract

Samples: Development and License Agreement (Sepracor Inc /De/)

Royalties. (a) Arthrex shall pay to Nuo a percentage of Gross Sales Revenues from the sales of Products and New Products as a royalty (the “Royalty”) in the percentages set forth on Exhibit A-3; provided that (i) New Products developed by or on behalf of Arthrex will bear a Royalty equal to five percent (5%) of Gross Sales Revenue, and (ii) in the event that Nuo (x) fails to pay maintenance fees under Section 5(c), (y) fails to make payment of any amount to which Arthrex is entitled to under Section 5(c), or (z) is in breach of Section 6(a), then the amount of any Royalties due hereunder shall be reduced by the amounts to which Arthrex is entitled as a result of such failure or breach (including, without limitation, any costs and expenses incurred by Arthrex in connection with the payment of maintenance fees for such Patents). In consideration for the rights and license granted under event that during the term of this Agreement, Licensee shall, subject Arthrex is required to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties obtain a license from a third party in order to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales avoid infringement of such Licensed Product third party’s Patent rights in a country for the manufacture, sale, or use of Products and/or New Products, and Arthrex obtains such a license to such third party rights, Arthrex shall have the right to deduct from the Royalties otherwise due and payable under Section 4(a) arising from the Gross Sales Revenue in such country, which royalties shall be equal the amounts that Arthrex is obliged to [ ]* of such Net Salespay thereunder; provided, however, thatthat (a) with respect to any Product or New Product, subject Arthrex shall not be entitled to deduct from the Royalties to the provisions of Sections 4.2, 4.3 and 4.4 below, if extent such infringement (i) results from an Enhancement or (ii) would not arise in the absence of an Enhancement, and (b) in no event shall Arthrex be entitled to deduct from the Royalties to the extent such Licensed infringement results from any change in the method of manufacture of such Product is or New Product as compared to method of manufacture prior to the date hereof; provided, that the foregoing shall not in any manner limit the other rights and remedies (whether at law or in equity) of Arthrex hereunder. (b) Notwithstanding the actual Gross Sales Revenue, Arthrex shall pay Nuo an Ipsen MC4 Product unconditional minimum annual royalty (the “Minimum Annual Royalty”) as follows: (a) for calendar year 2018: $2,000,000, (b) for calendar year 2019: $2,500,000, and (c) thereafter increasing by five percent (5%) on each calendar year thereafter through 2021. Following calendar year 2021, there will be no Minimum Annual Royalty payment obligations. Arthrex agrees and acknowledges that utilizes it has no right to, and shall not attempt to, set-off amounts claimed to be owed based on any claim that it has or will have in the Ipsen MC4 [ ]*future against Nuo or its permitted assignees against the Minimum Annual Royalty; provided, that the foregoing shall not in any manner limit the other rights and remedies (whether at law or in equity) of Arthrex hereunder. (c) No later than thirty (30) days after the end of each fiscal quarter, Arthrex shall deliver to Nuo a written report detailing: (i) the number of devices and disposables sold, (ii) Gross Sales Revenues generated from the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 sales, and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rightsresulting Royalty owed to Nuo. Except as set forth in Section 4(d) below, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country and the Minimum Annual Royalty, as applicable, shall be paid by Arthrex to Nuo by wire transfer of immediately available funds in U.S. dollars to the account specified to Arthrex in writing from time to time by Nuo or its designee, within forty –five (A45) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* days after the date end of each fiscal quarter. Nuo shall have the MC4 [ ]* Agreement, (B) [ ]* if right to audit the Ipsen MC4 [ ]* is delivered by Ipsen records of Arthrex relating to Licensee pursuant to Section 2.11.1 Gross Sales Revenues at any time after during the [ ]* following normal business hours upon reasonable advance written notice. The audit will be performed by an independent third party at Nuo’s sole expense. If the date of audit determines that Nuo was not paid the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarificationfull Royalty owed, the determination of Arthrex shall pay the amount of royalties * CONFIDENTIAL TREATMENT REQUESTEDany shortfall within five (5) business days of notice by Nuo and submission of the audit findings. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933If Arthrex fails to pay such shortfall within such five (5) business day cure period, AS AMENDED. then interest shall accrue on such shortfall (from the date it was due) at fifteen percent (15%) per annum. (d) Without limiting Section 4(c), any undisputed payment required by this Agreement that is not made within five (5) business days of the date such payment is due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions terms hereof shall bear interest at the annual rate of Article 5 hereoften percent (10%) compounded annually. (e) Notwithstanding anything in this Section 4 to the contrary, Nuo and Arthrex hereby agree that Arthrex shall pay $775,000 (the “Prepayment Amount”) to Nuo on or prior to October 19, 2015 as a prepayment of Royalties for the third and fourth quarters of calendar year 2015. Following the payment by Arthrex of the Prepayment Amount, the Parties acknowledge and agree that neither Party shall owe any Royalties or other fees under the Original Agreement or this Agreement in respect of the third and fourth quarters of calendar year 2015 for the Products unless the amount of the Royalties that would have been payable in respect of the third and fourth quarters of calendar year 2015 under Section 4(a) above are (i) in excess of $900,000, in which case Arthrex shall pay to Nuo on or prior to February 15, 2016 an amount equal to such excess or (ii) less than $900,000, in which case Nuo shall pay to Arthrex on or prior to February 15, 2016 an amount equal to the absolute value of such difference.

Appears in 1 contract

Samples: License Agreement (Nuo Therapeutics, Inc.)

Royalties. In consideration of the assignment of Prior Intellectual Property under Section 8.2 and of the Celator-Sponsored Intellectual Property under Section 8.3, Celator shall pay to BCCA, without duplication, the following royalties: (a) in respect of Royalty-Bearing Products embodying Valid Claims in the countries of sale and for which only BCCA inventors are named on the rights and license granted under this Agreement, Licensee shall, subject to the provisions Royalty-Bearing Patent: (i) a royalty of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon ***** of cumulative Net Sales of any given Licensed Product in any given country Royalty-Bearing Products in the Territory during countries of sale in respect of the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]first ******* of such Net Sales; provided, however, that, subject to Sales annually in the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, Territory, (ii) a royalty of ***** of cumulative Net Sales of Royalty-Bearing Products in the Ipsen MC4 [ ]countries of sale in respect of such Net Sales equal to and/or in excess of ******* was accepted annually in writing by Licensee pursuant to Section 2.11.1 the Territory; (b) in respect of Royalty-Bearing Products embodying Valid Claims in the countries of sale and (iii) for which BCCA inventors and other inventors are named on the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent RightsRoyalty-Bearing Patent, then a percentage of the royalty rate set out in Subsection 6.1(a) calculated using the following formula: Number of BCCA inventors named on Royalty-Bearing Patent X Royalty rate otherwise applicable to under Subsection 6.1(a) based on applicable Net Sales = Adjusted Royalty Rate Total number of such Ipsen MC4 Product in any given country in inventors named on Royalty-Bearing Patent For the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither purposes of the foregoing clauses formula, in the event that Dr. Bally and/or Xx. Xxxxx are named as inventors on a Royalty-Bearing Patent, they shall be considered BCCA inventors; and (Ac) in respect of Royalty-Bearing Products that do not embody Valid Claims in the countries of sale, the royalties owed by Celator for the sale of such Royalty-Bearing Products shall be ***** of the royalties provided in Subsection 6.1(a) and (B) is 6.1(b), as applicable. For purposes of clarification, the determination of the amount of royalties BCCA shall receive a ***** CONFIDENTIAL TREATMENT REQUESTEDfor each Royalty-Bearing Product without regard to ******************************. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 The royalty payments set forth above shall be made on a Licensed Productpayable for each Royalty-by-Licensed Bearing Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof.

Appears in 1 contract

Samples: Collaborative Research Agreement (Celator Pharmaceuticals Inc)

Royalties. 4.01 In consideration for of the rights and license granted under this License Agreement, Licensee shall, subject ACSENTIENT shall pay SENJU as running royalties a sum corresponding to [ * ] of the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country the Preparation in the Territory for [ * ] from the First Commercialization. Thereafter, ACSENTIENT shall pay SENJU as running royalties a sum corresponding to [ * ] of the Net Sales of the Preparation during the Royalty Term applicable remaining term of this License Agreement. Provided, however, that if the Net Sales in any year decreases more than [ * ] compared to sales the preceding year due to the commercialization of such Licensed Product a generic product equivalent to the Preparation in such countrythe Territory, which the running royalty rate shall [ * ] and ACSENTIENT shall pay SENJU as royalties shall be equal a sum corresponding to [ ]* ] of such the Net SalesSales of the Preparation during the remaining term of this License Agreement. 4.02 Notwithstanding above paragraph 4.01, ACSENTIENT shall pay SENJU minimum annual royalties of; (i) [ * ] for the [ * ] following the First Commercialization; (ii) [ * ] for the [ * ] following the First Commercialization; and (iii) [ * ] for the [ * ] following the First Commercialization: * CONFIDENTIAL PORTIONS HAVE BEEN OMITTED BASED UPON A REQUEST FOR CONFIDENTIAL TREATMENT PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934 AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION. provided, however, that, that above minimum annual royalties payment by ACSENTIENT to SENJU shall be subject to the provisions existence of Sections 4.2following conditions for the Preparation: (a) The First Commercialization has occurred; (b) The Preparation has obtained Governmental Approval usable for [ * ] [ * ]; (c) The Preparation is not associated with [ * ] (provided that both Parties confirm (to the extent practicable) and acknowledge that the Preparation is administered pursuant to package insert to the patient(s) who experience [ * ] and that [ * ] [ * ] and/or availability of Preparation due [ * ]; and, (d) The Preparation has not been found by [ * ] [ * ]. If these conditions are not met for the Preparation, 4.3 SENJU and 4.4 belowACSENTIENT shall conduct independent market research to determine product potential and set minimum royalties based on [ * ] [ * ] of the [ ( ] or ACSENTIENT shall have the option [ * ] [ * ]. In the event ACSENTIENT exercises said option [ * ], if ACSENTIENT's exclusive right granted by SENJU under this License Agreement shall [ * ], and SENJU will have a right to [ * ] [ ]. In no event, will minimum annual royalties be imposed on ACSENTIENT for the [ * ] year and [ * ] year following First Commercialization except for the case of paragraph 4.03. 4.03 If ACSENTIENT is merged into or acquired by a third party during the term of this License Agreement, the following minimum running royalties shall be payable to SENJU; (i) such Licensed Product If ACSENTIENT is an Ipsen MC4 Product that utilizes merged or acquired by Third Party on or prior to the Ipsen MC4 date of First Commercialization: (a) For [ * ] of First Commercialization: [ * ]*, (b) For [ * ] of First Commercialization: [ * ] (c) For [ * ] of First Commercialization and subsequent years to the termination of this License Agreement:[ * ] (ii) If ACSENTIENT is merged or acquired by Third Party on or during the Ipsen MC4 [ * ] of First Commercialization: (a) For [ * ] of First Commercialization: [ * ] (b) For [ * was accepted in writing by Licensee pursuant ] of First Commercialization and subsequent years to Section 2.11.1 and the termination of this License Agreement:[ * ] * CONFIDENTIAL PORTIONS HAVE BEEN OMITTED BASED UPON A REQUEST FOR CONFIDENTIAL TREATMENT PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934 AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION. (iii) the Ipsen MC4 [ ]* If ACSENTIENT is Covered merged or acquired by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time Third Party on or after the [ * ] of First Commercialization; (a) [ * ]* following until termination of this License Agreement. The minimum running royalty payments referred in this paragraph 4.03: (i) shall be subject to the date existence of the MC4 [ ]* Agreement and such Ipsen MC4 Product four (4) conditions for the Preparation set forth in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) paragraph 4.02 above and (Bii) is applicableare not cumulative. For purposes of clarificationIf such condition does not exist, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 minimum running royalty shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment adjusted in the manner referred in paragraph 4.02 above. 4.04 No multiple running royalty will be payable even if the Preparation, its manufacture, use or sale, are or will be covered by more than one claim or patent. 4.05 All of the running royalties due to Ipsen pursuant to this Article 4 including minimum royalties in paragraph 4.01 through 4.03 shall be made paid within [ * ] following the end of ACSENTIENT's fiscal year which commences following the First Commercialization. ACSENTIENT's fiscal year commences January 1st of a year and ends December 31 in accordance with the provisions of Article 5 hereofsame year. 4.06 Unless otherwise expressly provided herein, no running royalty payment to Senju under this License Agreement shall be refundable in whole or in part.

Appears in 1 contract

Samples: License Agreement (Ista Pharmaceuticals Inc)

Royalties. In consideration for 4.1 Within sixty (60) days following the rights and license granted under close of each calendar quarter during the term of this Agreement, Licensee shall, subject LICENSEE shall furnish and deliver to the provisions SCHERING a full and true accounting of Sections 4.2, 4.3 its and 4.4 below, pay royalties to Ipsen based upon its Affiliates' Net Sales of any given Licensed Product Products hereunder during such calendar quarter and shall simultaneously pay to SCHERING a sum equal to the aggregate of the Earned Royalty due thereon. 4.2 All royalties payable hereunder shall be paid in any given country United States dollars. If amounts are invoiced in other than U.S. dollars, Net Sales based on such amounts shall be converted to U.S. dollars in accordance with U.S. Generally Accepted Accounting Principles at the closing rates of exchange for buying U.S. dollars, as correctly published in the Territory during Wall Street Journal on the Royalty Term applicable to sales last business day of such Licensed Product in such country, the calendar quarter for which royalties are being calculated. 4.3 No Earned Royalty shall be equal payable in respect of sales among LICENSEE and its Affiliates, it being understood that royalties are to [ ]* be paid on resale of such Net SalesLicensed Products to independent third parties in bona fide, arms-length transactions; provided, however, that, subject in addition to the provisions Earned Royalty due on Net Sales to third parties, LICENSEE shall pay Earned Royalty on all Licensed Products used by LICENSEE or its Affiliates in their own research. 4.4 If LICENSEE shall hereafter be required, in respect of Sections 4.2, 4.3 and 4.4 below, if (i) such its sales of any Licensed Product in a country, to pay royalties to any third party whose patent is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing infringed by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date solely because of the MC4 [ ]* Agreementuse of a Cell Line, LICENSEE may credit such third party royalties against any Earned Royalty due SCHERING hereunder in the country, but in no event shall Earned Royalty due SCHERING for any calendar quarter be thereby reduced to less than seventy five percent (B75%) [ ]* if of the Ipsen MC4 [ ]* is delivered Earned Royalty which otherwise would have been due to SCHERING for such calendar quarter for Net Sales in such country. 4.5 SCHERING shall have the right, by Ipsen an independent public accountant reasonably acceptable to Licensee pursuant LICENSEE and employed by SCHERING and at SCHERING's own expense, to examine, during normal business hours and not more than once each calendar year, the pertinent books and records of LICENSEE, including without limitation customer sales records of LICENSEE and its Affiliates, for the purpose of determining the correctness of royalty payments made hereunder and the compliance by LICENSEE with the quantity sales limitations for Licensed Products described in Section 2.11.1 at 2.1, it being understood that such examination with respect to any time after the [ ]* calendar quarter hereunder shall take place not later than three (3) years following the date expiration of said period. 4.6 LICENSEE may deduct from Earned Royalties payable to SCHERING hereunder taxes required to be withheld by any government which are recoverable by SCHERING in the MC4 [ ]* Agreement and United States under any tax convention treaty, or regulation. LICENSEE shall promptly furnish SCHERING with true copies of all official tax receipts covering such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereoftaxes.

Appears in 1 contract

Samples: Licensing Agreement (Endogen Inc)

Royalties. In consideration for Subject to Section 3, Company agrees as follows: A. The Company will pay to Goldrath a [*] royalty on the rights [*] of all items of Royalty Bearing Product. Goldrath acknowledges and license granted under this Agreement, Licensee shallagrees that, subject to Section 2.C, he is not entitled to receive any royalties on any product (including any other portion of the provisions Covered Products) other than the Royalty-Bearing Products, and only a single royalty shall be paid on any Royalty-Bearing Product. [*] 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. B. The Company's payment of Sections 4.2earned royalties hereunder is subject to the following [*], 4.3 and 4.4 belowduring [*] only (no such [*] is due for any subsequent period): [*] [*] [*] [*] [*] [*] [*] [*] Within sixty (60) days the end of each such [*], the Company shall pay royalties to Ipsen based upon Goldrath the positive result, if any, of (1) the applicable [*] amount from the table above MINUS (2) the sum of (i) the [*] paid under Section 2.A for all periods ending on that date plus (ii) all [*] previously paid Goldrath pursuant to this Section 2.B. C. If Royalty-Bearing Products are sold together with other items as part of a Bundled Product, unless otherwise agreed, the Net Sales Revenues resulting from such sale will be based on the allocable portion (determined on a pro rata basis, based on the Company's stand alone published list prices for the items being sold together) of the total net sales revenues (determined in the same manner as Net Sales Revenues) from the sale of said Bundled Product. For this purpose, a "Bundled Product" is a combination of Royalty-Bearing Products and other items that is marketed collectively as a single product and/or for a single price (e.g, as a so-called "kit"). D. Within sixty (60) days after the end of each of its fiscal quarters, the Company shall provide a written royalty report to Goldrath setting forth the amount of royalties due hereunder with respect to the fiscal quarter just ended and a general description of how that amount was calculated. Payments under Section 2.A (and Section 2.B if applicable) are due concurrently with the delivery of said report. X. Xxxxxxxx shall have the right to cause a third party auditor, hired by him on a non-contingency fee basis and reasonably acceptable to Company, to enter Company's premises where the Company's books and records relating to the Royalty-Bearing Products are normally kept, after reasonable prior written notice and during normal business hours, for purposes of auditing or inspecting all such books of account for the period(s) requested in such notice. The cost of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties audit or inspection shall be equal to [ ]* of such Net Salesborne by Goldrath; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, Company shall bear the reasonable costs thereof if (i) such Licensed Product it is an Ipsen MC4 Product finally determined that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTEDpaid by for the period(s) audited or inspected is, in the aggregate, less that ninety percent (90%) of the aggregate amount of royalties actually due hereunder for said period(s). OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933If any such audit or inspection reveals that an overpayment or underpayment of royalties may have occurred, AS AMENDED. due Ipsen pursuant to this Section 4.1 then the necessary correcting payment shall be made within thirty (30) days after the amount of the discrepancy is finally determined. F. If the Company determines that the royalties provided for herein are excessive (e.g., if an expected patent does not issue or an applicable patent lapses, is held invalid or [*] 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. otherwise is not enforceable) and/or render the affected Royalty-Bearing Products commercially noncompetitive as to price (based on the Company's average net selling price (as reasonably set by the Company with due consideration for competition and other market factors and any applicable cost-reimbursement guidelines) and cost of goods, and assuming a Licensed Product-by-Licensed Product basis minimum gross margin before royalties of not less than [*] (or higher, if typical in the Company's industry for such products) is a commercially reasonable requirement), then upon Company's request, the Company and on Goldrath shall negotiate, reasonably and in good faith, a country-by-country basis. Payment of reduction in such royalties; provided, however, in no event shall said royalties due be reduced except by mutual agreement in writing (agreement not to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofunreasonably withheld).

Appears in 1 contract

Samples: Product Royalty Agreement (Bei Medical Systems Co Inc /De/)

Royalties. 4.1 For the rights, privileges, and license granted hereunder, LICENSEE shall pay royalties to NDSU/RF in the manner hereinafter provided to the end of the term of the PATENT RIGHTS or until this Agreement shall be terminated: (a) Running Royalties in an amount equal to FIVE percent (5%) of NET SALES of the LICENSED PRODUCTS and LICENSED PROCESSES used, leased or sole by and/or for LICENSEE and/or its sublicensees. Royalty payments shall be due October 31 of each year under this Agreement. (b) In addition to Running Royalties, Fifty Percent (50%) of any payments, including, but not limited to, sublicense issue fees, received from sublicensees in consideration for the rights LICENSED PRODUCTS and license granted under this AgreementLICENSED PROCESSES. 4.2 All payments due hereunder shall be paid in full, Licensee shallwithout deduction of taxes or other fees which may be imposed by any government and which shall be paid by LICENSEE. 4.3 For purposes of determining royalties, subject only a single royalty shall be paid to NDSU/RF for each product and royalties for use of the provisions of Sections 4.2, 4.3 and 4.4 below, pay KNOW-HOW shall be waived so long as LICENSEE is paying royalties to Ipsen based upon Net Sales NDSU/RF on the same product for use of any given Licensed Product in any given country in LICENSED PATENT. Royalties for the Territory during the Royalty Term applicable to sales use of such Licensed Product in such country, which royalties patents shall be equal to [ ]* paid for the life of such Net Sales; provided, however, that, subject to each patent. Royalties for use of the provisions KNOW-HOW shall begin on the Effective Date of Sections 4.2, 4.3 the Agreement and 4.4 below, if continue until ten (i10) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after years from the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date First Commercial Production. To encourage development and commercialization of the MC4 [ ]* Agreement and such Ipsen MC4 Product LICENSED PRODUCTS or LICENSED PROCESSES, the applicable royalty for sales made in a formulation consisting each of the Ipsen MC4 [ ]* first two contract years shall be FIVE percent (5%). If a United States patent is used by Licensee not issued, and LICENSEE wishes to commercialize the LICENSED PRODUCT or LICENSED PROCESS utilizing the KNOW-HOW, both parties agree to negotiate in [ ]* good faith an applicable royalty, if any. 4.4 Royalty payments shall be paid in United States dollars in Fargo, North Dakota, or (C) [ ]* if neither at such other place as NDSU/RF may reasonably designate consistent with the laws and regulations controlling in any foreign country. If any conversion of foreign currency to U.S. dollars shall be required in connection with the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount payment of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933hereunder, AS AMENDED. due Ipsen pursuant to this Section 4.1 such conversion shall be made by using the exchange rate existing in the United States (as reports in THE FORUM or, if not THE FORUM, then in the WALL STREET JOURNAL) on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment the last business day of royalties due the calendar quarterly reporting period to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofwhich such royalty payments relate.

Appears in 1 contract

Samples: License Agreement (Agsco Inc)

Royalties. In consideration for (a) Subject to the rights terms and license granted under conditions of, and during the term of, this Agreement, Licensee shallIsis will pay to Alnylam royalties on sales of Double Stranded RNA Products that are Isis Products by Isis, subject its Affiliates or sublicensees equal to [**]% of Net Sales. Isis may reduce the royalty due under this section by [**]% of any additional royalties that Isis owes to Third Parties on such Double Stranded RNA Products that are Isis Products that arise from Isis acquiring access to new technologies after the Restatement Date; provided, however that (i) the royalty due under this section can never be less than a floor of [**]%, (ii) additional royalties arising as the result of the addition, pursuant Section 11.8, of Alnylam Future Chemistry Patents or Alnylam Future Motif and Mechanism Patents to the provisions Alnylam Patent Rights licensed to Isis, or as the result of Sections 4.2an expansion of Isis’ licenses pursuant to Section 6.5(d), 4.3 cannot be used to reduce the royalty and 4.4 below(iii) Isis shall not be entitled to reduce, pursuant to this sentence, its royalty obligation to Alnylam below a royalty obligation equal to the lesser of (y) Alnylam’s aggregate royalty obligations [**] existing as of the Effective Date [**] and (z) Alnylam’s aggregate royalty obligations [**] as such obligations may be reduced from time to time after the Effective Date. (b) Subject to the terms and conditions of, and during the term of, this Agreement, Isis will pay to Alnylam royalties to Ipsen based upon on Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such countryIsis Single Stranded RNAi Products by Isis, which royalties shall be its Affiliates or sublicensees equal to [ [**]* % of such Net Sales; provided, however, thatthat if Isis is the subject of an Acquisition, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to payable under this Section 8.2(b) on the Net Sales of Isis Single Stranded RNAi Products following such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall Acquisition will be (A) [ [**]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof%.

Appears in 1 contract

Samples: Strategic Collaboration and License Agreement (Alnylam Pharmaceuticals, Inc.)

Royalties. In consideration for 5.1 Licensee shall pay to Licensor, during the rights and license granted under this AgreementTerm, Licensee shall, subject to the provisions a royalty of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon [***] percent ([*]%) of Net Sales of any given Licensed Product Products sold by Licensee in any given a country in the Territory during the Royalty Term applicable to sales of where such Licensed Product Products are covered by a Valid Claim of a Licensed Patent in such country, which royalties that country ("Royalty"). (a) Only one Royalty shall be equal to [ ]* paid for each instance of such Net Sales; provideda Licensed Product. By way of example, however, that, subject to whether the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product covered by one (1) or more than one (1) Valid Claims of one (1) or more Licensed Patents, or by one (1) or more than one (1) claim Valid Claims of Licensed Patents in more than one (1) country. (b) Should Licensee grant any sublicenses, the terms and conditions of such sublicenses shall be in Licensee's sole discretion, provided that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing Royalties shall be paid by Licensee pursuant to Licensor in accordance with this Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to 5 on Net Sales of all Licensed Products sold under such Ipsen MC4 Product sublicenses where such Licensed Products are covered by a Valid Claim in any given the country in which the Territory during Licensed Product is sold. For the avoidance of doubt, a Sublicensee does not include any person or entity purchasing Licensed Products from Licensee, its Affiliate or its Sublicensee under a distributorship arrangement. 5.2 Licensee shall pay the Royalty Term applicable to sales due under this Agreement for each Quarterly Period within [***] after the end of such Ipsen MC4 Product Quarterly Period. During a Quarterly Period in which a Royalty payment is due, Licensee shall provide Licensor with GAAP-compliant financial statements showing, for the relevant Quarterly Period, the amount of Net Sales of Licensed Products by Licensee, or any Sublicensee, to any third party for the sale of Licensed Products, any deductions and offsets allocated with respect to such country shall be (A) [ ]* if sale of Licensed Products, the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee calculation of Net Sales, and other information reasonably necessary for an accurate accounting of the payments due pursuant to Section 2.11.1 this Agreement. 5.3 If payments are not received by Licensor within [ ]* [***] after the end of the relevant Quarterly Period, Licensee shall pay to Licensor interest on the overdue payment from that due date to the date of actual payment at a rate of [***] percent ([**]%) per annum computed for the MC4 [ ]* Agreementnumber of days actually elapsed and a year of three hundred sixty-five (365) days, (B) [ ]* or if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarificationlower, the determination of the maximum amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofpermitted under applicable Law.

Appears in 1 contract

Samples: Exclusive License Agreement (Kiora Pharmaceuticals Inc)

Royalties. In (a) Gelesis shall pay to PureTech, during the applicable term described in Section 2(b) below, earned royalties at the following rates: A royalty on all Net Sales by Gelesis-Bermuda, its affiliates or any Sublicensee of Licensed Products that are not FoodProducts: 2 % A royalty on all Net Sales by Gelesis-Bermuda or its affiliates of Licensed Products that are Food Products: 2 % If the manufacture, use, lease, or sale of any Licensed Product is covered by more than one of the Valid Claims under the Patent Rights in the Field, or any patents in the Improvements or Food IP, multiple royalties shall not be due. (b) The Parties hereby agree that should intellectual property rights owned by a third party pose as an obstacle to the development or commercialization of any Licensed Product that is not a Food Product (the “Blocking IP”), Gelesis-Bermuda or an applicable affiliate of Gelesis-Bermuda shall, after consulting in good faith with PureTech, seek a potential settlement solution with the Blocking IP holder and the royalty rates for Licensed Products that are not Food Products set forth in Section 2(a) shall be reduced by the amount of such consideration paid for the rights and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net SalesBlocking IP; provided, however, that, subject however that in no case shall the royalty rates for Licensed Products that are not Food Products set forth in Section 2(a) be reduced by more than fifty percent (50%) as a result of the application of this Section 2(b). (c) The obligation of Gelesis to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pay royalties pursuant to Section 2.11.1 and (iii2(a) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and terminate on a country-by-country basis. Payment basis concurrently with (i) the expiration or termination of royalties due to Ipsen pursuant to this Article 4 shall be made the applicable Valid Claim under the Patent Rights in accordance with the provisions country in which the Licensed Product is sold, or (ii) the withdrawal, cancellation, or disclaiming of Article 5 hereofthe applicable Valid Claim under the Patent Rights in the country in which the Licensed Product is sold.

Appears in 1 contract

Samples: Royalty Assignment Agreement (Capstar Special Purpose Acquisition Corp.)

Royalties. In (a) As further, ongoing consideration for the exclusive distribution rights herein granted in Paragraph 3(a) and the license granted under in Paragraph 4(b) hereof, Storz agrees to pay to Oculex an earned royalty on Net Sales during each calendar quarter or portion thereof during the term of this Agreement, Licensee shall, subject such earned royalty to be calculated utilizing the royalty percentages specified in this Section 5. Storz shall be entitled to offset in full against earned royalty payable hereunder the total Product Supply Price paid by Storz for all Units of Oculex Product on which Net Sales were reported for royalty calculation purposes for the applicable quarter. Subject to the provisions reductions in the earned royalties set forth in Paragraph 5(b) below if the Oculex Product is not an Exclusive Eye Implant Product, the royalty percentage to be used for such calculation of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon earned royalty on Net Sales of any given Licensed Product Oculex Products in any given each country of the Territory shall be determined from the tables set forth hereinafter, based upon the particular U.S. dollar amount of actual cumulative Net Sales during the applicable calendar year throughout the Territory and Storz' ability to promote the alternative efficacy and side effect claims in the Territory country concerned, as set forth hereinafter: (i) if the Oculex Product has been demonstrated in well controlled phacoemulsification-technique cataract surgery trials as [*] more [*] than [*] with [*] or [*] than normally associated with [*], the percentage royalty payable by Storz on Net Sales during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties calendar quarter shall be equal based upon the cumulative Net Sales during [*] Confidential treatment requested with respect to [ ]* certain portions of this exhibit the relevant calendar year during the term of this Agreement as follows, and in accordance with the instructions for calculating such percentage royalty described in Paragraph 5(a)(iv): Cumulative Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 belowSales in Territory for Calendar Year Percentage Royalty --------------------------------------------------- ------------------ [*] [*] [*] [*] [*] [*] or, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*not satisfied, then (ii) if the Ipsen MC4 [ Oculex Product has been demonstrated in well controlled phacoemulsification-technique cataract surgery trials as [*] more [*] than [*] with [*] or [*] than normally associated with [*]* was accepted in writing , the percentage royalty payable by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Storz on Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country calendar quarter shall be (A) [ ]* if based upon the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after cumulative Net Sales during the date relevant calendar year during the term of the MC4 [ ]* Agreementthis Agreement as follows, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions instructions for calculating such percentage royalty described in Paragraph 5(a)(iv): Cumulative Net Sales in Territory for Calendar Year Percentage Royalty --------------------------------------------------- ------------------ [*] [*] [*] [*] [*] [*] or, if (ii) is not satisfied, then (iii) Oculex Product does not meet minimum requirements hereunder and [*] under this Section 5, [*] Storz shall [*] pay the Product Purchase Price specified in Paragraph 3(e) for each Unit of Article 5 hereofOculex Product delivered under this Agreement.

Appears in 1 contract

Samples: Distribution, Supply and License Agreement (Oculex Pharmaceuticals Inc /)

Royalties. In consideration for the rights and license granted under this Agreement, Licensee shall, subject (a) SpePharm shall pay to the provisions of Sections 4.2, 4.3 and 4.4 below, pay Company royalties to Ipsen based upon on aggregate Net Sales of any given Licensed the Product in any given country the Licensed Territory for each Calendar Year as set forth below: Portion of aggregate Net Sales in the Licensed Territory during the Royalty Term applicable to sales less than or equal [*] in any Calendar Year [*] Portion of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to aggregate Net Sales of such Ipsen MC4 Product in the Licensed Territory greater [*] in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country Calendar Year [*] (b) The royalties payable under Section 10.4 shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreementapply, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment , on Net Sales of the Product in each country in the Licensed Territory commencing on the date of the First Commercial Sale of the Product in such country and continuing until the later of [*] (such period, the “Royalty Term”). (c) If, on a country-by-country and calendar quarter-by-calendar quarter basis, a Generic Product is sold in such country during such calendar quarter, then following the date of first commercial launch of such Generic Product in such country, the royalties payable with respect to Net Sales of the Product pursuant to Section 8.4(a) in such country thereafter shall be reduced by [*] of the royalties otherwise payable pursuant to Section 8.4(a). (d) If SpePharm or any of its Affiliates or Sublicensees enters into an agreement with a Third Party to obtain a license under a patent right or other right that is deemed by its counsel to be necessary to use, sell or otherwise Commercialize the Product in the Licensed Territory or otherwise to practice the rights under the Company Patents or Company Know-How granted to SpePharm in Section 2.1, or if SpePharm or any of its Affiliates or Sublicensees shall be subject to a final court or other binding order or ruling or settlement agreement requiring any payments in respect of the use, sale or other Commercialization of any Product in a country in the Licensed Territory, SpePharm may deduct from royalties due to Ipsen Company [*] of any payments actually paid to such Third Party for such license, or pursuant to such final court or other binding order or ruling or settlement agreement, with respect to such Product in such country; provided that the royalties payable to Company for any particular calendar quarter for such Product in such country shall not be reduced by more than [*] by reason of this Article 4 Section 10.4(d), provided further that any such payments to Third Parties not applied to reduce royalties as a result of the forgoing proviso may be carried over to subsequent calendar quarters and applied to reduce royalties (subject to the aforementioned [*] limitation) in such subsequent calendar quarters. (e) Within forty-five (45) days after the end of each calendar quarter, SpePharm shall provide a royalty report showing, on a country-by-country basis: (i) the number of units of the Product sold by SpePharm and its Affiliates and Sublicensees during such calendar quarter reporting period; (ii) The gross sales associated with each Product sold by SpePharm and its Affiliates and Sublicensees during such calendar quarter; (iii) the Net Sales of the Product sold by SpePharm and its Affiliates and Sublicensees during such calendar quarter reporting period (together with reasonable supporting information underlying the calculation of Net Sales in such period); (iv) the royalties payable in Euros which shall have accrued hereunder with respect to such Net Sales; and (v) details of any corrections or true-ups from previously reported Net Sales amounts; (vi) withholding taxes, if any, required by Applicable Laws to be made in accordance deducted with respect to such royalties; and (vii) the provisions rate of Article 5 hereofexchange used by SpePharm under Section 10.5. Concurrent with these reports, SpePharm shall remit to Company all payment due for the applicable calendar quarter. If no royalty or payment is due for any royalty period hereunder, SpePharm shall so report.

Appears in 1 contract

Samples: Exclusive License Agreement (Navidea Biopharmaceuticals, Inc.)

Royalties. In consideration for the rights and license granted under this AgreementKnight will pay to Licensor a non-refundable, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon non-creditable royalty on aggregate annual Net Sales of the Licensed Products at the following rates, as calculated by multiplying the applicable rate set forth below by the corresponding amount of incremental aggregate Net Sales in all or any given portion of the Calendar Year: (a) A base royalty of [**] on all aggregate annual Net Sales up to [**]; (b) [**] on all aggregate annual Net Sales greater than [**] and up to [**] (c) [**] on all aggregate annual Net Sales greater than [**] and up to [**]; (d) [**] on all aggregate annual Net Sales greater than [**]. (e) Notwithstanding the foregoing, for any Net Sales of a Licensed Product in any a sub-licensed country, the applicable royalty rate shall be calculated as the greater of: (i) the lesser of (a) [**] of Net Sales in such sub-licensed country, or (b) [**] of Royalty Revenue during the applicable time period; (ii) [**] of Net Sales in such sub-licensed country. Knight shall calculate all amounts payable to Licensor pursuant to this Section 6.2 with respect to Net Sales at the end of each Calendar Quarter. Knight shall pay to Licensor the royalty amount due for Net Sales during a given country Calendar Quarter within thirty (30) days after the end of such Calendar Quarter. Each payment of royalties due to Licensor shall be accompanied by (i) a statement of the amount of gross sales of each Licensed Product in the Territory during the Royalty Term applicable Calendar Quarter, (ii) an itemized calculation of Net Sales (a) in the Territory as a whole and (b) on a country-by-country basis, showing for both (a) and (b) deductions provided for in the definition of “Net Sales” during such Calendar Quarter, and (iii) a calculation of the amount of royalty payment due on such Net Sales for such Calendar Quarter. Without limiting the generality of the foregoing, Knight shall require its Affiliates and sublicensees and assignees to account for its Net Sales and to provide such reports with respect thereto as if such sales were made by Knight. Knight shall have the sole right to determine if it believes that a license under Third Party patents or Third Party know-how is necessary or useful to develop, manufacture or commercialize the Licensed Products in the Field in the Territory. In the event it makes such determination following the Effective Date, the costs of each such license, to the extent the costs directly relate to the Licensed Products in the Field in the Territory shall be paid by Knight, subject to deduction from royalties to the extent set forth in the paragraph below. In the event that royalties are payable by Knight to Licensor with respect to any Licensed Product in any country in the Territory under this Section 6.2, then, subject to the last paragraph of this Section 6.2, Knight shall have the right to deduct a maximum of [**] of any royalties or other amounts actually paid by Knight to a Third Party with respect to any license obtained pursuant to the paragraph above with respect to such Licensed Product in any country in the Territory, but only to the extent that the patents or know-how licensed under such other license are necessary for the development, manufacture or commercialization of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during Field in the Royalty Term applicable Territory, from royalty payments otherwise due and payable by Knight to sales of Licensor under this Section 6.2 with respect to such Ipsen MC4 Licensed Product in such country shall be (A) [ ]* if in the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after Field in the date of the MC4 [ ]* AgreementTerritory, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment In no event shall the royalty reductions described in this Section 6.2 reduce the royalties payable by Knight for a Licensed Product in a country in any given Calendar Quarter to less than [**] of royalties the amounts otherwise payable by Knight for such Licensed Product in such country in such Calendar Quarter. Knight may carry over and apply any such royalty reductions, which are incurred or accrued in a Calendar Quarter and are not deducted in such Calendar Quarter due to Ipsen pursuant the limitation set forth above in this Section 6.2, to any subsequent Calendar Quarter(s) and shall begin applying such reduction to such royalties as soon as practicable and continue applying such reduction on a Calendar Quarterly basis thereafter until fully deducted, in all cases subject to the limitation set forth above in this Article 4 shall be made in accordance with the provisions of Article 5 hereofSection 6.2.

Appears in 1 contract

Samples: Distribution, License and Supply Agreement (Onconova Therapeutics, Inc.)

Royalties. In consideration for 6.1 LICENSEE will pay to REGENTS earned royalties at the rights and license granted under this Agreement, Licensee shall, rate of [ * ] of the NET SALES of LICENSED PRODUCT(S) OR LICENSED METHOD; subject to the provisions following: i. If LICENSEE [ * ] to make any payment (including royalties or other license fees) to a third party to obtain a license or other patent rights [ * ], such third party payments will be creditable against amounts owed to REGENTS in the order such amounts are owed until fully credited, provided that [ * ] will credits reduce royalties owed to REGENTS by more than [ * ] of Sections amounts owed to REGENTS [ * ]. ii. Modified or Combined Royalty Adjustment In the event a LICENSED PRODUCT(S) is modified by or combined with other products or patents owned or controlled by third party in order to produce product(s) for development or commercialization, whether by LICENSEE or a LICENSEE sublicensee, in which the commercial product is a therapeutic or prophylactic vaccine, the earned royalty due to REGENTS shall be adjusted to [ * ]. In the event a LICENSED PRODUCT(S) is combined with other technologies patented by third party in order to produce product(s) for development or commercialization, whether by LICENSEE or a LICENSEE sublicensee, in which the commercial product is not a vaccine and the total combined royalty burden on Net Sales exceeds [ * ], the earned royalty due to REGENTS shall be adjusted according to the following formula, where R is the royalty set in the first paragraph of this paragraph 6.1 (“Set Royalty”), C is [ * ] and B is the total combined royalty burden. Adjusted royalty = R × (C/B) For example, if LICENSEE’s total combined royalty is [ * ] and the Set Royalty is [ * ], the adjusted royalty due to REGENTS would be [ * ] × [ * ], or [ * ]. Notwithstanding the foregoing, in no event shall the royalty due to REGENTS under the above formula for a product that is not a therapeutic or prophylactic vaccine be less than [ * ] of the Set Royalty. If LICENSEE utilized the unadjusted Sublicensing Revenue Percentage in 4.2, 4.3 then LICENSEE may not adjust Net Royalty from a sublicense under 6.1. 6.2 Royalties will be payable on SALES covered by both pending patent applications and 4.4 below, pay royalties issued patents. 6.3 Royalties accruing to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable REGENTS will be paid to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 REGENTS quarterly within [ ]* ] days after the end of each calendar quarter, and [ * ] days with respect to NET SALES by sublicensees. 6.4 LICENSEE will also pay to REGENTS an annual license maintenance fee of Five Thousand Dollars ($5,000) beginning on the first anniversary date of the MC4 [ ]* Agreement, (B) [ ]* if Effective Date and on each anniversary of the Ipsen MC4 [ ]* is delivered Effective Date thereafter during the term of the AGREEMENT until the first SALE by Ipsen to Licensee pursuant to Section 2.11.1 at any time LICENSEE of a LICENSED PRODUCT. 6.5 Beginning in the first calendar year after the first occurrence of NET SALES and in each succeeding calendar year thereafter, LICENSEE will pay to the REGENTS a minimum annual royalty of [ * ] for the life of this Agreement. This minimum annual royalty will be paid to the REGENTS by January 30 of each year and will be credited against the earned royalty due and owing for the calendar year in which the minimum payment was made. 6.6 LICENSEE will pay the following one-time milestone payment: (a) For the first LICENSED PRODUCT, LICENSEE shall pay to REGENTS a milestone payment of [ * ] upon [ * ] and; (b) For the first LICENSED PRODUCT, LICENSEE shall pay to REGENTS a milestone payment of [ * ] upon [ * ] and; (c) For the first LICENSED PRODUCT, LICENSEE shall pay to REGENTS a milestone payment of [ * ] upon [ * ]* following . 6.7 All payments due REGENTS will be payable in United States Dollars. When LICENSED PRODUCTS, LICENSED SERVICES, or LICENSED METHOD are SOLD for monies other than United States Dollars, royalties will first be determined in the date foreign currency of the MC4 country in which the SALE was made and then converted into equivalent United States Dollars. The exchange rate will be that rate quoted in the Wall Street Journal on the average of last [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting ] business days of the Ipsen MC4 [ ]* is used reporting period. 6.8 Payments due for SALES occurring in any country outside the United States will be reduced by Licensee any taxes, fees, or other charges imposed by the government of such country on the remittance of royalty income. LICENSEE will also be responsible for all bank transfer charges, shall cooperate with REGENTS in [ ]* or (C) [ ]* if neither the recovery of any amounts paid by LICENSEE on REGENTS’ behalf. 6.9 LICENSEE will make all payments under this Agreement by check payable to “The Regents of the foregoing clauses University of California” and forward it to REGENTS at the address shown in Article 23 (A) and (B) is applicable. For purposes of clarificationNotices). 6.10 No earned royalties will be collected or paid to REGENTS hereunder on SALES to, or for use by, the determination of United States Government. LICENSEE will reduce the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. charged for such SALES by an amount equal to the earned royalty otherwise due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofREGENTS as provided herein.

Appears in 1 contract

Samples: Exclusive License (Aduro Biotech, Inc.)

Royalties. In (a) As additional partial consideration for the sale, assignment, transfer, conveyance, grant and delivery by Exxxxxx of the Assets, the other rights and license licenses granted under this Agreementby Exxxxxx hereunder, Licensee shalland the covenants, agreements and releases made by Exxxxxx, all to or in favor of Sangamo, and in addition to assuming the Assumed Liabilities, subject to the provisions terms and conditions of Sections 4.2this Agreement, 4.3 and 4.4 below, Sangamo shall pay royalties to Ipsen based upon Exxxxxx a royalty equal to: (i) Five percent (5%) of the Net Sales of each Royalty Product sold by Sangamo or its Affiliate for use in a Royalty Indication; and (ii) The greater of (i) five percent (5%) of the Net Sales of each Royalty Product sold by a sublicensee for use in a Royalty Indication or (ii) twenty-five percent (25%) of the royalty payment received by Sangamo from its sublicensee on account of a Royalty Product sold by such sublicensee for use in a Royalty Indication. (b) The parties acknowledge and agree that, with respect to any given Licensed unit of Royalty Product sold for use in any given a Royalty Indication, Sangamo shall only owe royalties pursuant to Section 5.3(a)(i) or Section 5.3(a)(ii), but not both. (c) Subject to this Section 5.3 and Section 5.4, the royalty obligations of Sangamo and its Affiliates, sublicensees and successors in interest set forth in Section 5.3(a) shall be perpetual and apply to the Territory. (d) Each Product sold by Sangamo or its Affiliate or sublicensee in a particular country shall be presumed to be sold for the indication(s) for which it has received Regulatory Approval in such country. Such presumption may be overcome if a Party, at its sole expense, procures and provides the Territory during the Royalty Term applicable to other Party with commercially reasonable evidence of off-label sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country during the relevant period. Written notice and evidence shall be promptly provided to the other Party upon learning of any such off-label sales of the Product. Such evidence shall be based upon prescription data products or services or other relevant pharmaceutical sales tracking research services (Aincluding, for example, use of random sampling, use of data regarding distribution channels as a proxy for indication-specific sales and development of mathematical models for approximating indication-specific sales) [ ]* generally recognized in the pharmaceutical industry as being reliable in the tracking of sales of pharmaceutical products of similar nature and prescribed by similar physicians. For example, if Exxxxxx timely provides Sangamo with such commercially reasonable evidence that twenty percent (20%) of Sangamo’s sales in the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee United States in a particular calendar quarter, of a Product that has only been approved for indications that are not Royalty Indications, are sold for use in a Royalty Indication, then Sangamo shall pay royalties pursuant to Section 2.11.1 within [ ]* after the date 5.3(a)(i) with respect to such twenty percent (20%) of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered such sales by Ipsen Sangamo with respect to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 that particular Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofUnited States during such calendar quarter.

Appears in 1 contract

Samples: Asset Purchase Agreement (Sangamo Biosciences Inc)

Royalties. In consideration for Licensee shall make the rights following royalty payments to Licensor consisting of common stock purchase Warrants and license granted under cash payments: i) Upon execution of this Agreement, Licensee shallagrees to pay Licensor 25,000 Common Stock Purchase Warrants which will have a term of 5 years and be exercisable anytime during this 5-year term for $.25 per share, subject and shall be exercisable in whole or in part anytime and from time to the provisions time during this 5-year term. ii) A cash license royalty per unit or device of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, sold or used by Licensee which royalties shall be equal to [ ]* Thirty Percent (30%) of Licensee's wholesale price to customers purchasing such Net Sales; provideddevices from Licensee, howeverwhich base price shall be flexible and mutually agreed upon by the parties hereto for the purpose of determining such royalty payments du6 hereunder. Such cash royalty payments shall be made quarterly during each year of this Agreement, that, subject and payment shall be made to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing Licensor by Licensee pursuant within 10 days of the end of each quarter. Licensee shall not be required to Section 2.11.1 and (pay cash royalties on free sample devices used in promotions, or for damaged or defective products. iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to When sales of the licensed product by Licensee equal 500 units or devices, Licensee shall grant Licensor an additional Stock Purchase Warrant to purchase another 50,000 common shares of Licensee with such Ipsen MC4 Product in such country shall be (AWarrants having the same terms as the above paragraph i). iv) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date When sales of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used licensed product by Licensee in [ ]* cumulatively equal 1,000 units or (Cdevices, Licensee shall grant Licensor another Stock Purchase Warrants to purchase another 50,000 common shares of Licensee with such Warrants having the same terms as the above paragraph i). At this point, total Warrants would be for the purchase of 125,000 common shares with each set of Warrants to have a 5-year term from the time they are granted. v) [ ]* if neither All of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination Warrants shall be authorized by resolution of the amount Board of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933Directors of Licensor within 30 days of the execution of this Agreement so that they will be available to be granted to Licensor as earned under this Agreement; and all of such Warrants shall have anti-dilutive terms to prevent dilution to Licensor in the event of future stock splits, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofstock dividends, mergers, reclassifications, business combinations or other reorganizations.

Appears in 1 contract

Samples: License Agreement (Dental Resources Inc)

Royalties. (a) Subject to the adjustments provided for in Section 8.5, Micromet will pay to MedImmune a royalty equal to [***]([***]) of Net Sales of Licensed Product in North America. For the avoidance of doubt, a sale that occurs outside of North America for Licensed Product that is shipped for use in North America is included in Net Sales in North America. *** Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. Under 17 C.F.R. §§ 200.80(b)(4), and 240.24b-2 (b) In consideration for the rights and license granted under this Agreementevent that a Licensed Product is sold in combination with a therapeutically active component that is not a Licensed Product (“Combination Product”), Licensee shall, then net sales (calculated as Net Sales) of such Combination Product upon which a royalty is paid will be subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given following adjustment. If the Licensed Product and the other therapeutically active component of the Combination Product are sold separately in any given a country, then net sales of such Combination Product in such country in upon which a royalty is paid will be multiplied by the Territory during fraction A/A+B, where A equals the Royalty Term applicable to average sales price of such Licensed Product sold separately in such country, which royalties shall be equal and B equals the average sales price of the other therapeutically active component sold separately in such country. Otherwise, the Parties will enter into good faith negotiations and attempt to [ ]* reach mutual agreement to determine an appropriate adjustment to the net sales of such Net Sales; provided, however, that, subject Combination Product in a country to reflect the relative contributions of the Licensed Product and the other therapeutically active component to the provisions value of Sections 4.2, 4.3 and 4.4 below, if the Combination Product in such country. If such mutual agreement is not reached within [***](i) [***])[***] after commencement of such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rightsnegotiations, then the determination will be submitted to binding arbitration under Section 17.4(c). (c) Only one royalty rate applicable will be due and payable for the manufacture, use and sale of Licensed Product irrespective of the number of Valid Claims within Technology Patents that cover the manufacture, use and sale of Licensed Product. Upon payment of a royalty under this Agreement with respect to Net Sales a unit of Licensed Product, no further royalty will be due with respect to such Ipsen MC4 Product unit of Licensed Product. *** Certain confidential information contained in any given country in this document, marked by brackets, has been omitted and filed separately with the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee Securities and Exchange Commission pursuant to Section 2.11.1 within [ ]* after the date Rule 24b-2 of the MC4 [ ]* AgreementSecurities Exchange Act of 1934, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement as amended. Under 17 C.F.R. §§ 200.80(b)(4), and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof.240.24b-2

Appears in 1 contract

Samples: Termination and License Agreement (Micromet, Inc.)

Royalties. In consideration for (a) HHI agrees to pay DataLogic the rights and license granted under this Agreement, Licensee shall, subject to following royalties (the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product "Royalties") in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if perpetuity: (i) such a royalty equal to two percent (2%) of HHI's Net Revenue received from the distribution of any vehicle or mobile asset tracking device based substantially on the DataLogic Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, Technology (a "Licensed Device"); and (ii) a royalty equal to five percent (5%) of HHI's Net Revenue received from the Ipsen MC4 [ ]* was accepted distribution of any vehicle or mobile asset tracking system based substantially on the IPN Licensed Technology (a "Licensed System"). To the extent that HHI incorporates any Licensed Device or Licensed System into another product or service offering (a "Combined Offering"), Royalties will be payable on a portion of the Net Revenue received from the distribution of the Combined Offering equal to (x) the fair value of the Licensed Device or Licensed System included in writing the Combined Offering, divided by Licensee (y) the total Net Revenue received for the distribution of the Combined Offering. If applicable, HHI will provide DataLogic with a calculation, in reasonable detail, of the Royalties payable on any Combined Offering in each Royalty Statement delivered pursuant to Section 2.11.1 4(b). (b) Within 45 days following the end of each calendar quarter, HHI will (i) deliver to DataLogic a statement (a "Royalty Statement") setting forth the calculation, in reasonable detail, of the Royalties payable by HHI with respect to such calendar quarter and (iiiii) pay all Royalties due to DataLogic as reflected in the Ipsen MC4 [ ]* is Covered Royalty Statement. All late payments will be assessed a late fee charge equal to the lesser of one and one-half percent (1-1/2%) per month or the maximum amount permitted by Ipsen MC4 [ ]* Patent Rightsapplicable law (the "Late Payment Fee"). (c) DataLogic will be entitled to audit the records of HHI to verify the calculation set forth in any Royalty Statement, provided that such audit shall occur no more than twice per year. If such an audit discloses a deficiency in the Royalty paid of greater than five percent (5%), then HHI will pay the royalty rate applicable to Net Sales reasonable cost of such Ipsen MC4 Product in any given country in audit plus the Territory during Late Payment Fee on the Royalty Term applicable to sales of such Ipsen MC4 Product in such country deficiency from the time due until paid. (d) All payments and amounts due hereunder shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date paid without deduction, set-off, or counter claim and free and clear of the MC4 [ ]* Agreementany restrictions or conditions and without deduction for any taxes, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* levies, imposts, duties, fees, deductions, withholdings or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarificationother governmental charges, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made excluding taxes on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofDataLogic's overall net income.

Appears in 1 contract

Samples: Technology License Agreement (Datalogic International Inc)

Royalties. In consideration for the rights and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes Following the Ipsen MC4 [ ]*Second Restated Effective Date, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 from and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date Launch of the MC4 [ ]* Agreement and such Ipsen MC4 applicable Product in a formulation consisting an Expanded Major Market Country, Amicus shall pay to GSK royalties as set forth in clause a) or b) of this Section 7.1(b)(i), as applicable, based on ****** - Material has been omitted and filed separately with the Commission. the Net Sales of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (Capplicable Product(s) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarificationduring a particular calendar year, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed by- Product basis basis, and on a country-by-country basis, for the longer of ****** (the “Amicus Product Royalty Term”). Payment Upon the expiration of royalties the Amicus Product Royalty Term for a particular Product, and subject to Section 7.1(b)(iv)(c) below regarding Co-Formulation Products, Amicus’ license with respect to such Product as set forth in Article IV shall become a royalty-free, fully paid-up license. Notwithstanding the foregoing, nothing set forth herein shall be construed or interpreted to grant to Amicus a royalty-free, fully-paid up license for any Co-Formulation Product(s) that include JR051 as a component of such Co-Formulation Product. a) With respect to Monotherapy Products and Co-Administration Products: Net Sales of Product in an Expanded Major Market Country in a particular calendar year Royalty ****** ****** ****** ****** ****** ****** ****** ****** b) With respect to a Product that is a Co-Formulation Product: Net Sales of Product in an Expanded Major Market Country in a particular calendar year Royalty ****** ****** ****** ****** ****** ****** ****** ****** (iii) Notwithstanding the foregoing, nothing set forth herein shall be construed or interpreted to grant to Amicus a royalty-free, fully-paid up license for any intellectual property rights that are owned or Controlled by GSK or if Affiliates with respect solely to JR051. (iv) Third Party Payments. a) Material has been omitted and filed separately with the Commission. b) The obligations of GSK with respect to any payments due to Ipsen Mount Sinai pursuant to the Mount Sinai Agreement as a result of the Manufacture or Commercialization of any Product(s) shall terminate as of the Second Restated Effective Date and thereafter Amicus shall be solely and exclusively responsible for any and all payments that may be due to Mount Sinai pursuant to the Mount Sinai Agreement with respect to the Compounds and/or Products. c) For the avoidance of doubt, such payments due to JCR pursuant to this Article 4 Section 7.1(b)(iv)(c) shall not be made in accordance with the provisions of Article 5 hereofcreditable under Section 7.1(b)(iv)(a) against royalties otherwise owed to GSK.

Appears in 1 contract

Samples: Restated Agreement

Royalties. In consideration for the rights and license granted under this Agreement5.1 Except as otherwise required by law, Licensee shall, subject shall pay to Rutgers/UMDNJ: (a) a semi-annual royalty based on Net Sales during the two most recently concluded fiscal quarters calculated as follows: (i) to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given extent a Rutgers/UMDNJ Patent Right underlying a Licensed Product is unexpired in any given country in the Territory during the Royalty Term applicable to sales a country, a royalty of [***] of such Licensed Product in such country during such period shall be payable by Licensee, and (ii) to the extent no Rutgers/UMDNJ Patent Right underlying a Licensed Product is unexpired in a country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) but such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]uses or embodies Rutgers/UMDNJ Proprietary Technology, a royalty of [*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales **] of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Licensed Product in such country during such period shall be payable be Licensee so long as such sales occur no later than [***]. (Ab) [ [***]* if the Ipsen MC4 [ ]* is delivered , concurrently with its payment of royalties as provided in paragraph 5.1(a), [***] of all royalty consideration received by Ipsen Licensee from its sublicensees (other than to Licensee pursuant Affiliates of Licensee) during its two most recently concluded fiscal quarters on sales by such sublicensee of Licensed Products. Subject to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Article 17 this Agreement, (B) [ amounts due under this Article 5.2 alone shall not be reduced [***]* if the Ipsen MC4 [ ]* is delivered by Ipsen 5.2 No Payment Obligations shall be due with respect to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 sale or sublicense covering any Licensed Product in a formulation consisting of country if: (a) there are no issued Rutgers/UMDNJ Patent Rights underlying such Licensed Product in such country; and (b) to the Ipsen MC4 [ ]* extent that a patent application is pending, there is no claim within such patent application on which a royalty herein can reasonably be based which has been pending for less than seven (7) years since the initial filing date; and (c) no Rutgers/UMDNJ Proprietary Technology is used with respect to, or embodied in such Licensed Product. 5.3 Royalties payable to Rutgers/UMDNJ shall be paid semi-annually on or before June 30 and December 31 of each calendar year. Each such payment will be for unpaid royalties that accrued within or prior to Licensee's two most recently completed calendar quarters. 5.4 Licensee shall pay to Rutgers/UMDNJ a minimum annual payment equal to the amount set forth on the following schedule: [***] for the term of this Agreement beginning with the year of First Commercial Sale of any Licensed Product in a Major Market Country. This minimum annual payment shall be paid to Rutgers/UMDNJ by December 31 of each year and shall be credited against the Payment Obligations due and owing for the calendar year in which the minimum annual payment is supposed to be made. The first year's minimum annual payment shall be prorated by the fractional number of full months remaining in that calendar. 5.5 Licensee in [ ]* or (C) [ ]* if neither of shall be entitled to credit against the foregoing clauses (Aroyalty revenue payable pursuant to paragraph 5.1(a) and (Bb) is applicable. For purposes of clarification, the determination of in the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen [***] provided that in no event shall such credit: (a) reduce by more than [***] with respect to any calendar year; or (b) excuse Licensee from making any minimum royalty payment pursuant to this Section 4.1 paragraph 5.4, provided further that any unused credit remaining as a result of such limitation shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due carried forward to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofsubsequent years.

Appears in 1 contract

Samples: Exclusive License Agreement (Avax Technologies Inc)

Royalties. In consideration for the rights and license granted under this Agreement, Licensee shall, subject (a) Subject to the provisions of set forth below in Sections 4.29.5(b) through 9.5(j), 4.3 Section 9.6 and 4.4 belowSection 9.7, AstraZeneca shall pay royalties to Ipsen based upon Ardelyx, with respect to each Licensed Product, an incremental royalty on aggregate Annual Net Sales of each such Licensed Product made by AstraZeneca, its Affiliates, or its Sublicensees as follows: Portion of aggregate Annual Net Sales of relevant Licensed Product Royalty Rate >U.S. $[***] and £ U.S. $[***] [*** ] >U.S. $[***] and £ U.S. $[***] [*** ] >U.S. $[***] and £ U.S. $[***] [*** ] >U.S. $[***] and above [*** ] (b) The calculation of royalties under this Section 9.5 shall be conducted separately for each Licensed Product. Thus, if AstraZeneca sells more than one Licensed Product in the Territory, the thresholds and ceilings in section 9.5(a) shall apply separately to each Licensed Product. (c) Sales between AstraZeneca, its Affiliates and Sublicensees shall not be subject to royalties hereunder. Royalties shall be calculated on AstraZeneca’s, its Affiliates’ and Sublicensees’ sales of the Licensed Products to a Third Party, including Distributors (but excluding for the avoidance of doubt Sublicensees). Royalties shall be payable only once for any given batch of the Licensed Products. For the purpose of determining Net Sales, the Licensed Product shall be deemed to be sold when invoiced and a “sale” shall not include, and no royalties shall be payable on, transfers by AstraZeneca, its Affiliates or Sublicensees of free samples of Licensed Product or clinical trial materials, or other transfers or dispositions for charitable, promotional, pre-clinical, clinical, manufacturing, testing or qualification, regulatory or governmental purposes. (d) In the event that Ardelyx exercises the Co-Funding Option, the royalty rates set forth in Section 9.5(a) above shall, when the relevant Co-Funding Amount has been paid to AstraZeneca in its entirety by Ardelyx (failing which, no such increase shall apply), be increased by the number of percentage points set forth in the chart below, such increase to apply only to the royalties payable on Net Sales of the Licensed Product for which the Co-Funding Option was exercised. The increase shall apply to the royalties payable on Net Sales of such Licensed Product for all indications for which the relevant Licensed Product is sold. The increase shall be determined based upon the Co-Funding Amount committed and paid by Ardelyx for the relevant Licensed Product, as set forth below: Co-Funding Amount Percentage Point Increase in Royalty Rate U.S. $20,000,000 1% U.S. $30,000,000 2% U.S. $40,000,000 3% [***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. (e) If, at any time, in any particular country in the Territory, a given Licensed Product in any given country in [***], then, the Territory during the Royalty Term applicable to sales royalties that would otherwise have been payable on Net Sales of such Licensed Product in such country, which royalties country under this Agreement shall be equal to [ ]* reduced by [***] as from the first Calendar Quarter in which this Section 9.5(e) applies, and thereafter for so long as this Section 9.5(e) applies in such particular country. The calculation of such Net Sales; providedthe royalty reduction under this Section 9.5(e) shall be conducted separately for each Licensed Product in each country. (f) If, howeverat any time, thatin any particular country in the Territory, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) a Generic Product receives Regulatory Approval in such country and (ii) [***] decrease by more than [***] compared to the Calendar Quarter immediately preceding the first Calendar Quarter in which the Generic Product is sold, then, the royalties that would otherwise have been payable on Net Sales of such Licensed Product in such country under this Agreement shall be reduced by [***] as from the first Calendar Quarter in which this Section 9.5(f) applies and thereafter for so long as [***] in the Calendar Quarter immediately preceding the first Calendar Quarter in which the Generic Product is an Ipsen MC4 sold. The calculation of the royalty reduction under this Section 9.5(f) shall be conducted separately for each Licensed Product that utilizes in each country. (g) If, at any time, in any particular country in the Ipsen MC4 [ ]*Territory, a court or a governmental agency of competent jurisdiction requires AstraZeneca or its Affiliate or Sublicensee to grant a compulsory license to a Third Party permitting such Third Party to make and sell a Licensed Product in one or more countries in the Territory (iia “Compulsory License”), and the royalty rate for royalties payable to AstraZeneca, its Affiliate or Sublicensee on Net Sales (which term for the purpose of this Section 9.5(g) shall apply mutatis mutandis to sales by such grantee) of Licensed Products by or on behalf of such grantee of the Ipsen MC4 [ ]* was accepted in writing by Licensee Compulsory License is less than the royalty rate for royalties on Net Sales due to Ardelyx pursuant to this Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights9.5 in such country, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable for royalties due to sales of such Ipsen MC4 Product Ardelyx in such country shall be reduced to [***]. If AstraZeneca or its Affiliate receives any compensation (Aother than royalty payments) [ ]* if for the Ipsen MC4 [ ]* Compulsory License from the grantee of the Compulsory License, then [***] (but such compensation shall otherwise be disregarded for the purpose of calculating royalties due to Ardelyx hereunder, including for purposes of applying thresholds and ceilings). If AstraZeneca, its Affiliates or Sublicensees learn that a Third Party is delivered seeking a Compulsory License in any country in the Territory, AstraZeneca shall use Commercially Reasonable Efforts to oppose the granting of such Compulsory License. The royalty rate reduction set forth herein shall be effective as from the first Calendar Quarter in which this Section 9.5(g) applies and thereafter for so long as this Section 9.5(g) applies. The calculation of the royalty rate reduction under this Section 9.5(g) shall be conducted separately for each Licensed Product in each country. [***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. (h) Any reductions set forth in Sections 9.5(e), 9.5(f), 9.5(g) and 9.5(j) shall be applied in the order in which the event triggering such reduction occurs, provided that in no event shall, due to the cumulative reductions set out in Sections 9.5(e), 9.5(f), 9.5(g) and 9.5(j), the royalties that would otherwise have been payable to Ardelyx under this Section 9.5 in a particular Calendar Quarter be reduced by Ipsen to Licensee more than [***] of that which would be due pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement9.5(a), (Bas modified by Section 9.5(d) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen applicable. Credits not exhausted in any Calendar Quarter may however be carried into future Calendar Quarters, subject to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses sentence. (Ai) and (B) is applicable. For purposes of clarification, the determination of the amount of AstraZeneca’s obligation to pay royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to under this Section 4.1 9.5 shall be made on a Licensed Product-by-Licensed Product basis and commence on a country-by-country basis, with respect to each separate Licensed Product, on the date of the First Commercial Sale of such Licensed Product in such country and shall expire, on a country-by-country basis, with respect to such Licensed Product, at the latest of: (i) the tenth (10th) anniversary of the First Commercial Sale of such Licensed Product in such country (or, in the case of any country in Europe, the tenth (10th) anniversary of the First Commercial Sale of such Licensed Product in any country in Europe), and (ii) the date on which there is no longer a Valid Claim covering the sale of such Licensed Product in such country. Payment At such time as AstraZeneca’s obligation to pay royalties under this Section 9.5 have terminated in a country, the license granted to AstraZeneca under Section 2.1 shall automatically, and without further action on the part of royalties due Ardelyx or AstraZeneca, become non-exclusive, fully-paid, irrevocable and perpetual with respect to Ipsen pursuant to this Article 4 such country and the Net Sales of such Licensed Product in such country shall be made excluded from royalty calculations under this Section 9.5 (including for purposes of applying thresholds and ceilings). (j) If (i) AstraZeneca, in accordance with its reasonable judgment, determines that it is required to obtain a license from any Third Party in order to avoid infringement of such Third Party’s Patent, (ii) such Patent covers or claims the provisions composition, use, or method of Article 5 hereofmanufacturing, or method of treatment, of a Licensed Compound in order to import, manufacture, use, or sell any Licensed Product, (iii) AstraZeneca does not have any other commercially reasonable alternatives available to avoid such infringement, and (iv) AstraZeneca is required to pay to such Third Party a royalty, milestone payments or other monetary compensation in consideration for the grant of such license (“Third Party Compensation”), then for the period during which AstraZeneca owes royalties to Ardelyx hereunder, the amounts that would otherwise have been payable as royalties to Ardelyx under this Agreement shall be reduced by [***].

Appears in 1 contract

Samples: License Agreement (Ardelyx, Inc.)

Royalties. a) In consideration for the rights and license granted under this Agreement, Licensee shall, subject addition to the provisions milestones recited in Article 9.1 above and in consideration of Sections 4.2the licenses granted to OMP by ADDEX pursuant to Article 8 above, 4.3 and 4.4 below, OMP shall pay royalties to Ipsen based upon ADDEX a royalty equal to the following percentage of Net Sales of any given Licensed Collaboration Product in any given country in the Territory sold hereunder by OMP, its Affiliates and Sublicensees during the Royalty Term applicable to sales period set forth in Subsection b) below. For the avoidance of doubt if a Collaboration Product contains a Collaboration Compound would qualify as both 1) a XXX Compound or Agonist Compound; and 2) a NAM Compound such Licensed Collaboration Product in such country, which royalties shall be equal subject only to [ ]* one royalty provided a Collaboration Product containing a XXX Compound or Agonist Compound. There will be no royalty stacking. Royalty will be determined as based upon the major activity of such the compounds as determined in assays in Appendix B. b) Royalties shall be paid in respect of the total Net Sales; providedSales of a given Collaboration Product inclusive of all indications and all formulations, howeveron a country by country basis and on a product by product basis, that, subject to for a period commencing on the provisions Date of Sections 4.2, 4.3 First Sale and 4.4 below, if ending upon the latest of the expiration of (i) such Licensed [***] years from the Date of First Sale of a Collaboration Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, in a given country or (ii) the Ipsen MC4 [ ]* was accepted last to expire ADDEX Patent containing a Valid Claim covering [***] a Collaboration Product sold by OMP, its Affiliates or Sublicensees in writing by Licensee pursuant to Section 2.11.1 such country. c) If at any time during which Royalties are being paid, (i) a Third Party other than Sublicensee of OMP commences selling the Product containing the same compound as Collaboration Compound contained in such Collaboration Product in a country where no ADDEX Patent or OMP Patent exists with an enforceable Valid Claim on the Collaboration Compound and (iiiii) such unlicensed unit sales amount to [***] or more of OMP’s (and/or its Affiliate’s and/or its Sublicensee’s) unit sales in units of the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Collaboration Product in such country in the same period, the royalty applied in such country in such period shall be reduced by [***], such reduction shall apply as long as the unlicensed unit sales amount to [***] or more of OMP’s (Aand/or its Affiliate’s and/or its Sublicensee’s) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date unit sales in units of the MC4 [ ]* AgreementCollaboration Product in such country in the same period. For the convenience of calculating such reduced royalty and for the purpose of determining the applicable royalty rates from the Table set forth in subsection (a), (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date [***] of the MC4 [ ]* Agreement and such Ipsen MC4 Net Sales of the Collaboration Product in a formulation consisting such country in such period shall be deemed total Net Sales of the Ipsen MC4 [ ]* is used by Licensee Collaboration Product in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicablesuch country in such period. For purposes of clarificationthis subsection (c) “unlicensed unit sales” and “OMP’s (and/or its Affiliate’s and/or its Sublicensee’s) unit sales” shall be deemed to mean the grams of Collaboration Compound contained in the Third Party product (irrespective of dosage form) or the Collaboration Product (irrespective of dosage form), respectively, as reflected on the determination label of each such unit; and (ii) unlicensed unit sales shall be determined by the amount sales reports of royalties * CONFIDENTIAL TREATMENT REQUESTEDIMS America Ltd. of Plymouth Meeting, Pennsylvania (“MS”) or where applicable its non-US affiliate or any successor to IMS or any other independent market auditing firm selected by OMP, its Affiliate or its Sublicensees and reasonably acceptable to ADDEX. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen If OMP is entitled to a royalty reduction based on unlicensed unit sales pursuant to this Section 4.1 subsection (c) for any royalty period, it, its Affiliates or its Sublicensees shall submit the sales report of IMS or such other independent firm, as applicable, for the relevant royalty period to ADDEX, together with OMP’s, its Affiliates’ or its Sublicensees’ sales report for the relevant royalty period. Such sales reports for each royalty accounting period in which OMP is entitled to such royalty reduction shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen submitted with the royalty report for such royalty accounting period submitted pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof10.1.

Appears in 1 contract

Samples: Research and Development (Addex Therapeutics Ltd.)

Royalties. In (a) Gelesis shall pay to PureTech, during the applicable term described in Section 2(b) below, earned royalties at the following rates: Type of Licensed Product Rate A royalty on all Net Sales by Gelesis-Bermuda, its affiliates or any Sublicensee of Licensed Products that are not FoodProducts: 2% A royalty on all Net Sales by Gelesis-Bermuda or its affiliates of Licensed Products that are Food Products: 2% If the manufacture, use, lease, or sale of any Licensed Product is covered by more than one of the Valid Claims under the Patent Rights in the Field, or any patents in the Improvements or Food IP, multiple royalties shall not be due. (b) The Parties hereby agree that should intellectual property rights owned by a third party pose as an obstacle to the development or commercialization of any Licensed Product that is not a Food Product (the “Blocking IP”), Gelesis-Bermuda or an applicable affiliate of Gelesis-Bermuda shall, after consulting in good faith with PureTech, seek a potential settlement solution with the Blocking IP holder and the royalty rates for Licensed Products that are not Food Products set forth in Section 2(a) shall be reduced by the amount of such consideration paid for the rights and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net SalesBlocking IP; provided, however, that, subject however that in no case shall the royalty rates for Licensed Products that are not Food Products set forth in Section 2(a) be reduced by more than fifty percent (50%) as a result of the application of this Section 2(b). (c) The obligation of Gelesis to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pay royalties pursuant to Section 2.11.1 and (iii2(a) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and terminate on a country-by-country basis. Payment basis concurrently with (i) the expiration or termination of royalties due to Ipsen pursuant to this Article 4 shall be made the applicable Valid Claim under the Patent Rights in accordance with the provisions country in which the Licensed Product is sold, or (ii) the withdrawal, cancellation, or disclaiming of Article 5 hereofthe applicable Valid Claim under the Patent Rights in the country in which the Licensed Product is sold.

Appears in 1 contract

Samples: Royalty and Sublicense Income Agreement (Gelesis Inc)

Royalties. In (a) Subject to Section 9.5(b), in partial consideration for of the rights and license licenses granted to BMS under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, BMS shall pay royalties to Ipsen based upon OXiGENE a royalty on Net Sales of each Covered Product, commencing on the First Commercial Sale of each Covered Product by BMS, its Affiliates or its Sublicensees in each country in the Territory, in an amount equal to the applicable percentage of the world-wide Net Sales of such Covered Product by BMS, its Affiliates and its Sublicensees throughout the Territory during each calendar year (or portion thereof) during the term of this Agreement: INCREMENT OF ANNUAL WORLD-WIDE NET SALES OF SUBJECT COVERED ROYALTY PAYABLE PRODUCT ACHIEVED DURING CALENDAR THEREON YEAR -------------------------------- ----------------- >US****** ******% > US$****** ******% Such incremental amounts shall be pro rated accordingly with respect to any given Licensed partial calendar year during the term of this Agreement. (b) Notwithstanding the foregoing, BMS's obligation to pay royalties with respect to each Covered Product in any given each country in the Territory during shall expire upon the expiration of the Royalty Term applicable with respect to sales of such Licensed Covered Product in such country. (c) In the event that BMS makes the milestone payment contemplated by Section 9.3(a)(i), which royalties shall be equal to [ ]US$****** of such Net Salespayment shall be creditable against royalties payable under this Section 9.5; provided, however, that, subject that the application of such credit shall not reduce the royalties payable by BMS under this Agreement with respect to any given calendar quarter by more than ******%. Any credit arising under this Section 9.5(c) may be carried forward indefinitely during the term of this Agreement. (d) The obligation to pay royalties to OXiGENE under this Section 9.5 is imposed only once with respect to the provisions same unit of Sections 4.2Covered Product, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date regardless of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date number of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofPatents pertaining thereto.

Appears in 1 contract

Samples: Research Collaboration and License Agreement (Oxigene Inc)

Royalties. 4.1 PUBLISHER, shall pay WRITER a royalty of fifty percent (50%) of Gross Revenues actually received by PUBLISHER, or its authorized agent, less the following: (a) all outstanding recoupable advances between PUBLISHER and WRITER hereunder; (b) any administration or collection fees, foreign taxes, etc. actually charged by PUBLISHER, its authorized agents, or foreign subpublishers; and (c) set off of any other monies due PUBLISHER by WRITER of any nature. 4.2 Royalty on foreign sales shall be payable by PUBLISHER only after PUBLISHER, or an authorized agent of PUBLISHER, has received payment in the United States in United States currency, and shall be payable at the same rate of exchange as received by PUBLISHER. 4.3 Notwithstanding anything herein to the contrary, WRITER shall not be entitled to any portion of any sums received by PUBLISHER with respect to public performance of any Original Works from any performing rights society which pays a portion of performance fees directly to writers or composers. 4.4 Such royalties shall be paid in instances where WRITER is or was the sole author, composer, and arranger of the Original Works. With regard to Original Works where WRITER is or was only one of two or more authors, writers, or collaborators, WRITER shall be paid only the portion of such royalties equal to WRITER's percentage of authorship of said Original Work. 4.5 PUBLISHER or any of its affiliates, subsidiaries, or parent companies shall have the right to Cross-Collateralize this Agreement and any previous exclusive songwriter agreement, single song agreement, arranger's agreement or similar type of agreement between WRITER and PUBLISHER or any of its affiliates, subsidiaries, or parent companies. PUBLISHER or any of its affiliates, subsidiaries, or parent companies shall also have the right to Cross-Collateralize Original Works created hereunder. 4.6 In consideration the event PUBLISHER or any of its affiliates, subsidiaries, or parent companies shall print, publish, perform, record, synchronize, publicly display, or otherwise use and exploit any of the Original Works, Gross Revenues with respect thereto, for the rights and license granted under purpose of this Agreement, Licensee shall, subject to shall be deemed as follows: a) For Mechanical uses - the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country statutory mechanical royalty rate as set forth in the Territory during Copyright Act, applicable at the Royalty Term applicable to sales time of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof.distribution;

Appears in 1 contract

Samples: Single Song Agreement

Royalties. In further consideration of the license rights granted by Universal Display hereunder, Showa Denko shall pay to Universal Display running royalties at the rates specified in Exhibit B hereto on account of Net Sales Revenue from Showa Denko’s or its Permitted Sublicensees’ worldwide sales or other disposition of Licensed Products. No multiple royalties shall be due because any Licensed Product, or its manufacture, sale, other disposition or usage, is or may be covered by more than one Universal Display Patent licensed to Showa Denko hereunder. For clarification, royalties shall not be calculated or payable on account of any item that is supplied to Showa Denko by a Permitted Sublicensee or Authorized Contract Manufacturer, or to a Permitted Sublicensee by Showa Denko or an Authorized Contract Manufacturer, if such item does not include each and every element of an OLED Light Source, but rather royalties shall be calculated and payable on account of Showa Denko’s or the Permitted Sublicensee’s subsequent sale or other disposition of a Licensed Product that constitutes or incorporates the supplied item. In consideration for of the license rights granted by Universal Display to Showa Denko under Article 2 (and license granted under this Agreement, Licensee shall, subject to the provisions limitations and clarifications therein), Showa Denko shall not be required to [The confidential material contained herein has been omitted and has been separately filed with the Commission.] other than as set forth in Section 5.1 and this Section 5.2. 5.2.1 Notwithstanding the foregoing, with respect to the sale or other disposition of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given a Licensed Product covered, in whole or in part, by any given country Valid Claim(s) of a Universal Display Patent that is [The confidential material contained herein has been omitted and has been separately filed with the Commission.], but not also covered, in whole or in part, by at least one Valid Claim of a Universal Display Patent that has [The confidential material contained herein has been omitted and has been separately filed with the Territory during the Royalty Term applicable to sales Commission.], royalties shall accrue but payment of such Licensed Product in such country, which said royalties shall be equal to [ deferred until [The confidential material contained herein has been omitted and has been separately filed with the Commission.]* of such Net Sales; provided, however, that, subject to and provided further that the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 [The confidential material contained herein has been omitted and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance has been separately filed with the provisions of Article 5 hereofCommission.].

Appears in 1 contract

Samples: Oled Technology License Agreement (Universal Display Corp \Pa\)

Royalties. (a) In consideration addition to the amounts payable under Section 4.2, LICENSEE will collectively pay Metabasis and Valeant (collectively referred to as "MV"), in any calendar year during the Royalty Obligation Period, royalties in the aggregate amounts as follows on a Product-by-Product and country-by-country basis and provided that the amounts below constitute the full amount of the royalties due MV pursuant to the terms of both this Agreement and the Metabasis License Agreement: (i) in any country in which there is a Valid Claim of a Licensed Patent, a royalty on Net Sales in such country as provided below: (A) on Net Sales of Products [...***...] (B) on Net Sales of Products [...***...] EXECUTION COPY - VALEANT SCHERING LICENSE ***CONFIDENTIAL TREATMENT REQUESTED (ii) on Net Sales of each Product in any country in which there is no Valid Claim of a Licensed Patent, [...***...] (b) Royalties on Net Sales will be calculated every Accounting Period. Within [...***...] after the last day of each such Accounting Period during the term of this Agreement following the First Commercial Sale of a Product, LICENSEE will provide to MV the Sales & Royalty Report. If MV has no comments on such report, Metabasis and Valeant shall each submit an invoice to LICENSEE substantially in the form of Exhibit B with respect to the Royalty Payment, each of which shall be signed by both Metabasis and Valeant and shall indicate the proportion of the Royalty Payments that shall be made to each of (i) Metabasis and (ii) Valeant, provided, however, that the sum of the payments to be made to each of Metabasis and Valeant may not exceed 100% of the actual Royalty Payments due (the "Total Royalties Due"). In the event that there are invoicing discrepancies (such that, for example, the total of the Royalty Payments based on the invoices received from each of Metabasis and Valeant exceeds the Total Royalties Due), LICENSEE may, in it sole discretion, make payment to each of Metabasis and Valeant as it determines is appropriate and in keeping with the terms of this Agreement and shall have no liability to Metabasis or Valeant with regard to any disagreement with respect to such allocation so long as the total of such payments is equal to the Total Royalties Due. LICENSEE shall pay the Royalty Payment within [...***...] after receipt of the invoices. All such Royalty Payments constitute the full amount of the Royalty Payments due MV pursuant to the terms of both this Agreement and the Metabasis License Agreement. (c) LICENSEE may obtain a license under any issued patent from one or more Third Parties which patent, but for such license, would be infringed by the exercise of the rights granted to LICENSEE hereunder. For any such Third-Party licenses, LICENSEE may reduce the royalties otherwise due to MV hereunder by an amount [...***...] paid by LICENSEE to such Third Party or Third Parties to the extent attributable to such license, including any [...***...]; provided, however, that the total such reduction for all such Sublicenses shall not cause the royalties due to MV in any calendar year to fall below [...***...] of the royalties which would otherwise be due (i.e. without reference to the reduction due to Sublicense royalties) to MV in such year. Any portion of such reduction which is unused in any year because of the foregoing proviso [...***...]; and further provided that no reduction in royalties will result from a license to a Third Party patent that claims [...***...] that are not necessary in order to develop, manufacture or commercialize the Licensed Compound, [...***...] and further provided that no reduction in royalties will result from a license to a Third Party patent where such license covers a Combined Product and where no actual or alleged infringement by the claims of such patent would result from activities relating to a Product whose only active pharmaceutical ingredient is a Licensed Compound, [...***...] Valeant shall remain responsible for the rights payment of royalty obligations, if any, due to Third Parties under any Licensed Technology which has been licensed to Valeant and license granted is sublicensed to LICENSEE under this Agreement, Licensee shall, subject . All such payments shall be made promptly by Valeant in accordance with the terms of its license agreement. ***CONFIDENTIAL TREATMENT REQUESTED 14. (d) If a Third Party sells a product which is a Generic Equivalent to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed a Product in any given country in which LICENSEE, an Affiliate or Sublicensee is selling such Product, the Territory royalty payable by LICENSEE to MV under this Agreement with respect to such Product in each such country will be [...***...] for the time period during the Royalty Term applicable to sales which such Generic Equivalent is sold by or on behalf of such Licensed Third Party in such country. (e) If any Approval Authority imposes a price limitation for specific indications or patients, and [...***...] determines that such limitation [...***...] for a Product in such country, which royalties shall be equal to [ ]* LICENSEE will promptly notify Valeant of such Net Sales; provided, however, that, subject limitation. Pursuant to the provisions terms of Sections 4.2, 4.3 and 4.4 below, if the Metabasis License Agreement (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]if Metabasis agrees with LICENSEE's determination, [...*, **...] and (ii) if Metabasis and LICENSEE fail to promptly agree [...***...] the Ipsen MC4 [ ]* was accepted in writing by Licensee matter will be referred to arbitration pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date Article XIV of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Metabasis License Agreement and [...***...] LICENSEE will, to the extent permitted by law, use reasonable commercial efforts to resist the imposition or continuation of any such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereofprice limitation.

Appears in 1 contract

Samples: Development and License Agreement (Valeant Pharmaceuticals International)

Royalties. In consideration for Subject to the rights remainder of this Article 10, QLT shall pay to Xenova, without duplication, on the terms and license granted under conditions set out in this Agreement, Licensee shallthe following royalties in respect of the Finished Product: (a) 15% of Net Sales, subject to the provisions in respect of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon any aggregate Net Sales of any given Licensed Product all Finished Products that are less than [*] in any given country a particular calendar year; (b) 18% of Net Sales, in the Territory during the Royalty Term applicable to sales respect of such Licensed Product in such country, which royalties shall be that portion of aggregate Net Sales of all Finished Products that are equal to [ ]* and/or greater than [*] and less than and/or equal to [*] of such Net Sales in a particular calendar year; and (c) 22% of Net Sales, in respect of that portion of aggregate Net Sales of all Finished Products that are greater than [*] of such Net Sales in a particular calendar year; provided, however, provided that, subject to Section 13.1(e), the provisions of Sections 4.2, 4.3 royalties payable under this Section 10.1 shall be earned and 4.4 below, if payable as follows: (id) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate where one or more Valid Claims applicable to Net Sales of such Ipsen MC4 the Finished Product in any given country under the Xenova Patents licensed to QLT under Section 8.4 exist in the Territory during the Royalty Term applicable to sales country of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after sale on the date of Commercial Launch of the MC4 [ Finished Product therein, the royalties hereunder shall be earned and payable for such country until the expiration of the last of such Valid Claims in such country; (e) where no Valid Claims are applicable to the Finished Product under the Xenova Patents licensed to QLT under Section 8.4 in the country of sale on the date of Commercial Launch of the Finished Product therein, the royalties hereunder shall be earned and payable for such country for a period of 10 years commencing on the date of Commercial Launch of the Finished Product therein, provided that in respect of [*]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 if, at any time after the [ ]* following the date during such 10 year period, there is a [*] for such portion of the MC4 [ 10 year period, whether all or part, that [*]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions of Article 5 hereof.

Appears in 1 contract

Samples: Development and Commercialization Agreement (QLT Inc/Bc)

Royalties. In consideration 1. For the granting of the described license for the rights and license granted under this AgreementContractual Rights, Licensee shall, subject SEQUENOM shall pay to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product Inventor a royalty in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties *** CONFIDENTIAL TREATMENT REQUESTEDof the net sales realized by SEQUENOM using the Contractual Rights - independently of the number of Contractual Rights used. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen Sales are the proceeds - after receipt of payment by SEQUENOM - from the sale of *** Portions of this page have been omitted pursuant to this Section 4.1 a request for Confidential Treatment and filed separately with the Commission. products, which are based on Contractual Rights and/or the application of which requires the use of the Contractual Rights, or services which are rendered using the Contractual Rights. 2. For sales that are realized using exclusively the Contractual Rights, which result from the collaboration (see (S)1) of SEQUENOM and the Inventor, and in which the Inventor or one of his co-workers is named as (co-)inventor, the royalty is *** . 3. In case the sum total of all royalties which SEQUENOM has to pay to third parties exceeds the value of *** for given proceeds, the royalties payable to the Inventor shall be made on *** in order to reduce it to exactly *** of the given proceeds. 4. SEQUENOM refunds all expenses to the Inventor which he has incurred or incurs in connection with applying for, maintaining and defending patents for the Contractual Rights, provided that these Contractual Rights are transferred exclusively to SEQUENOM. Included herein is the cost of applying for, maintaining and defending patents in other countries. The parties to the agreement shall discuss the procedures concerning patents matters as required. If licenses for a Licensed Product-by-Licensed Product basis given patent or a given patent application are granted to third parties for areas of application which are not exclusive to SEQUENOM, then all expenses as described above are shared as a rule proportionately by SEQUENOM and on a country-by-country basisthis (these) third party (parties). Payment of royalties due to Ipsen pursuant to this Article 4 Expenses already paid by SEQUENOM shall be made reimbursed proportionately by this (these) third party (parties). The Inventor is thus obliged to transfer this obligation to possible third party licensees. The Inventor shall also, by prior agreement, be reimbursed for expenses which arise in accordance connection with obtaining or reinstatement of patent right according to Annex 2, paragraph 2. 5. Royalties are always due at the provisions end of Article 5 hereofa calendar year and after receipt of payment for the underlying sales by SEQUENOM.

Appears in 1 contract

Samples: License Agreement (Sequenom Inc)

Royalties. In consideration for 5.1 Beginning with the rights and license granted under this Agreement, Licensee shall, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product FIRST COMMERCIAL SALE in any given country country, on all sales of PRODUCTS anywhere in the Territory during the Royalty Term applicable to sales of such Licensed Product in such countryworld by COMPANY, which its AFFILIATES or SUBLICENSEES, COMPANY shall pay GENERAL royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment of royalties due to Ipsen pursuant to this Article 4 shall be made in accordance with the provisions following schedule, such undertaking and schedule having been agreed to for the purpose of Article 5 hereofreflecting and advancing the mutual convenience of the parties. For each PRODUCT sold by COMPANY or its AFFILIATES and SUBLICENSEES; (a) So long as the PRODUCT, its manufacture, use or sale is covered by a VALID CLAIM of any PATENT RIGHT licensed exclusively to COMPANY; (i) For sales to END USERS by COMPANY, its AFFILIATES, and its MARKETING SUBLICENSEES, [* * *] of NET SALES PRICE. (ii) For sales to RESELLING SUBLICENSEES by COMPANY, its AFFILIATES and its MANUFACTURING SUBLICENSEES, [* * *] of all revenues, including without limitations royalties, license fees and milestone payments, received by COMPANY, its AFFILIATES and MANUFACTURING SUBLICENSEES from said RESELLING SUBLICENSEES with respect to sale of PRODUCT by said RESELLING SUBLICENSEES. (b) Whenever the PRODUCT, its manufacture, use or sale is covered by a VALID CLAIM of any PATENT RIGHT licensed non-exclusively to COMPANY, the royalty rates shall be [* * *] those specified in 5.1 (a) for each type of sale specified therein. (c) In the event that a MANUFACTURING SUBLICENSEE is also a RESELLING SUBLICENSEE, GENERAL shall be due the same royalties hereunder as would have been due had the MANUFACTURING SUBLICENSEE and RESELLING SUBLICENSEE been two non-affiliated entities, and unless otherwise agreed by the parties said royalties shall be calculated on the basis of the price last paid by RESELLING SUBLICENSEE to COMPANY in a good faith, arms length transaction. (a) In the event that more than one royalty rate under paragraph 5.1 is applicable to a PRODUCT, the highest of the applicable royalties shall apply. (b) Only one royalty under paragraph 5.1 shall be due and payable to GENERAL by COMPANY for any PRODUCT regardless of the number of PATENT RIGHTS covering such PRODUCT. 5.3 If any license granted pursuant to Section 2 shall be or become non-exclusive, for example, because of any action by the U.S. government, and GENERAL shall license any PATENT RIGHT to another licensee for the purpose of making, using or selling PRODUCTS in the LICENSE FIELD and accept a royalty or royalties more favorable to such licensee than herein provided for COMPANY, GENERAL shall give written notice thereof to [* * *] Indicates information omitted pursuant to a request for confidential treatment and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 under the Securities Exchange Act of 1934, as amended. COMPANY and as of the EFFECTIVE DATE of such more favorable royalty or royalties, COMPANY's obligation hereunder to pay royalty or royalties to GENERAL shall be revised to the more favorable rate. 5.4 In addition to the royalties provided for above, COMPANY shall pay GENERAL [* * *] of any and all non-royalty income, including without limitation license fees and milestone payments, received from its AFFILIATES and MARKETING SUBLICENSEES in consideration for the sublicensing of any right or license granted to COMPANY hereunder. 5.5 In addition to the payments provided for in paragraphs 5.1 and 5.4, COMPANY shall pay GENERAL [* * *]. 5.6 In the event that the royalty paid to GENERAL is a significant factor in the return realized by COMPANY so as to diminish COMPANY's capability to respond to competitive pressures in the market, GENERAL agrees to consider a reasonable reduction in the royalty paid to GENERAL as to each such PRODUCT for the period during which such market condition exists. Factors determining the size of the reduction will include profit margin on PRODUCT and on analogous products, prices of competitive products, total prior sales by COMPANY, and COMPANY's expenditures in PRODUCT development. 5.7 The payments due under this Agreement shall, if overdue, bear interest until payment at a per annum rate equal to [* * *] above the prime rate in effect at the Bank of Boston on the due date, not to exceed the maximum permitted by law. The payment of such interest shall not preclude GENERAL from exercising any other rights it may have as a consequence of the lateness of any payment.

Appears in 1 contract

Samples: License Agreement (Packard Bioscience Co)

Royalties. In consideration for the rights and license granted under this Agreement4.1 With respect to Licensed Products manufactured or sold by Licensee in a country in which such manufacture or sale is covered by a Valid Claim of a Licensed Patent, Licensee shall, subject agrees to the provisions pay Caltech [***] of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided, however, that, subject to the provisions of Sections 4.2, 4.3 and 4.4 below, if (i) such Licensed Product is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, (ii) the Ipsen MC4 [ ]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in Licensed Products wherein the Territory during Licensed Products are instruments or apparatus directly used for the Royalty Term applicable to sales reading and/or analysis of such Ipsen MC4 Product in such country shall be (A) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date data from other Licensed Products, including microfluidic chips that are Licensed Products, and [***] of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date Net Sales of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used Licensed Products by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarificationfor all such other Licensed Products, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933including microfluidic chips that are Licensed Products, AS AMENDED. Royalties due Ipsen pursuant to under this Section 4.1 shall be made payable on a country-by-country and Licensed Product-by-Licensed Product basis until the expiration of the last-to-expire issued Valid Claim covering such Licensed Product in such country. 4.2 With respect to Licensed Products manufactured or sold by Sublicensees in a country in which such manufacture or sale is covered by a Valid Claim of a Licensed Patent, Licensee agrees to pay Caltech [***] of the revenues received by Licensee from Sublicensees’ Net Sales of such Licensed Products wherein the Licensed Products are instruments or apparatus directly used for the reading and/or analysis of data from other Licensed Products, including microfluidic chips that are Licensed Products, and [***] of the revenues received by Licensee from Sublicensees’ Net Sales of Licensed Products for all such other Licensed Products, including microfluidic chips that are Licensed Products. Royalties due under this Section 4.2 shall be payable on a country-by-country basisand Licensed Product-by-Licensed Product basis until the expiration of the last-to-expire issued Valid Claim covering such Licensed Product in such country. 4.3 With respect to Licensed Products manufactured or sold by Licensee in a country in which such manufacture or sale is not covered by Valid Claim of a Licensed Patent but the Technology is utilized, Licensee agrees to pay Caltech [***] of Net Sales of such Licensed Products by Licensee, wherein the Licensed Products are instruments or [***] Information has been omitted and filed separately with the Securities and Exchange Commission. Payment Confidential treatment has been requested with respect to the omitted portions. apparatus directly used for the reading and/or analysis of data from other Licensed Products, including microfluidic chips that are Licensed Products, and [***] of Net Sales of Licensed Products by Licensee for all such other Licensed Products, including microfluidic chips that are Licensed Products. Royalties due under this Section 4.3 shall be payable on a country-by-country and Licensed Product-by-Licensed Product basis for a period of [***] years from the Effective Date or the issuance of a U.S. patent that covers the Licensed Product, whichever first occurs. 4.4 With respect to Licensed Products manufactured or sold by Sublicensees in a country in which such manufacture or sale is not covered by a Valid Claim of a Licensed Patent but the Technology is utilized, Licensee agrees to pay Caltech [***] of the revenues received by Licensee from Sublicensees’ Net Sales of such Licensed Products wherein the Licensed Products are instruments or apparatus directly used for the reading and/or analysis of data from other Licensed Products, including microfluidic chips that are Licensed Products, and [***] of the revenues received by Licensee from Sublicensees’ Net Sales of Licensed Products for all such other Licensed Products, including microfluidic chips that are Licensed Products. Royalties due under this Section 4.4 shall be payable on a country-by-country and Licensed Product-by-Licensed Product basis for a period of [***] years from the Effective Date or the issuance of a U.S. patent that covers the Licensed Product, whichever first occurs. 4.5 Notwithstanding the above, it is understood and agreed that Caltech shall not be entitled to any share of amounts received by Licensee for equity, debt, pilot studies, to support research or development activities to be undertaken by Licensee, research and development or other performance based milestones, the achievement by Licensee or Sublicensee of specified milestones or benchmarks relating to the development of Licensed Products, the license or sublicense of any intellectual property other than the Licensed Patents, reimbursement for patent or other expenses, or with respect to products other than Licensed Products. 4.6 In the event that a Licensed Product is sold in combination with one or more other products or other items that are not Licensed Products, Net Sales for such combination products will be reasonably calculated on a country-by-country and Licensed Product-by-Licensed [***] Information has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. Product basis by Licensee by multiplying the Net Sales of that combination by a fraction equal to the relative value of the combination attributable to the Licensed Product, in relation to the relative value of the combination, as reasonably determined by Licensee in good faith. In addition, in the event that a Licensed Product is not sold in combination with one or more other products or other items that are not Licensed Products, but instead comprises multiple components, some of which would constitute a Licensed Product if sold separately (each, a “Licensed Component”), and the others would not constitute a Licensed Product if sold separately, then Net Sales for such Licensed Product will be calculated by multiplying the Net Sales of such Licensed Product by the fraction A/B, where A is the gross selling price of the Licensed Component sold separately and B is the gross selling price of such Licensed Product. If no such separate sales are made by Licensee, its Affiliate or Sublicensee, Net Sales for such Licensed Product shall be calculated by multiplying Net Sales of such Licensed Product by the fraction C/(C+D), where C is the fully allocated cost of the Licensed Component and D is the fully allocated cost of the other components. 4.7 Commencing on January 1, 2004, and continuing for each anniversary thereof during the term of this Agreement, if Licensee has not paid, during the preceding calendar year, a minimum of [***] in royalties under Sections 4.1, 4.2, 4.3, and 4.4, Licensee agrees to pay, on or before March 1 of that calendar year, an additional royalty for the prior calendar year equal to the difference between [***] and any lower amount paid under Sections 4.1, 4.2, 4.3, and 4.4 for the prior calendar year. 4.8 In the event Licensee or Sublicensee becomes obligated to pay amounts to a third party with respect to a Licensed Product for patent rights of a third party, Licensee may deduct [***] of the amounts owing to such third party (prior to reductions) from the amount owing to Caltech for such Licensed Product; provided, however, the amounts otherwise due to Ipsen Caltech shall not be so reduced by more than [***]. 4.9 For the purpose of determining royalties payable under this Agreement, any royalties or other revenues Licensee receives from Sublicensees in currencies other than U.S. dollars and any Net Sales denominated in currencies other than U.S. dollars shall be converted [***] Information has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. into U.S. dollars according to Licensee’s reasonable standard internal conversion procedures, including Licensee’s standard internal rates and conversion schedule. 4.10 No more than one royalty payment shall be due with respect to a sale of a particular Licensed Product. No multiple royalties shall be payable because any Licensed Product, or its manufacture, sale or use is covered by more than one Valid Claim in a given country. No royalty shall be payable under this Article 4 with respect to Licensed Products distributed for use in research and/or development or as promotional samples or otherwise distributed without charge to third parties. 4.11 Any sublicenses granted by Licensee, including, without limitation, any nonexclusive sublicenses, shall remain in effect in the event this license terminates pursuant to Article 12; provided, the financial obligations of each Sublicensee to Caltech shall be limited to the amounts Licensee shall be obligated to pay Caltech for the activities of such Sublicensee pursuant to this Agreement. 4.12 Royalties due under this Article 4 shall be made payable on a country-by-country and Licensed Product-by-Licensed Product basis until the expiration of the last-to-expire issued Valid Claim covering such Licensed Product in accordance with such country, if the manufacture or sale of such Licensed Product was at the time of the first commercial sale in such country covered by a Valid Claim. Otherwise, royalties due under this Article 4 shall be payable on a country-by-country and Licensed Product-by-Licensed Product basis until [***] whichever first occurs. 4.13 Notwithstanding the provisions of this Article 5 hereof4, no royalty shall be payable to Caltech with respect to any sales of Licensed Products to the U.S. Government on sales made solely to permit the U.S. Government to practice or have practiced or have practiced or xxx on its behalf any invention or process covered by the Licensed Patents.

Appears in 1 contract

Samples: License Agreement (Fluidigm Corp)

Royalties. In consideration for the rights and 6.1 LICENSEE agrees to pay to BWH a noncreditable, nonrefundable license granted under issue royalty of [*] upon signing this Agreement. In addition, Licensee shallLICENSEE agrees to pay to BWH [*] upon the signing of Amendment #1 to this Agreement. 6.2 Beginning January 1, 2001, and [*], LICENSEE also shall pay to BWH a [*]. Said [*] payments are nonrefundable, but they are creditable against earned royalties to the extent provided in Paragraph 6.5. 6.3 In addition, LICENSEE shall pay BWH earned royalties on Net Sales, subject to the provisions Paragraph 13.5(b) as follows: [*] of Sections 4.2, 4.3 and 4.4 below, pay royalties to Ipsen based upon Net Sales of any given Licensed Product in any given country in the Territory during the Royalty Term applicable to sales of such Licensed Product in such country, which royalties shall be equal to [ ]* of such Net Sales; provided. 6.4 In addition, however, that, subject LICENSEE agrees to pay BWH the provisions following non-creditable milestone payments: (a) If [*] of Sections 4.2, 4.3 and 4.4 below, if the Invention(s) are [*]: (i) such Licensed Product Prior to or on [*], then a [*] milestone payment is an Ipsen MC4 Product that utilizes the Ipsen MC4 [ ]*, due; or (ii) the Ipsen MC4 [ Subsequent to [*]* was accepted in writing by Licensee pursuant to Section 2.11.1 and (iii) the Ipsen MC4 [ ]* is Covered by Ipsen MC4 [ ]* Patent Rights, then the royalty rate applicable to Net Sales of such Ipsen MC4 Product in any given country in the Territory during the Royalty Term applicable to sales of such Ipsen MC4 Product in such country shall be a [*] milestone payment is due; and (Ab) [ [*] is due upon [*]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 within [ ]* after the date of the MC4 [ ]* Agreement, (B) [ ]* if the Ipsen MC4 [ ]* is delivered by Ipsen to Licensee pursuant to Section 2.11.1 at any time after the [ ]* following the date of the MC4 [ ]* Agreement and such Ipsen MC4 Product in a formulation consisting of the Ipsen MC4 [ ]* is used by Licensee in [ ]* or (C) [ ]* if neither of the foregoing clauses (A) and (B) is applicable. For purposes of clarification, the determination of the amount of royalties * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. due Ipsen pursuant to this Section 4.1 The above milestone payments shall be made on a Licensed Product-by-Licensed Product basis and on a country-by-country basis. Payment to BWH within [*] after the [*] or [*], as appropriate. 6.5 Payments under Paragraph 6.2 of royalties due this Agreement shall be an offset to Ipsen LICENSEE against up to [*] of each earned royalty payment which LICENSEE would be required to pay pursuant to Paragraph 6.3 [*]. 6.6 If this Article 4 shall be made Agreement is not terminated in accordance with other provisions hereof, LICENSEE shall be obligated to pay royalties hereunder until the provisions latter of: (a) Seven years, if no Licensed Patent(s) issues; or (b) For so long as LICENSEE, by its activities would, but for the license granted herein, infringe a valid claim of an unexpired Licensed Patent(s) of BWH covering said activity. LICENSEE shall be obligated to pay royalties on all Licensed Product(s) that are either sold or produced under the license granted in Article 5 hereof3, regardless of whether such Licensed Product(s) are produced prior to the Effective Date of this Agreement or sold after the expiration of the Licensed Patent(s). 6.7 The royalty on sales in currencies other than U.S. Dollars shall be calculated using the appropriate foreign exchange rate for such currency quoted by the Bank of America (San Francisco) foreign exchange desk, on the close of business on the last banking day of each calendar quarter. Royalty payments to BWH shall be in U.S. Dollars. All non-U.S. taxes related to royalty payments shall be paid by LICENSEE and are not deductible from the payments due BWH. 6.8 Within [*] after receipt of [*], LICENSEE shall [*] in connection with [*] after the Effective Date. Upon request from BWH, LICENSEE agrees to [*]. 6.9 Subject to Paragraph 6.8, as applicable, LICENSEE may select patent counsel reasonably acceptable to BWH to prosecute and maintain Licensed Patents for the benefit of BWH. BWH and LICENSEE shall be copied simultaneously by the patent counsel on all patent prosecution or maintenance correspondence that concerns Licensed Patents. LICENSEE shall direct such prosecution and BWH will have the opportunity to comment prior to any prosecution or maintenance action involving Licensed Patents. If LICENSEE proposes to abandon any Licensed Patent, or any claim of a Licensed Patent, without the possibility of pursuing the subject matter of the abandoned claim at a later time, it shall first provide [*] advance written notice of such intent to BWH and, if requested, shall meet with officials of BWH within [*] of such notice to discuss the rationale for proposing to abandon the Licensed Patent or claim. If the parties agree that such Licensed Patent or claim should be abandoned, the matter shall be deemed resolved. If the parties do not agree that such Licensed Patent or claim should be abandoned, then LICENSEE shall either: (1) continue to prosecute the patent application or patent claim, or maintain the patent at issue; or (2) request BWH to assume responsibility for prosecution of such patent application, patent claim in a divisional application, or maintenance of such patent and LICENSEE shall lose rights in the abandoned Licensed Patent or claim, as the case may be.

Appears in 1 contract

Samples: License Agreement (Corgentech Inc)