Common use of Royalty Adjustment Clause in Contracts

Royalty Adjustment. If there are no Valid Claims within the Regulus Patents that [...***...] an SPC-3649 Product sold in a particular country, the GSK Patent Royalty set forth in Section 5.5.1 shall be reduced to [...***...] percent ([...***...]%) of the GSK Patent Royalty rates above in such countries where a Pending Claim within the Regulus Patents claims [...***...] an SPC-3649 Product has not yet been issued. For the avoidance of doubt, for such Pending Claims, GSK shall pay Regulus [...***...] percent ([...***...]%) of the GSK Patent Royalty set forth in Section 5.5.1 above, and shall pay the remaining [...***...] percent ([...***...]%) of the GSK Patent Royalty into an escrow account, until such time as a Valid Claim within the Regulus Patents issues that covers [...***...] an SPC-3649 Product being sold in the country of sale, provided that such Valid Claim must issue within [...***...] years of date of First Commercial Sale of an SPC-3649 Product (the “Royalty Tail Period”). In the event such Valid Claim issues during the Royalty Tail Period, (i) the escrow account and any interest thereon shall be paid to Regulus and (ii) GSK will pay the full GSK Patent Royalty in such countries starting only from the date of such issuance of the Valid Claim and shall not owe any GSK Patent Royalty in such countries for any preceding period. In the event that no such Valid Claim issues during the Royalty Tail Period, then the escrowed amounts and any interest thereon shall be returned to GSK and any obligations GSK may have had with respect to the Pending Claims shall cease. If GSK maintains sole control over such escrow account then GSK shall be solely responsible for the costs and expenses associated with maintaining such escrow account, otherwise GSK and Regulus shall be ***Confidential Treatment Requested mutually responsible for the costs and expenses associated with maintaining such escrow account; provided, that the Parties must mutually agree (such agreement not to be unreasonably withheld) before taking any action that would cause GSK to lose sole control of such escrow account. If a Valid Claim within the Regulus Patents that [...***...] an SPC-3649 Product issues after the Royalty Tail Period, then GSK will pay Regulus the full GSK Patent Royalty in such countries starting only from the date of such issuance of the Valid Claim and shall not owe any GSK Patent Royalty in such countries for any preceding period.

Royalty Adjustment. If there are no Valid Claims within the Regulus Patents that [...***...] an Patents that claim [...***...] SPC-3649 Product sold in a particular country, the GSK Santaris Patent Royalty set forth in Section 5.5.1 above shall be reduced to [...***...] percent ([...***...]%) of the GSK Santaris Patent Royalty rates above in such countries where a Pending Claim within the Regulus [...***...] Patents claims [...***...] an SPC-3649 Product has not yet been issued. For the avoidance of doubt, for such Pending Claims, GSK Santaris shall pay Regulus [...***...] percent ([...***...]%) of the GSK Santaris Patent Royalty set forth in Section 5.5.1 the table above, and shall pay the remaining [...***...] percent ([...***...]%) of the GSK Santaris Patent Royalty into an escrow account, until such time as a Valid Claim within the Regulus Patents issues that covers [...***...] an SPC-3649 Product Patents issues that covers the [...***...] being sold in the country of sale, provided that such Valid Claim must issue within [...***...] years of date of First Commercial Sale of an SPC-3649 Product (the “Royalty Tail Period”). In the event such Valid Claim issues during the Royalty Tail Period, (i) the escrow account and any interest thereon shall be paid to Regulus and (ii) GSK Santaris will pay the full GSK Santaris Patent Royalty in such countries starting only from the date of such issuance of the Valid Claim and shall not owe any GSK Santaris Patent Royalty in such countries for any preceding period. In the event that no such Valid Claim issues during the Royalty Tail Period, then the escrowed amounts and any interest thereon shall be returned to GSK Santaris and any obligations GSK Santaris may have had with respect to the Pending Claims shall cease. If GSK Santaris maintains sole control over such escrow account then GSK Santaris shall be solely responsible for the costs and expenses associated with maintaining such escrow account, otherwise GSK Santaris and Regulus shall be ***Confidential Treatment Requested mutually responsible for the costs and expenses associated with maintaining such escrow account; provided, that the Parties must mutually agree (such agreement not to be unreasonably withheld) before taking any action that would cause GSK Santaris to lose sole control of such escrow account. If a Valid Claim within the Regulus [...***...] Patents that [...***...] an SPC-3649 Product issues after the Royalty Tail Period, then GSK Santaris will pay Regulus the full GSK Santaris Patent Royalty in such countries starting only from the date of such issuance of the Valid Claim and shall not owe any GSK Santaris Patent Royalty in such countries for any preceding period.. Prosecution and Maintenance of Xxxxxx Patents At Regulus’ expense, Regulus shall (but shall not be obligated to) control and be responsible for all aspects of the Prosecution, Maintenance, enforcement and defense of all Xxxxxx Patents No Challenge Santaris covenants to Regulus that pursuant to the Santaris Option to take a license to the [...***...] Patents, that during the term of the Santaris Option and any license agreement granted thereunder, solely with respect to claims within the Regulus Patent Rights to the [...***...] Patents that are to be included in the license to be granted to Santaris pursuant to the terms set forth in this Exhibit H, Santaris, its Affiliates or ***Confidential Treatment Requested

Royalty Adjustment. If there are no Valid Claims within the Regulus Patents that [...***...] an SPC-3649 Product sold in a particular country, the GSK Patent Royalty set forth in Section 5.5.1 shall be reduced to [...***...] percent ([...***...]%) of the GSK Patent Royalty rates above in such countries where a Pending Claim within the Regulus Patents claims [...***...] an SPC-3649 Product has not yet been issued. For the avoidance of doubt, for such Pending Claims, GSK shall pay Regulus [...***...] percent ([...***...]%) of the GSK Patent Royalty set forth in Section 5.5.1 above, and shall pay the remaining [...***...] percent ([...***...]%) of the GSK Patent Royalty into an escrow account, until such time as a Valid Claim within the Regulus Patents issues that covers [...***...] an SPC-3649 Product being sold in the country of sale, provided that such Valid Claim must issue within [...***...] years of date of First Commercial Sale of an SPC-3649 Product (the “Royalty Tail Period”). In the event such Valid Claim issues during the Royalty Tail Period, (i) the escrow account and any interest thereon shall be paid to Regulus and (ii) GSK will pay the full GSK Patent Royalty in such countries starting only from the date of such issuance of the Valid Claim and shall not owe any GSK Patent Royalty in such countries for any preceding period. In the event that no such Valid Claim issues during the Royalty Tail Period, then the escrowed amounts and any interest thereon shall be returned to GSK and any obligations GSK may have had with respect to the Pending Claims shall cease. If GSK maintains sole control over such escrow account then GSK shall be solely responsible for the costs and expenses associated with maintaining such escrow account, otherwise GSK and Regulus shall be ***Confidential Treatment Requested mutually responsible for the costs and expenses associated with maintaining such escrow account; provided, that the Parties must mutually agree (such agreement not to be unreasonably withheld) before taking any action that would cause GSK to lose sole control of such escrow account. If a Valid Claim within the Regulus Patents that [...***...] an SPC-3649 Product issues after the Royalty Tail Period, then GSK will pay Regulus the full GSK Patent Royalty in such countries starting only from the date of such issuance of the Valid Claim and shall not owe any GSK Patent Royalty in such countries for any preceding period.

Royalty Adjustment. If there are no Valid Claims within the Regulus Patents that [...***...] an Patents that claim [***] SPC-3649 Product sold in a particular country, the GSK Santaris Patent Royalty set forth in Section 5.5.1 above shall be reduced to [...***...] percent ([...***...]%) of the GSK Santaris Patent Royalty rates above in such countries where a Pending Claim within the Regulus [***] Patents claims [...***...] an SPC-3649 Product has not yet been issued. For the avoidance of doubt, for such Pending Claims, GSK Santaris shall pay Regulus [...***...] percent ([...***...]%) of the GSK Santaris Patent Royalty set forth in Section 5.5.1 the table above, and shall pay the remaining [...***...] percent ([...***...]%) of the GSK Santaris Patent Royalty into an escrow account, until such time as a Valid Claim within the Regulus [***] Patents issues that covers the [...***...] an SPC-3649 Product being sold in the country of sale, provided that such Valid Claim must issue within [...***...] years of date of First Commercial Sale of an SPC-3649 Product (the “Royalty Tail Period”). In the event such Valid Claim issues during the Royalty Tail Period, (i) the escrow account and any interest thereon shall be paid to Regulus and (ii) GSK Santaris will pay the full GSK Santaris Patent Royalty in such countries starting only from the date of such issuance of the Valid Claim and shall not owe any GSK Santaris Patent Royalty in such countries for any preceding period. In the event that no such Valid Claim issues during the Royalty Tail Period, then the escrowed amounts and any interest thereon shall be returned to GSK Santaris and any obligations GSK Santaris may have had with respect to the Pending Claims shall cease. If GSK Santaris maintains sole control over such escrow account then GSK Santaris shall be solely responsible for the costs and expenses associated with maintaining such escrow account, otherwise GSK Santaris and Regulus shall be ***Confidential Treatment Requested mutually responsible for the costs and expenses associated with maintaining such escrow account; provided, that the Parties must mutually agree (such agreement not to be unreasonably withheld) before taking any action that would cause GSK Santaris to lose sole control of such escrow account. If a Valid Claim within the Regulus [***] Patents that [...***...] an SPC-3649 Product issues after the Royalty Tail Period, then GSK Santaris will pay Regulus the full GSK Santaris Patent Royalty in such countries starting only from the date of such issuance of the Valid Claim and shall not owe any GSK Santaris Patent Royalty in such countries for any preceding period. Prosecution and Maintenance of Xxxxxx Patents At Regulus’ expense, Regulus shall (but shall not be obligated to) control and be responsible for all aspects of the Prosecution, Maintenance, enforcement and defense of all Xxxxxx Patents No Challenge Santaris covenants to Regulus that pursuant to the Santaris Option to take a license to the [***] Patents, that during the term of the Santaris Option and any license agreement granted thereunder, solely with respect to claims within the Regulus Patent Rights to the [***] Patents that are to be included in the license to be granted to Santaris pursuant to the terms set forth in this Exhibit H, Santaris, its Affiliates or Sublicensees will not, in the U.S. or any other Major Country, (a) commence or otherwise voluntarily determine to participate in (other than as may be necessary or reasonably required to assert a cross-claim or a counter-claim or to respond to a court request or order or administrative law request or order) any action or proceeding, challenging or denying the validity of any claim within an issued patent or patent application within the [***] Patents, or (b) direct, support or actively assist any other Person (other than as may be necessary or reasonably required to assert a cross-claim or a counter-claim or to respond to a court request or order or administrative law request or order) in bringing or prosecuting any action or proceeding challenging or denying the validity of any claim within an issued patent or patent application within the [***] Patents. For purposes of clarification, any breach of these terms will be a material breach of the license granted to Santaris, and will be grounds for termination by Regulus of the license.