Royalty Payments. As consideration to PROGENICS for the development of the GMK Vaccine and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this Agreement, during the term of this Agreement, BMS shall pay to PROGENICS a royalty on Net Sales of any Licensed Product commencing on the First Commercial Sale of such Licensed Product by BMS, its Affiliates or its Sub-sublicensees as follows: (a) With respect to the GMK Vaccine: (i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product: (A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and (B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by: (C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement. (ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product: (A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and (B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by: (C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement. (iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections (a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used. (iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows: (A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z; (B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z; (C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and (D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where: X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX] (1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory (b) With respect to the MGV Vaccine and any other Licensed Products: (i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product: (A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by: (B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement. (ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product: (A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by: (B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement. (c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.
Appears in 2 contracts
Sources: Joint Development and Master License Agreement (Progenics Pharmaceuticals Inc), Joint Development and Master License Agreement (Progenics Pharmaceuticals Inc)
Royalty Payments. As consideration to PROGENICS for the development of the GMK Vaccine and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this Agreement, during the term of this Agreement, BMS shall pay to PROGENICS a royalty on Net Sales of any Licensed Product commencing on the First Commercial Sale of such Licensed Product by BMS, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to For Cell Products or cell Diagnostic Products which are covered, in the GMK Vaccinecountry where the product is sold, by a Valid Claim, under AEGERA Invented Patent Rights and/or Jointly Invented Patent Rights:
(i) With respect having more than $[**] million in Net Sales per calendar year, CURIS shall pay [**]% of Net Sales to those countries in the Territory where such Licensed Product is not a Generic Product:AEGERA;
(Aii) having between $[XXX**] of the and [**] million in Net Sales per calendar year, CURIS shall pay [**]% of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]to AEGERA; and
(Biii) After having less than $[**] million in Net Sales per calendar year, CURIS shall pay [**]% of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product to AEGERA;
(b) For Protein Products or protein Diagnostic Products which are covered, in such countries until the end of such country where the product is sold, by a Valid Claim, under AEGERA Invented Patent Rights and/or Jointly Invented Patent Rights: CURIS - AEGERA License and Collaboration (Execution Copy) Confidential Materials omitted and filed separately with the Securities and Exchange Commission. Asterisks denote omissions.
(i) having more than $[**] million in Net Sales per calendar year; reduced by:
(C) The sum , CURIS shall pay [**]% of the royalty payments due by BMS Net Sales to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.AEGERA;
(ii) With respect to those countries having between $[**] and [**] million in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales per calendar year, CURIS shall pay [**]% of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]to AEGERA; and
(Biii) After having less than $[**] million in Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such per calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties , CURIS shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed pay [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount **]% of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Zto AEGERA;
(Bc) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such yearFor Small Molecule Products and small molecule Diagnostic Products which are covered, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to country where the MGV Vaccine and any other Licensed Productsproduct is sold, by a Valid Claim, under AEGERA Invented Patent Rights and/or Jointly Invented Patent Rights:
(i) With respect having more than $[**] million in Net Sales per calendar year, CURIS shall pay [**]% of Net Sales to those countries AEGERA;
(ii) having between $[**] and [**] million in Net Sales per calendar year, CURIS shall pay [**]% of Net Sales to AEGERA; and
(iii) having less than $[**] million in Net Sales per calendar year, CURIS shall pay [**]% of Net Sales to AEGERA;
(d) For Products (i) [**] in the Territory country where such Licensed Product the product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i)sold, (ii) and (iv) which are [**] under the Research Program, Curis shall pay to AEGERA [**]% of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreementrelevant royalty rate specified in Sections 7.6 (a), Section 4.4(b) of The Regents Sublicense Agreement (b), and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to above on the amount of Net Sales above [**] million dollars in any country commencing with each country. Such payments under this section 7.6(d) shall be due for a period of 10 years from the calendar quarter during which such Licensed Product first becomes a Generic Product commercial sale in such country.
(e) In the event that CURIS sublicenses or sells any of its rights under this Agreement, CURIS shall pay AEGERA (i) [**]% of the proceeds or any royalties received by CURIS for the sale of the Products or rights specified above; (ii) [**]% of any non-royalty sublicense or purchase cash payments (excluding equity payments, research, or patent costs) received by CURIS for the Products or sale of rights specified above in excess of $[**] per indication; and
Appears in 1 contract
Royalty Payments. As consideration (a) During the applicable Royalty Term, Novartis will make royalty payments to PROGENICS for the development of the GMK Vaccine and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this Agreement, during the term of this Agreement, BMS shall pay to PROGENICS a royalty Regeneron based on total worldwide Net Sales of Covered Products by Novartis, its Affiliates, and Product Licensees/Assignees at the applicable rates set forth below. Aggregate Net Sales by Novartis, its Affiliates, and Product Licensees/Assignees of Royalty Covered Products in any Licensed Product commencing on Calendar Year Rate Aggregate annual Net Sales of Covered Products less than or equal to [**********] 4% Aggregate annual Net Sales of Covered Products over [**********] but less than or [**] equal to [*********] Aggregate annual Net Sales of Covered Products over [**********] but less than or [**] equal to [*********] Aggregate annual Net Sales of Covered Products over [********] but less than or equal [**] to [*********] Aggregate annual Net Sales of Covered Products over [*********] but less than or [**] equal to US$ 1.5 billion Aggregate annual Net Sales of Covered Products over US$ 1.5 billion 15% For example,[**********************************].
(b) Royalties will be payable during the Royalty Term, which shall commence from First Commercial Sale of such Licensed Product by BMS, and expire when Novartis (and/or its Affiliates or its SubProduct Licensees/Assignees) ceases distribution and sale of all Covered Products. [******************]. Following the Royalty Term (but subject to Sections 4.1(d) and 4.1(e) below), on a country-sublicensees as follows:
(a) With respect by-country basis, the covenants made by Regeneron pursuant to the GMK Vaccine:
(i) With respect to those countries Section 3.1 hereunder shall continue in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX]effect, [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period but become fully paid-up, royalty-free, perpetual and irrevocable with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreementcountry.
(c) The royalty rates applicable For the avoidance of doubt, royalties shall be payable only once with respect to Generic Products the same unit of Covered Product.
(d) Notwithstanding the foregoing, with respect to any country for which the Royalty Term has expired pursuant to Sections 6.5(a)(iiSection 4.1(b)(i) and 6.5(b)(ii)above, respectivelyin the event that the conditions reflected in Section 4.1(b)(i) cease to be satisfied following expiration of the Royalty Term in such country [*****************], shall apply the obligation to pay royalties under this Section 4.1 on Net Sales of Covered Products in such country shall resume with immediate effect until the conditions reflected in Section 4.1(b)(i) are again satisfied with respect to such country [***********************], in which case the terms of this Section 4.1(d) shall remain in effect.
(e) Notwithstanding the foregoing, with respect to any country commencing for which the Royalty Term has been deemed to have expired pursuant to Section 4.1(b)(ii) above [*******************************] the obligation to pay royalties under this Section 4.1 on Net Sales of Covered Products in such country shall resume with immediate effect until the calendar quarter during which such Licensed Product first becomes a Generic Product conditions reflected in Section 4.1(b)(i) are satisfied with respect to Covered Products in such country, in which case the terms of Section 4.1(d) shall remain in effect.
Appears in 1 contract
Sources: Il 1 Antibody Termination Agreement
Royalty Payments. As consideration to PROGENICS for the development of the GMK Vaccine and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License sublicense and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this Agreement, during the term of this Agreement, BMS shall pay to PROGENICS a royalty on Net Sales of any Licensed S-K Product commencing on the First Commercial Sale of such Licensed S-K Product by BMS, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to the GMK Vaccine:
(i) With respect to those countries in the Territory where such Licensed S-K Product is not covered by a Generic ProductValid Claim in such countries:
(A) [XXX] of the Net Sales of such Licensed S-K Product in such countries for any calendar year until royalties relating to all S-K Products throughout the Territory in the amount of [XXX] have accrued and are payable by BMS to PROGENICS in such calendar year; and
(B) After royalties relating to all S-K Products throughout the Territory in the amount of [XXX] have accrued and are payable by BMS to PROGENICS in such calendar year, [XXX] of any further Net Sales of such S-K Product in such countries until Net Sales of such S-K Product throughout the Territory in such calendar year equal [XXX]; and
(C) After Net Sales of such S-K Product throughout the Territory in such calendar year exceed [XXX] of any further Net Sales of such S-K Product in such countries until the end of such calendar year.
(ii) With respect to those countries in the Territory where such S-K Product is not covered by, or is no longer covered by, a Valid Claim in such countries (unless such S-K Product has become a Generic Product in any such country, in which case subparagraph (iii) below shall apply):
(A) [XXX] of the Net Sales of such S-K Product in such countries for any calendar year until Net Sales of such Licensed S-K Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of for such Licensed S-K Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed S-K Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(iiiii) With respect to those countries in the Territory where such Licensed S-K Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed S-K Product in such countries for any calendar year until Net Sales of such Licensed S-K Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of for such Licensed S-K Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed S-K Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iiiiv) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A4.2(a)(i)(A), 4.2(a)(ii)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively4.2(a)(iii)(A) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year; provided, however, that in the calendar quarter in which royalties relating to all S-K Products throughout the Territory in the aggregate amount of at least [XXX] have accrued and are payable by BMS to PROGENICS for the calendar year, and in each subsequent calendar quarter in that calendar year, royalties under Section 4.2(a)(i) shall be paid at the royalty rate set forth in Section 4.2(a)(i)(B) in lieu of the royalty rate set forth in Section 4.2(a)(i)(A). Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(BSections 4.2(a)(i)(C), 4.2(a)(ii)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively4.2(a)(iii)(B) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)4.2(a)(v), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed S-K Product throughout the Territory for the first three calendar quarters of such year. The calculation of the amount to be paid with respect to the fourth calendar quarter of each year (as shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties, paid, to be applied against [XXX] of accrued royalties until the entire credit has been reduced by the amounts set forth in Sections 6.5(a)(i)(Cused.
(v) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the The total amount of royalties paid or actually due for each year under this Section 4.2(a) shall be calculated as follows:
(A) The royalty rate set forth in Section 4.2(a)(i)(A) shall be applied to that amount of Net Sales of such S-K Product determined under the formula X(1), x Y(1)/Z x [XXX]/W;
(B) The royalty rate set forth in Section 4.2(a)(i)(B) shall be applied to that amount of Net Sales of such S-K Product determined under the formula X(1) x Y(1)/Z x [1-[XXX]/W];
(C) The royalty rate set forth in Section 4.2(a)(i)(C) shall be applied to that amount of Net Sales of such S-K Product determined under the formula X(2) x Y(1)/Z;
(D) The royalty rate set forth in Section 4.2(a)(ii)(A) shall be applied to that amount of Net Sales of such S-K Product determined under the formula X(1) x Y(2)/Z;
(E) The royalty rate set forth in Section 4.2(a)(ii)(B) shall be applied to that amount of Net Sales of such S-K Product determined under the formula X(2) x Y(2)/Z;
(F) The royalty rate set forth in Section 4.2(a)(iii)(A) shall be applied to that amount of Net Sales of such S-K Product determined under the formula X(1) x Y(3)/Z; and
(G) The royalty rate set forth in Section 4.2(a)(iii)(B) shall be applied to that amount of Net Sales of such S-K Product determined under the formula X(2) x Y(3)/Z; Where: W = the sum of the amount of the royalties that are generated by the first [XXX] of Net Sales of each S-K Product which have accrued and are payable by BMS to PROGENICS for any calendar year with respect to each S-K Product included in all S-K Products throughout the Territory; provided that if the foregoing sum of royalties is less than [XXX] then W shall equal [XXX]
X(1) = smaller of: (i) the actual annual Net Sales of such Licensed S-K Product throughout the Territory for such year; or (ii) [XXX] X(2) = the actual annual Net Sales of such S-K Product throughout the Territory for such year pursuant in excess of [XXX] Y(1) = the annual Net Sales of such S-K Product for such year in all countries when Section 4.2(a)(i) applies Y(2) = the annual Net Sales of such S-K Product for such year in all countries when Section 4.2(a)(ii) applies Y(3) = the annual Net Sales of such S-K Product for such year in all countries when Section 4.2(a)(iii) applies Z = the annual Net Sales of such S-K Product for such year in all countries in the Territory
(b) With respect to Section 4.2(a)(ivthe MGV Vaccine and any other S-K Products:
(i) With respect to those countries in the Territory where such S-K Product is covered by a Valid Claim in such countries:
(A) [XXX] of the ▇▇▇▇▇Net Sales of such S-▇▇▇▇▇▇▇▇▇ Sublicense AgreementK Product in such countries for any calendar year until royalties relating to all S-K Products throughout the Territory in the amount of [XXX] have accrued and are payable by BMS to PROGENICS in such calendar year; and
(B) After royalties relating to all S-K Products throughout the Territory in the amount of [XXX] have accrued and are payable by BMS to PROGENICS in such calendar year, Section 4.4(a[XXX] of any further Net Sales of such S-K Product in such countries until the end of such calendar year.
(ii) of The Regents Sublicense Agreement and Section 4.2(a)(ivWith respect to those countries in the Territory where such S-K Product is not covered by, or is no longer covered by, a Valid Claim in such countries (unless such S-K Product has become a Generic Product in any such country, in which case subparagraph (iii) below shall apply), [XXX] of the Aquila Sublicense Agreement Net Sales of such S-K Product in such countries for any calendar year.
(after giving effectiii) With respect to those countries in the Territory where such S-K Product is a Generic Product, for purposes of this calculation, to any credit due to BMS pursuant to any [XXX] of the foregoing sections Net Sales of such S-K Product in such countries for any calendar year.
(iv) Royalties shall be paid at the royalty rate set forth in Section 4.2(b)(i)(A) through the end of the sublicense agreements, calendar quarter preceding the calendar quarter in which credit royalties relating to all S-K Products throughout the Territory in the aggregate amount of at least [XXX] have accrued and are payable by BMS to PROGENICS for the calendar year. Royalties shall be extinguished paid at the royalty rate set forth in Section 4.2(b)(i)(B) for the calendar quarter in which royalties relating to all S-K Products throughout the extent given effect thereforTerritory in the aggregate amount of at least [XXX] have accrued and are payable by BMS to PROGENICS for the calendar year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be the aggregate of the amounts for the entire year, calculated as provided in Sections 4.2(b)(ii), (iii) and (v), and such amount of royalties shall be paid, reduced by the total amount of royalties paid with respect to such S-K Product throughout the Territory for the first three calendar quarters of such year. The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(ivv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)4.2(b)(i) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A4.2(b)(i)(A) shall be applied to that amount of Net Sales of such Licensed S-K Product determined under the formula X(1) X x Y(1)/Z;[XXX]/W; and
(B) The royalty rate set forth in Section 6.5(a)(i)(B4.2(b)(i)(B) shall be applied to that amount of Net Sales of such Licensed S-K Product determined under the formula X(2) X x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to [1-[XXX]/W]; Where: W = the sum of the amount of the royalties that amount are generated by the first [XXX] of Net Sales of such Licensed each S-K Product determined under which have accrued and are payable by BMS to PROGENICS for any calendar year with respect to each S-K Product included in all S-K Products throughout the formula X(1) x Y(2)/ZTerritory; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) provided that if the foregoing sum of royalties is less than [XXX], then W shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) equal [XXX] X = the smaller of: (i) the actual annual Net Sales of such Licensed S-K Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic S-K Products not covered by a Valid Claim pursuant to Sections 6.5(a)(ii4.2(a)(ii) and 6.5(b)(ii4.2(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed S-K Product is first not covered by a Valid Claim in such country.
(d) The royalty rates applicable to Generic Products pursuant to Sections 4.2(a)(iii) and 4.2(b)(iii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such S-K Product first becomes a Generic Product in such country.
Appears in 1 contract
Sources: Sublicense Agreement (Progenics Pharmaceuticals Inc)
Royalty Payments. As (a) Base Royalties for Sales of Licensed Products in the United States. Subject to the terms and conditions of this Agreement including the remainder of this Section 10.4, in consideration to PROGENICS for the development of the GMK Vaccine rights and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) licenses granted to BMS by PROGENICS under this Agreement, Jazz shall, during the term of this Agreementapplicable Royalty Term, BMS shall pay to PROGENICS a royalty Werewolf the following running royalties on Annual Net Sales of any all Licensed Product commencing on Products (combined) in the First Commercial Sale of such Licensed Product United States by BMSJazz, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to and their Sublicensees, in accordance with this Section 10.4 and the GMK Vaccine:
(i) With respect to those countries payment provisions in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a creditArticle 11, equal to the amount following percentages of such excess royalties paid, to be applied against [XXX] Annual Net Sales: Portion of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Annual Net Sales of such all Licensed Product determined under Products in the formula X(1United States less than [**] Dollars ($[**]) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount [**]% Portion of Annual Net Sales of such all Licensed Product determined under Products in the formula X(2United States greater than or equal to [**] Dollars ($[**]) x Y(1)/Z;
and less than [**] Dollars (C$[**]) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount [**]% Portion of Annual Net Sales of such all Licensed Product determined under Products in the formula X(1) x Y(2)/Z; and
United States greater than or equal to [**] Dollars (D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii$[**]) [XXX**]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory%
(b) With respect Base Royalties for Sales of Licensed Products in the Rest of the Territory. Subject to the MGV Vaccine terms and any other Licensed Products:
(i) With respect conditions of this Agreement including the remainder of this Section 10.4, in consideration for the rights and licenses granted under this Agreement, Jazz shall, during the applicable Royalty Term, pay to those countries in Werewolf the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the following running royalties on Annual Net Sales of such all Licensed Product Products (combined) in such countries for any calendar year; reduced by:
(B) the sum Rest of the royalty payments due Territory by BMS Jazz, its Affiliates and their Sublicensees, in accordance with this Section 10.4 and the payment provisions in Article 11, equal to PROGENICS during the comparable period with respect to following percentages of such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) Annual Net Sales: Portion of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Annual Net Sales of such all Licensed Product Products in such countries for any calendar year; reduced by:
(B) the sum Rest of the royalty payments due by BMS to PROGENICS during Territory less than [**] Dollars ($[**]) [**]% Portion of Annual Net Sales of all Licensed Products in the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) Rest of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement Territory greater than or equal to [**] Dollars ($[**]) and Section 4.2(b)(iiiless than [**] Dollars ($[**]) [**]% Portion of Annual Net Sales of all Licensed Products in the Rest of the Aquila Sublicense Agreement.
Territory greater than or equal to [**] Dollars (c$[**]) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.[**]%
Appears in 1 contract
Sources: Collaboration and License Agreement (Werewolf Therapeutics, Inc.)
Royalty Payments. As consideration to PROGENICS for the development of the GMK Vaccine and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this Agreement, during the term of this Agreement, BMS shall pay to PROGENICS a royalty on Net Sales of any Licensed Product commencing on the First Commercial Sale of such Licensed Product by BMS, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to On a country-by-country and Niclosamide Product-by-Niclosamide Product basis, following the GMK Vaccine:
first commercial sale of each Niclosamide Product in such country, until the later of (i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] expiration of the last to expire Valid Claim of any Seller Patent covering the manufacture, use or sale of such Niclosamide Product in such country, or (ii) the expiration of any regulatory or data exclusivity covering such Niclosamide Product in such country, (the “Royalty Period”), Parent shall cause to be paid to the Securityholders a royalty payment equal to two and a half percent (2.5%) of annual worldwide Net Sales of such Licensed Niclosamide Product (the “Royalty Payment”). Within thirty (30) days after the end of each calendar quarter during the Royalty Period, the Parent or its designee shall deliver the Sales Report to the Stockholder Representative, including the actual aggregate Royalty Payment payable to the Securityholders during such calendar quarter in the Royalty Period, and the amount of the Royalty Payment paid. Any amounts payable by or on behalf of the Parent under this Section 3.7 shall be due and payable within sixty (60) days after the end of each fiscal quarter during the applicable Royalty Period. Following the Royalty Period in respect of a Niclosamide Product, no additional Royalty Payment shall be due and owing in respect of such countries Niclosamide Product except for any calendar year until Royalty Payment in respect of such Niclosamide Product that was accrued but unpaid during the Royalty Period. Notwithstanding anything in this Agreement to the contrary, solely with respect to Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales Niclosamide Products by or on behalf of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS a Third Party that has obtained rights to PROGENICS during the comparable period with respect to such Licensed Product commercialize Niclosamide Products pursuant to Sections 4.2(a)(ia license or a sublicense granted by Parent (or any Affiliate) and under the Seller Patents (“Sublicensee Net Sales”), in each country where (i) Niclosamide Product is not covered by a granted Seller Patent; (ii) of the Niclosamide Product is no longer covered under ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Orphan Drug, Pediatric, or other non-patent exclusivity, or applicable similar standards outside of the United States; (iii) such Niclosamide Product is subject to a Royalty Payment under this Section 4.4(a3.7, (iv) a generic equivalent of The Regents Sublicense Agreement and Sections 4.2(a)(iNiclosamide Product has been approved in such country under 21 U.S.C. Section 355(j) (or a substantially similar application or filing in jurisdictions outside of the United States) and such generic equivalent is actively marketed, and (iiv) the entry of the Aquila Sublicense Agreement.
such generic equivalent results in a reduction in Net Sales of Niclosamide Products in such country of twenty-five percent (ii25%) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of or greater when compared with the Net Sales of Niclosamide Products in such Licensed country prior to the launch of such generic equivalent, then with respect to each such Niclosamide Product in such countries for any calendar year until Net Sales of such Licensed Product throughout country, from the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the first full calendar quarter preceding after the calendar quarter conditions in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
subclause (av) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)occur, respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS Parent shall be entitled to a credit, equal to reduction of 25% of the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually Royalty Payment otherwise due for each year under this Section 6.5(a) (before Agreement on such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Sublicensee Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the TerritorySales.
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] If, as of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) Closing Date, the sum fair market value of the royalty payments due by BMS to PROGENICS during Contingent Consideration is greater than sixty percent (60%)of the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i)total fair market value of the Merger Consideration, no more than sixty percent (ii) and (iv60%) of each Royalty Payment may be paid in cash and the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreementremainder shall be paid in Parent Common Stock (with such Parent Common Stock valued using the Contingent Stock Payment Valuation). In the event the preceding sentence does not apply, Section 4.4(b) Royalty Payments may be paid in cash, in shares of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) Parent Common Stock, or in any combination of both as the Aquila Sublicense Agreement.
(ii) With respect to those countries Parent may determine in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreementits sole discretion.
(c) The royalty rates applicable All cash payments to Generic Products pursuant be made by the Parent under this this Section 3.7 will be made to Sections 6.5(a)(iithe Securityholders by depositing with the Paying Agent in an account designated by the Paying Agent in writing (for further distribution to the Securityholders) in accordance with this Agreement and 6.5(b)(ii)the Closing Spreadsheet, respectivelywhich payments will be made to each such Securityholder as promptly as practicable thereafter, shall apply to Net Sales and in any country commencing with event no later than five (5) Business Days following receipt thereof by the calendar quarter during which Paying Agent) the portion of such Licensed Product first becomes a Generic Product Milestone Payment specified by the Stockholder Representative in such countrywriting to be paid by the Paying Agent.
Appears in 1 contract
Royalty Payments. As consideration (a) During the applicable Royalty Term, Regeneron will make royalty payments to PROGENICS for the development of the GMK Vaccine and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this Agreement, during the term of this Agreement, BMS shall pay to PROGENICS a royalty Novartis based on total worldwide Net Sales of any Licensed Covered Products by Regeneron, its Affiliates, and Product commencing on Licensees/Assignees at the applicable rates set forth below. Aggregate annual Net Sales of Covered Products less than or equal to [********] 4% Aggregate annual Net Sales of Covered Products over [********] but less than or equal to [********] [**] Aggregate annual Net Sales of Covered Products over [********] but less than or equal to [*********] [**] Aggregate annual Net Sales of Covered Products over [*******] but less than or equal to [*******] [**] Aggregate annual Net Sales of Covered Products over [*******] but less than or equal to US$ 1.5 billion [**] Aggregate annual Net Sales of Covered Products over US$ 1.5 billion 15% For example, [***************************].
(b) Royalties will be payable during the Royalty Term, which shall commence from First Commercial Sale of such Licensed Product by BMS, and expire when Regeneron (and/or its Affiliates or its SubProduct Licensees/Assignees) ceases distribution and sale of all Covered Products. [*******************] Following the Royalty Term (but subject to Sections 4.1(d) and 4.1(e) below), on a country-sublicensees as follows:
(a) With respect by-country basis, the covenants made by Novartis pursuant to the GMK Vaccine:
(i) With respect to those countries Section 3.1 hereunder shall continue in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX]effect, [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period but become fully paid-up, royalty-free, perpetual and irrevocable with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreementcountry.
(c) The royalty rates applicable For the avoidance of doubt, royalties shall be payable only once with respect to Generic Products the same unit of Covered Product.
(d) Notwithstanding the foregoing, with respect to any country for which the Royalty Term has expired pursuant to Sections 6.5(a)(iiSection 4.1(b)(i) and 6.5(b)(ii)above, respectively, shall apply in the event that the conditions reflected in Section 4.1(b)(i) cease to Net Sales in any country commencing with be satisfied following expiration of the calendar quarter during which such Licensed Product first becomes a Generic Product Royalty Term in such country,[**********************], the obligation to pay royalties under this Section 4.1 on Net Sales of Covered Products in such country shall resume with immediate effect until the conditions reflected in Section 4.1(b)(i) are again satisfied with respect to such country [********************************], in which case the terms of this Section 4.1(d) shall remain in effect.
(e) Notwithstanding the foregoing, with respect to any country for which the Royalty Term has been deemed to have expired pursuant to Section 4.1(b)(ii) above, [***************************************] the obligation to pay royalties under this Section 4.1 on Net Sales of Covered Products in such country shall resume with immediate effect until the conditions reflected in Section 4.1(b)(i) are satisfied with respect to Covered Products in such country, in which case the terms of Section 4.1(d) shall remain in effect.
Appears in 1 contract
Sources: Termination Agreement (Regeneron Pharmaceuticals Inc)
Royalty Payments. As In addition to the payments under Sections 6.1 and 6.2, in consideration to PROGENICS for the development of the GMK Vaccine rights granted hereunder, and the MGV Vaccine conducted by PROGENICS prior subject to the Effective Date terms and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this Agreement, during the term conditions of this Agreement, BMS PFIZER shall pay to PROGENICS a royalty on PSIVIDA, with respect to each Licensed Product, an amount equal to [...]*% of Net Sales for the portion of any Licensed Product commencing on the First Commercial Sale Net Sales of such Licensed Product by BMSin a calendar year in the Territory. Notwithstanding the foregoing, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to the GMK Vaccine:
(i) With for Net Sales based on sales of a Licensed Product in the United States, any payments owed with respect to those countries sales of such Licensed Product pursuant to this Section 6.3 shall be reduced by [...]* percent ([...]*%) [...]*for the remainder of the applicable Royalty Term if a Generic Product is available in the United States, any such reduction to be prorated appropriately for the then-current PFIZER Quarter; (ii) for Net Sales based on sales of a Licensed Product in a country in the Territory where other than the United States, any payments owed with respect to sales of such Licensed Product is not in such country pursuant to this Section 6.3 shall be reduced by [...]* percent ([...]*%), such reduction to be prorated appropriately for the then-current PFIZER Quarter, for so long as and at any time that a Generic Product:
Product is available in such country; and (Aiii) for Net Sales based on sales of a Licensed Product in any country in the Territory, payments owed with respect to sales of such Licensed Product pursuant to this Section 6.3 shall be reduced to an amount equal to [XXX] ...]*% of Net Sales for the portion of Net Sales of such Licensed Product in such countries country for so long as and at any calendar year until Net Sales of such Licensed Product throughout time that the Territory following events occur or are in such calendar year equal [XXX]; and
existence: (Ba) After Net Sales of such Licensed Product throughout the Territory a Competitive Device is being marketed in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
that country and (Cb) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(iclause (i) and (ii) of this Section 6.3 do not otherwise apply. The Parties agree and acknowledge that the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) payment of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of royalties by PFIZER to PSIVIDA for sales in a country in which there is no Valid Claim covering the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such applicable Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) represent consideration for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided license to PSIVIDA Technology granted by PSIVIDA to PFIZER in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used4.1.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.
Appears in 1 contract
Sources: Collaborative Research and License Agreement (pSivida LTD)
Royalty Payments. As consideration to PROGENICS DEVAX shall pay SURMODICS a royalty for the development Patent Rights and Know-how license granted herein, which will be the greater of the GMK Vaccine and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicensesParagraphs 5(a) granted to BMS by PROGENICS under this Agreement, during the term of this Agreement, BMS shall pay to PROGENICS a royalty or 5(b) as follows:
a. Earned royalties on Net Sales of any Licensed Product, at the rates in the table below. CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED. [***] [***] [***] [***] [***] [***] The royalty rates in the above table shall apply separately to each calendar year. Reductions in earned royalties under this Paragraph 5 shall occur as and when DEVAX’s cumulative Net Sales of Licensed Product commencing on in a calendar year reach the First Commercial Sale next level in the above table. For example, during the third calendar quarter of such a given year, DEVAX’s cumulative Net Sales of Licensed Product by BMS, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to the GMK Vaccine:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) that calendar year reach [XXX***]. DEVAX shall pay SURMODICS an earned royalty of [***] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal first [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX***] of any further Net Sales Sales, and shall pay SURMODICS an earned royalty of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX***] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal next [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX***] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor)Sales. The calculation of the amount to be paid with respect to royalty rate for the fourth calendar quarter of each that calendar year shall will be included on the royalty report for such [***] of Net Sales unless and until DEVAX’s cumulative Net Sales of Licensed Product reach [***] during that calendar quarter. In On January 1 of the event that BMS has paid more royalties during the first three next calendar quarters of any year than BMS owes for the entire year, BMS the earned royalty shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX***] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth sold in Section 6.5(a)(i)(B) shall be applied to that amount of calendar year unless and until DEVAX’s cumulative Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries a calendar year reach the next level in the above table.
b. Quarterly Minimum Royalties for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS all Licensed Products during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Productperiods specified as follows:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.
Appears in 1 contract
Sources: Master License Agreement (Devax Inc)
Royalty Payments. As consideration to PROGENICS for 4.1 Omeros shall pay Asubio a royalty (the development “Royalty”) as a percentage of Net Sales. The Royalty shall be computed in accordance with the applicable one of the GMK Vaccine and following subsections:
4.1.1 For Products containing one or more Parent Compounds, the MGV Vaccine conducted by PROGENICS Royalty shall be either (a) prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this Agreement, during the term expiration of this Agreement, BMS shall pay to PROGENICS a royalty on Net Sales of any Licensed Product commencing on the First Commercial Sale of such Licensed Product by BMS, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to the GMK Vaccine:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] all applicable valid claims of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX]Asubio Patents, [XXX†] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under Products, and then (b) after the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount expiration of all applicable valid claims of the Asubio Patents, [†] of Net Sales of such Licensed Product determined under Products if the formula X(2use of such Products is encompassed by valid claim(s) x Y(1)/Z;in the Field Improvement Patents in the countries in which such Products are used; or
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) 4.1.2 For Products containing one or more Minor Improved Compounds, the Royalty shall be applied either (a) prior to that amount the expiration of all applicable valid claims of the Asubio Patents, [†] of Net Sales of such Licensed Product determined under Products, and then (b) after the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount expiration of all applicable valid † DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION claims of the Asubio Patents, [†] of Net Sales of such Licensed Product determined under Products if the formula X(2use of such Products is encompassed by valid claim(s) x Y(2)/Zin the Field Improvement Patents in the countries in which such Products are used; Where:or
X(14.1.3 For Products containing one or more Major Improved Compounds, the Royalty shall be (a) = prior to the smaller of: (i) expiration of all applicable valid claims of the actual annual Asubio Patents, [†] of Net Sales of such Licensed Product throughout Products, and then (b) after the Territory for such yearexpiration of all applicable valid claims of the Asubio Patents and prior to the expiration of all applicable valid claims of the Compound Improvement Patents, or (ii) [XXX]
(1) = the annual †] of Net Sales of such Licensed Product for such year in Products, and then (c) after the expiration of all countries when Section 6.5(a)(i) applies Y(2) = applicable valid claims of the annual Asubio Patents and the Compound Improvement Patents, [†] of Net Sales of such Licensed Product for Products if the use of such year Products is encompassed by valid claim(s) in the Field Improvement Patents in the countries in which such Products are used; or
4.1.4 For Products containing one or more Other Improved Compounds, the Royalty shall be either (a) prior to the expiration of all countries when Section 6.5(a)(ii) applies Z = applicable valid claims of the annual Compound Improvement Patents, [†] of Net Sales of such Licensed Product for such year in all countries in the Territory
Products, and then (b) With respect to after the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in expiration of all applicable valid claims of the Territory where such Licensed Product is not a Generic Product:
(A) Compound Improvement Patents, [XXX†] of the Net Sales of such Licensed Products if the use of such Products is encompassed by valid claim(s) in the Field Improvement Patents in the countries in which such Products are used.
4.2 In the event that the provisions of multiple Subsections 4.1.1 through 4.1.4 apply to any Product at any Measure Date, the Subsection that provides the highest Royalty shall be utilized for only so long as the conditions set forth in such countries the corresponding Subsection apply.
4.3 Notwithstanding the royalty provisions of Subsections 4.1 and 4.2, in the event that Omeros enters into a Third Party Marketing and Distribution Agreement for a Product, then at any calendar year; reduced by:
(B) Measure Date the sum of all Royalty payments paid or payable over the life of this Agreement up to the Measure Date based on the Net Sales collected by the sublicensee under such Third Party Marketing and Distribution Agreement (the “Summed Royalties”) shall not exceed [†] of the gross total of the monetary amounts collected up to the Measure Date by Omeros in the form of royalty payments due by BMS to PROGENICS during and milestone payments under the comparable period with respect to Third Party Marketing and Distribution Agreement; provided, that such Licensed Product pursuant to Sections 4.2(b)(i)gross total shall exclude (i) any Net Sales independent of the Third Party Marketing and Distribution Agreement, (ii) any amounts received as funding for further research and development activities; (iii) any amounts received in connection with the conveyance of other rights not specifically and directly pertaining to such Product; (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) any amounts received subject to a repayment obligation by Omeros; and (iiv) any amounts reasonably received as consideration for the purchase of equity of Omeros and not as consideration for sublicense from Omeros, (the Aquila Sublicense Agreement.
(ii) With respect to those countries in “Adjusted Gross Partnering Revenue”). If on any Measure Date the Territory where such Licensed Product is a Generic Product:
(A) Summed Royalties exceeds [XXX†] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) Adjusted Gross Partnering Revenue, then no further Royalty shall be paid under Section 4 until the sum Summed Royalties on a subsequent Measure Date falls below [†] of the royalty Adjusted Gross Partnering Revenue for that Measure Date, provided, however, that Asubio shall not be required to refund any Royalty payments due that have already been paid to Asubio by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.Omeros. † DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION
Appears in 1 contract
Sources: License Agreement (Omeros Corp)
Royalty Payments. 7.4.1 As further consideration to PROGENICS PN for the development of the GMK Vaccine and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License license and other rights (excluding the sublicenses) granted to BMS by PROGENICS DUSA under this Agreement, during the term Term of this Agreement, BMS DUSA shall pay to PROGENICS PN a royalty equal to [ * ] of the aggregate Net Sales by DUSA and its Affiliates within the Field in the U.S. and Canada, which royalty shall in no case be less than [ * ] per unit sold. For purposes of this Agreement, a unit shall mean each [ * ] unit of Product for resale containing a [ * ] of the Compound as the active ingredient.
7.4.2 With respect to sales of the Product for use in any Additional Indications proposed and accepted into the Development Program pursuant to Section 4.3, DUSA and PN shall negotiate in good faith the development costs and compensation to be paid by each party at such time as the Additional Indication is accepted into the Development Program. [ * ] = 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.
(a) For purposes of clarification, no royalty shall be due PN on Net Sales of Product sold for use in connection with any Licensed Product commencing Additional Indication(s) which has been developed by DUSA, either by itself, on the First Commercial Sale of such Licensed Product by BMSits behalf, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to the GMK Vaccine:
(i) With respect to those countries jointly with a Third Party or for use in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries Barrett's Indication following Registration, or any indications for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇w▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense purchases Product pursuant to the Supply Agreement and Section 4.2(a)(iii) other than for use in the Field.
7.4.3 In the event PN uses any data from Phase II, Phase III or Phase IV clinical trials conducted by DUSA in any IND or Registration Application for marketing approval in a country outside of the Aquila Sublicense Agreement.
(iii) Royalties Territory, PN shall pay to DUSA a royalty equal [ * ] of the aggregate Net Sales of PN and its Affiliates in such country, which royalty shall in no case be less than [ * ] per unit sold. Should PN choose to file for Registration [ * ], the royalty shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied [ * ], provided that DUSA's data is necessary to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, obtain or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreementmaintain Registration.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.
Appears in 1 contract
Sources: License and Development Agreement (Dusa Pharmaceuticals Inc)
Royalty Payments. As Subject to Section 5.5, in consideration to PROGENICS for the development of the GMK Vaccine licenses and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this AgreementLicensee hereunder, during the term of this Agreement, BMS Licensee shall pay to PROGENICS Pfizer royalties in the amount of the Marginal Royalty Rates set forth below (each, a royalty “Marginal Royalty Rate”) on the aggregate Net Sales resulting from the sale of Products in the Territory during each Calendar Year (collectively, “Royalties”). NET SALES MARGINAL ROYALTY RATE Net Sales up to and including US[***] per Calendar Year [***]% Net Sales above US[***] up to and including US[***] per Calendar Year [***]% Net Sales above US[***] up to and including US[***]per Calendar Year [***]% Net Sales above US[***] up to and including US[***]per Calendar Year [***]% Net Sales above US[***] per Calendar Year [***]% Each Marginal Royalty Rate set forth in the table above shall apply only to that portion of the Net Sales of any Licensed all Products in the Territory during a given Calendar Year that falls within the indicated range. For example, if, during a Calendar Year, aggregate Net Sales of a Product commencing on were equal to US[***], then the royalties payable by Licensee would be calculated by adding (a) the royalties with respect to the first [***] at the first-tier percentage of [***] percent [***], equal to US[***], and (b) the royalties with respect to the next US[***]at the second-tier percentage of [***]percent [***], equal to US[***], for a total royalty of US[***]. Subject to Section 5.12, Licensee shall pay to Pfizer the applicable Royalties within sixty (60) days following the expiration of each Calendar Quarter after the date of the First Commercial Sale of such Licensed the relevant Product by BMS, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to the GMK Vaccine:
(i) With respect to those countries in any country in the Territory where Territory. Royalties will be payable on a Product-by-Product and country-by-country basis during the Royalty Term for such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries country until the expiration of the Royalty Term for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty country. All Royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at accompanied by a report that includes reasonably detailed information regarding the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
applicable Products (B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in including all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(ideductions), calculation of any deductions applicable under Section 5.5, and all Royalties payable to Pfizer for the applicable Calendar Quarter (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreementincluding any foreign exchange rates employed).
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.
Appears in 1 contract
Sources: License Agreement
Royalty Payments. As Subject to Section 5.5, in consideration to PROGENICS for the development of the GMK Vaccine licenses and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this AgreementLicensee hereunder, during the term of this Agreement, BMS Licensee shall pay to PROGENICS Pfizer royalties in the amount of the Marginal Royalty Rates set forth below (each, a royalty “Marginal Royalty Rate”) on the aggregate Net Sales resulting from the sale of Products in the Territory during each Calendar Year (collectively, “Royalties”). Net Sales up to and including US[***] per Calendar Year [***]% Net Sales above US[***] up to and including US[***] per Calendar Year [***]% Net Sales above US[***] up to and including US[***]per Calendar Year [***]% Net Sales above US[***] up to and including US[***]per Calendar Year [***]% Net Sales above US[***] per Calendar Year [***]% Each Marginal Royalty Rate set forth in the table above shall apply only to that portion of the Net Sales of any Licensed all Products in the Territory during a given Calendar Year that falls within the indicated range. For example, if, during a Calendar Year, aggregate Net Sales of a Product commencing on were equal to US[***], then the royalties payable by Licensee would be calculated by adding (a) the royalties with respect to the first [***] at the first-tier percentage of [***] percent [***], equal to US[***], and (b) the royalties with respect to the next US[***]at the second-tier percentage of [***]percent [***], equal to US[***], for a total royalty of US[***]. Subject to Section 5.12, Licensee shall pay to Pfizer the applicable Royalties within sixty (60) days following the expiration of each Calendar Quarter after the date of the First Commercial Sale of such Licensed the relevant Product by BMS, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to the GMK Vaccine:
(i) With respect to those countries in any country in the Territory where Territory. Royalties will be payable on a Product-by-Product and country-by-country basis during the Royalty Term for such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries country until the expiration of the Royalty Term for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty country. All Royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at accompanied by a report that includes reasonably detailed information regarding the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
applicable Products (B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in including all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(ideductions), calculation of any deductions applicable under Section 5.5, and all Royalties payable to Pfizer for the applicable Calendar Quarter (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreementincluding any foreign exchange rates employed).
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.
Appears in 1 contract
Royalty Payments. As Subject to any other terms of this Agreement relevant in this Section 9.5(a), in partial consideration to PROGENICS for the development of the GMK Vaccine and the MGV Vaccine conducted license granted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS Arcus under this AgreementSection 8.4, during the term of this Agreementapplicable Royalty Term only, BMS and on an Optioned Product-by-Optioned Product basis, Gilead shall pay to PROGENICS a royalty Arcus royalties in each Calendar Year on the amount of aggregate Net Sales of any Licensed the applicable Optioned Product commencing on the First Commercial Sale of such Licensed Product by BMS, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to the GMK Vaccine:
(i) With respect to those countries in the Gilead Royalty Territory where such Licensed Product is not a Generic Product:
(excluding (A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX]clarity, [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with for the calendar quarter during period in which such Licensed Product first becomes a Generic country is included in the Third Party Territory or the Shared Territory and (B) Net Sales in the Access Territory) (such aggregate Net Sales, excluding the foregoing clauses (A) and (B), “Included Net Sales”) as calculated by multiplying the applicable royalty rates set forth below by the corresponding amount of incremental Included Net Sales of such Optioned Product in such country.Calendar Year (the “Royalties”). For clarity, if Arcus delivers an Opt-Out Notice with respect to a given Optioned Program pursuant to Section 4.7(a), the Net Sales in the U.S. for each Optioned Product included in such Optioned Program shall be included in Included Net Sales, on an Optioned Product-by-Optioned Product basis. With respect to (x) the PD-1 Program and (y) all Optioned Programs other than (i) the 2021 Optioned Programs and (ii) the Optioned Target Programs for which Gilead exercises its option prior to the expiration of the applicable Selected Target Option Exercise Window, the Parties agree that the following Royalty Rate Table A applies ((x) and (y), collectively, “Royalty A Programs”): [***] [***] With respect to each 2021 Optioned Program (the “Royalty B Programs”), the Parties agree that the following Royalty Rate Table B applies: [***] [***] With respect to each Optioned Target Program for which Gilead exercises its option prior to expiration of the applicable Selected Target Option Exercise Window (collectively, “Royalty C Programs”), the Parties agree that the following Royalty Rate Table C applies: [***] [***] [***]
Appears in 1 contract
Sources: Option, License and Collaboration Agreement (Arcus Biosciences, Inc.)
Royalty Payments. 7.4.1 As further consideration to PROGENICS PN for the development of the GMK Vaccine and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License license and other rights (excluding the sublicenses) granted to BMS by PROGENICS DUSA under this Agreement, during the term Term of this Agreement, BMS DUSA shall pay to PROGENICS PN a royalty equal to [ * ] of the aggregate Net Sales by DUSA and its Affiliates within the Field in the U.S. and Canada, which royalty shall in no case be less than [ * ] per unit sold. For purposes of this Agreement, a unit shall mean each [ * ] unit of Product for resale containing a [ * ] of the Compound as the active ingredient.
7.4.2 With respect to sales of the Product for use in any Additional Indications proposed and accepted into the Development Program pursuant to Section 4.3, DUSA and PN shall negotiate in good faith the development costs and compensation to be paid by each party at such time as the Additional Indication is accepted into the Development Program. [ * ] = 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.
(a) For purposes of clarification, no royalty shall be due PN on Net Sales of Product sold for use in connection with any Licensed Product commencing Additional Indication(s) which has been developed by DUSA, either by itself, on the First Commercial Sale of such Licensed Product by BMSits behalf, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to the GMK Vaccine:
(i) With respect to those countries jointly with a Third Party or for use in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries Barrett's Indication following Registration, or any indications for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement▇▇▇A purchases Product pursuant to the Supply Agreement other than for use in the Field.
7.4.3 In the event PN uses any data from Phase II, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) Phase III or Phase IV clinical trials conducted by DUSA in any IND or Registration Application for marketing approval in a country outside of the Aquila Sublicense Agreement.
(ii) With respect Territory, PN shall pay to those countries in the Territory where such Licensed Product is DUSA a Generic Product:
(A) [XXXroyalty equal [ * ] of the aggregate Net Sales of such Licensed Product PN and its Affiliates in such countries country, which royalty shall in no case be less than [ * ] per unit sold. Should PN choose to file for any calendar year until Registration [ * ], the royalty shall be paid on Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX[ * ], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS provided that DUSA's data is necessary to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreementobtain or maintain Registration.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.
Appears in 1 contract
Sources: License and Development Agreement (Dusa Pharmaceuticals Inc)
Royalty Payments. As consideration to PROGENICS for the development of the GMK Vaccine and the MGV Vaccine conducted by PROGENICS prior 6.6.1. Subject to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this Agreement, during the term terms of this AgreementAgreement (including Section 6.6.2), BMS on a Licensed Product-by-Licensed Product basis, Allergan or its Affiliates shall pay to PROGENICS Exicure a royalty on annual Net Sales of any each Licensed Product commencing in the Territory as set forth in this Section 6.6 (“Royalty Payment”): THE COMPANY HAS REQUESTED AN ORDER FROM THE SECURITIES AND EXCHANGE COMMISSION (THE “COMMISSION”) PURSUANT TO RULE 406 UNDER THE SECURITIES ACT OF 1933, AS AMENDED, GRANTING CONFIDENTIAL TREATMENT TO SELECTED PORTIONS. ACCORDINGLY, THE CONFIDENTIAL PORTIONS HAVE BEEN OMITTED FROM THIS EXHIBIT, AND HAVE BEEN FILED SEPARATELY WITH THE COMMISSION. OMITTED PORTIONS ARE INDICATED IN THIS EXHIBIT WITH “*****”. For that portion of aggregate global Net Sales of the applicable Licensed Product in any given Calendar Year of less than or equal to ***** ***** For that portion of aggregate global Net Sales of the applicable Licensed Product in any given Calendar Year of greater than ***** but less than or equal to ***** ***** For that portion of aggregate global Net Sales of the applicable Licensed Product in any given Calendar Year of greater than ***** but less than or equal to ***** ***** For that portion of aggregate global Net Sales of the applicable Licensed Product in any given Calendar Year of greater than ***** but less than or equal to ***** ***** For that portion of aggregate global Net Sales of the applicable Licensed Product in any given Calendar Year of greater than ***** *****
6.6.2. The Royalty Payment shall be payable to Exicure on a Licensed Product-by-Licensed Product and country-by-country basis starting upon First Commercial Sale of a Licensed Product in a country until the latest to occur of (a) the expiration of the last-to-expire Valid Claim of an Exicure Patent or Joint Collaboration Patent, in each case, that Covers the manufacture, use or sale of such Licensed Product in such country, (b) ***** years after First Commercial Sale of such Licensed Product by BMSin such country, its Affiliates or its Sub-sublicensees as follows:
(ac) With respect to the GMK Vaccine:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] expiration of the Net Sales of Regulatory Exclusivity for such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout country (the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement“Royalty Term”).
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.
Appears in 1 contract
Sources: Collaboration, Option and License Agreement (Exicure, Inc.)
Royalty Payments. As In consideration to PROGENICS for the development of the GMK Vaccine rights granted hereunder, and the MGV Vaccine conducted by PROGENICS prior subject to the Effective Date terms and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this Agreement, during the term conditions of this Agreement, BMS shall pay unless and to PROGENICS the extent ATHERSYS is participating in a royalty on Net Sales Profit share in respect of any Licensed Product commencing on in the First Commercial Sale of such Field pursuant to Section 3.2 and Schedule 3.2(c), PFIZER shall pay to ATHERSYS, with respect to the Licensed Product by BMSProducts in the Field, its Affiliates or its Sub-sublicensees as followsan amount equal to:
(a) With respect to the GMK Vaccine:
[*] percent (i[*%]) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount portion of Net Sales of such Licensed Product determined under Products in a Pfizer Year in the formula X(1) x Y(1)/Z;Territory below or equal to [*] ([$*]); plus
(Bb) The royalty rate set forth in Section 6.5(a)(i)(B[*] percent ([*%]) shall be applied to that amount of Net Sales for the portion of Net Sales of such Licensed Product determined under Products in a Pfizer Year in the formula X(2Territory greater than [*] ([$*]) x Y(1)/Z;and less than or equal to [*] ([$*]); plus
(Cc) The royalty rate set forth in Section 6.5(a)(ii)(A[*] percent ([*%]) shall be applied to that amount Net Sales for the portion of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth Products in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries a Pfizer Year in the Territory where in excess of [*] ([$*]). * Confidential treatment has been requested for the redacted portions of this exhibit, and such confidential portions have been omitted and filed separately with the Securities and Exchange Commission. Notwithstanding the foregoing and subject to Section 9.5, any payments owed with respect to sales of Licensed Product is not Products in a Generic Product:
country in the Territory pursuant to this Section 9.3 shall be reduced by [*] percent (A) [XXX] of *%]), such reduction to be prorated appropriately for the then-current Pfizer Quarter, for Net Sales occurring during any time there is either no Valid Claim or no right of data or market exclusivity covering such Licensed Product in the Field in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries country in the Territory where such Licensed Product Territory. The parties agree and acknowledge that the payment of royalties by PFIZER to ATHERSYS for sales in a country in which there is a Generic Product:
(A) [XXX] no Valid Claim or no right of data or market exclusivity covering the Net Sales of such applicable Licensed Product in such countries the Field shall represent consideration for any calendar year; reduced by:
(B) the sum of the royalty payments due license to Athersys Technology, Athersys Combination Product IPRs, and Athersys Confidential Information granted by BMS ATHERSYS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense AgreementPFIZER in Sections 7.1.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.
Appears in 1 contract
Sources: Collaboration and License Agreement (Athersys, Inc / New)
Royalty Payments. As (a) In consideration to PROGENICS for the development of the GMK Vaccine licenses and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this AgreementLICENSEE hereunder, during the term of this Agreement, BMS LICENSEE shall pay to PROGENICS a royalty on Net Sales of any Licensed Product commencing on the First Commercial Sale of such Licensed Product by BMSNOVARTIS, its Affiliates or its Sub-sublicensees as follows:
(a) With with respect to sales of the GMK VaccineProducts in the Territory during the applicable Royalty Term, an amount equal to:
(i) With respect to those countries [***] of Net Sales in a Calendar Year (or portion thereof) for the portion of annual aggregate Net Sales of the Products in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product aggregated in such all countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to which the Royalty Term for such Licensed Product pursuant Products has not expired) below or equal to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.[***]; plus
(ii) With respect to those countries [***] of Net Sales in a Calendar Year (or portion thereof) for the portion of annual aggregate Net Sales of the Products in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product aggregated in such all countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to which the Royalty Term for such Licensed Product pursuant Products has not expired) greater than [***] and less than or equal to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.[***]; plus
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end [***] of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
a Calendar Year (a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectivelyor portion thereof) for the calendar quarter in which portion of annual aggregate Net Sales of the Products in the Territory (aggregated in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout which the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory Royalty Term for such year pursuant to Section 4.2(a)(ivProducts has not expired) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement greater than [***] and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year less than BMS owes for the entire year, BMS shall be entitled to a credit, or equal to the amount of such excess royalties paid[***]; plus CONFIDENTIAL TREATMENT REQUESTED. INFORMATION FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED IS OMITTED AND MARKED WITH “[***]”. AN UNREDACTED VERSION OF THE DOCUMENT HAS ALSO BEEN FURNISHED SEPARATELY TO THE SECURITIES AND EXCHANGE COMMISSION AS REQUIRED BY RULE 406 UNDER THE SECURITIES ACT OF 1933, to be applied against [XXX] of accrued royalties until the entire credit has been usedAS AMENDED.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount [***] of Net Sales in a Calendar Year (or portion thereof) for the portion of annual aggregate Net Sales of the Products in the Territory (aggregated in all countries with respect to which the Royalty Term for such Licensed Product determined under the formula X(1Products has not expired) x Y(1)/Z;greater than [***] and less than or equal to [***]); plus
(Bv) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount [***] of Net Sales in a Calendar Year (or portion thereof) for the portion of annual aggregate Net Sales of the Products in the Territory (aggregated in all countries with respect to which the Royalty Term for such Licensed Product determined under the formula X(2Products has not expired) x Y(1)/Z;greater than [***] and less than or equal to [***]; plus
(Cvi) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount [***] of Net Sales in a Calendar Year (or portion thereof) for the portion of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of annual aggregate Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout Products in the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year aggregated in all countries when Section 6.5(a)(i) applies Y(2) = with respect to which the annual Net Sales of such Licensed Product Royalty Term for such year Products has not expired) in all countries when Section 6.5(a)(ii) applies Z = excess of [***] (each, a “Royalty Payment”). LICENSEE shall pay such Royalty Payments to NOVARTIS within [***] days following the annual Net Sales end of such Licensed Product for such year in all countries in each Calendar Quarter after the Territorydate of the First Commercial Sale.
(b) With respect If, during the Term, LICENSEE determines in good faith that it is reasonably necessary to the MGV Vaccine and obtain any other Licensed Products:
Third Party’s Intellectual Property Rights (i“Third Party IP”) With respect in order to those countries Develop, Commercialize or manufacture a Compound or Product, then in the Territory where event LICENSEE or any of its Affiliates or Sublicensees obtains a license under or acquires such Licensed Third Party IP, and if LICENSEE or any of its Affiliates or Sublicensees pays any amounts to such Third Party in connection with a license under or the acquisition of such Third Party IP, including upfront payments, milestones or royalties (the “Third Party Payment”), then LICENSEE may credit [***] of such Third Party Payment made in a given Calendar Quarter against the Royalty Payments owed and payable on the Net Sales for the Product is not a Generic Product:
(A) for such Calendar Quarter. Notwithstanding the foregoing, in no event shall such credits reduce the royalties payable to NOVARTIS to less than [XXX***] of the Royalty Payments that would otherwise be owed on such Net Sales prior to the application of such Licensed Product credits; provided that any permitted credits under this Section 5.2.5(b) that are not fully used by LICENSEE against any royalties payable under Section 5.2.5 in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i)CONFIDENTIAL TREATMENT REQUESTED. INFORMATION FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED IS OMITTED AND MARKED WITH “[***]”. AN UNREDACTED VERSION OF THE DOCUMENT HAS ALSO BEEN FURNISHED SEPARATELY TO THE SECURITIES AND EXCHANGE COMMISSION AS REQUIRED BY RULE 406 UNDER THE SECURITIES ACT OF 1933, (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense AgreementAS AMENDED.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii), respectively, shall apply to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such country.
Appears in 1 contract
Sources: License Agreement
Royalty Payments. As consideration to PROGENICS for the development of the GMK Vaccine (a) Except as otherwise provided in Section 6.2(b) and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this AgreementSection 6.6, during the term of this Agreement, BMS Cephalon shall pay to PROGENICS Champions the following royalties, on a royalty quarterly basis, on worldwide Net Sales of any Licensed each Product: If Net Sales of such Product commencing on an aggregate basis are less than [*] [* ]% If Net Sales of such Product on an aggregate basis are [*] [* ]% Such Net Sales royalties will be payable by Cephalon to Champions on a Product-by-Product and country-by-country basis for a period from the date of the First Commercial Sale of such Licensed Product by BMS, its Affiliates or its Sub-sublicensees as follows:
(a) With respect to until the GMK Vaccine:
earlier of (i) With [*]or (ii) expiration of the applicable patents set forth in Schedule 1.3. Notwithstanding the foregoing, in respect to those countries in the Territory of any country where such Licensed a Product is not covered by a Generic patent or there are no statutory data exclusivity or marketing exclusivity rights that can be enforced to prevent the entry of third party generic competition to such Product:, from the date of entry of such third party generic competition into the marketplace in such country, Cephalon shall be entitled to reduce the applicable Net Sales royalty rate in such country by [*].
(Ab) In the event Cephalon grants a license or sublicense of any Verified Compound or Product to a third party (other than NewCo and its sublicensees under the NewCo Sublicense), in lieu of any future royalties and/or milestones accruing to Champions pursuant to Section 6.1(b) and Section 6.2(a), Cephalon shall pay Champions a royalty of[XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX*], [XXX] on a quarterly basis, on worldwide Net Revenue of any further each such Product. Such Net Sales of such Licensed Revenue royalties will be payable by Cephalon to Champions on a Product-by-Product in such countries until and country-by-country basis for a period from the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period date on which Cephalon first receives Net Revenue from its licensee or third party with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller earlier of: (i) [*]from the actual annual Net Sales date of Cephalon’s first receipt of such Licensed Product throughout the Territory for such year, Net Revenue; or (ii) [XXX]
(1) = the annual Net Sales if Cephalon had made a First Commercial Sale of such Licensed Product for such year in all countries when Section 6.5(a)(iProduct, the earlier of (x) applies Y(2) = [*] from the annual Net Sales date of such Licensed Product for such year First Commercial Sale or (y) expiration of the applicable patents set forth in all countries when Section 6.5(a)(ii) applies Z = Schedule 1.3. Notwithstanding the annual Net Sales foregoing, in respect of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory country where such Licensed a Product is not covered by a Generic patent or there are no statutory data exclusivity or marketing exclusivity rights that can be enforced to prevent the entry of third party generic competition to such Product:
(A) [XXX] , from the date of the Net Sales entry of such Licensed Product third party generic competition into the marketplace in such countries for any calendar year; reduced by:
(B) country, Cephalon shall be entitled to reduce the sum of the applicable Net Revenue royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product rate in such countries for country by [*]. For clarity, the NewCo Sublicense shall preserve Champions’ right to receive any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS future royalties or milestones accruing to PROGENICS during the comparable period with respect to such Licensed Product Champions pursuant to Section 4.2(b)(iii6.1(b) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreement.
(c) The royalty rates applicable to Generic Products pursuant to Sections 6.5(a)(ii) and 6.5(b)(ii6.2(a), respectively, shall apply subject to Net Sales in any country commencing with the calendar quarter during which such Licensed Product first becomes a Generic Product in such countrySection 6.6.
Appears in 1 contract
Sources: Research and Collaboration Agreement (Champions Oncology, Inc.)
Royalty Payments. As consideration (a) During the applicable Royalty Term, Novartis will make royalty payments to PROGENICS for the development of the GMK Vaccine and the MGV Vaccine conducted by PROGENICS prior to the Effective Date and for the PROGENICS License and other rights (excluding the sublicenses) granted to BMS by PROGENICS under this Agreement, during the term of this Agreement, BMS shall pay to PROGENICS a royalty Regeneron based on total worldwide Net Sales of any Licensed Covered Products by Novartis, its Affiliates, and Product commencing on Licensees/Assignees at the applicable rates set forth below. Aggregate annual Net Sales of Covered Products less than or equal to [**********] 4% Aggregate annual Net Sales of Covered Products over [**********] but less than or [**] equal to [*********] Aggregate annual Net Sales of Covered Products over [**********] but less than or [**] equal to [*********] Aggregate annual Net Sales of Covered Products over [********] but less than or equal [**] to [*********] Aggregate annual Net Sales of Covered Products over [*********] but less than or [**] equal to US$ 1.5 billion Aggregate annual Net Sales of Covered Products over US$ 1.5 billion 15% For example,[**********************************].
(b) Royalties will be payable during the Royalty Term, which shall commence from First Commercial Sale of such Licensed Product by BMS, and expire when Novartis (and/or its Affiliates or its SubProduct Licensees/Assignees) ceases distribution and sale of all Covered Products. [******************]. Following the Royalty Term (but subject to Sections 4.1(d) and 4.1(e) below), on a country-sublicensees as follows:
(a) With respect by-country basis, the covenants made by Regeneron pursuant to the GMK Vaccine:
(i) With respect to those countries Section 3.1 hereunder shall continue in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX]effect, [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period but become fully paid-up, royalty-free, perpetual and irrevocable with respect to such Licensed Product pursuant to Sections 4.2(a)(i) and (ii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Sections 4.2(a)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year until Net Sales of such Licensed Product throughout the Territory in such calendar year equal [XXX]; and
(B) After Net Sales of such Licensed Product throughout the Territory in such calendar year exceed [XXX], [XXX] of any further Net Sales of such Licensed Product in such countries until the end of such calendar year; reduced by:
(C) The sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(a)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(a)(iii) of the Aquila Sublicense Agreement.
(iii) Royalties shall be paid at the royalty rates set forth in Sections 6.5(a)(i)(A) and 6.5(a)(ii)(A) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) through the end of the calendar quarter preceding the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year. Royalties shall be paid at the royalty rates set forth in Sections
(a) (i)(B) and 6.5(a)(ii)(B) (reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively) for the calendar quarter in which annual Net Sales in all countries throughout the Territory first exceed [XXX] in any year, and for each calendar quarter in such year thereafter other than the last calendar quarter of such year. Following the end of the last calendar quarter of each year, the total amount of royalties actually due for such year shall be calculated as provided in Section 6.5(a)(iv) (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)), and such amount of royalties shall be paid, reduced by (A) the total amount of royalties paid with respect to such Licensed Product throughout the Territory for the first three calendar quarters of such year (as such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C), respectively), and further reduced by (B) the total amount of royalties paid or due with respect to such Licensed Product throughout the Territory for such year pursuant to Section 4.2(a)(iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(a) of The Regents Sublicense Agreement and Section 4.2(a)(iv) of the Aquila Sublicense Agreement (after giving effect, for purposes of this calculation, to any credit due to BMS pursuant to any of the foregoing sections of any of the sublicense agreements, which credit shall be extinguished to the extent given effect therefor). The calculation of the amount to be paid with respect to the fourth calendar quarter of each year shall be included on the royalty report for such calendar quarter. In the event that BMS has paid more royalties during the first three calendar quarters of any year than BMS owes for the entire year, BMS shall be entitled to a credit, equal to the amount of such excess royalties paid, to be applied against [XXX] of accrued royalties until the entire credit has been used.
(iv) The total amount of royalties actually due for each year under this Section 6.5(a) (before such amount has been reduced by the amounts set forth in Sections 6.5(a)(i)(C) and 6.5(a)(ii)(C)) shall be calculated as follows:
(A) The royalty rate set forth in Section 6.5(a)(i)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(1)/Z;
(B) The royalty rate set forth in Section 6.5(a)(i)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(1)/Z;
(C) The royalty rate set forth in Section 6.5(a)(ii)(A) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(1) x Y(2)/Z; and
(D) The royalty rate set forth in Section 6.5(a)(ii)(B) shall be applied to that amount of Net Sales of such Licensed Product determined under the formula X(2) x Y(2)/Z; Where:
X(1) = the smaller of: (i) the actual annual Net Sales of such Licensed Product throughout the Territory for such year, or (ii) [XXX]
(1) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(i) applies Y(2) = the annual Net Sales of such Licensed Product for such year in all countries when Section 6.5(a)(ii) applies Z = the annual Net Sales of such Licensed Product for such year in all countries in the Territory
(b) With respect to the MGV Vaccine and any other Licensed Products:
(i) With respect to those countries in the Territory where such Licensed Product is not a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Sections 4.2(b)(i), (ii) and (iv) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement, Section 4.4(b) of The Regents Sublicense Agreement and Sections 4.2(b)(i) and (ii) of the Aquila Sublicense Agreement.
(ii) With respect to those countries in the Territory where such Licensed Product is a Generic Product:
(A) [XXX] of the Net Sales of such Licensed Product in such countries for any calendar year; reduced by:
(B) the sum of the royalty payments due by BMS to PROGENICS during the comparable period with respect to such Licensed Product pursuant to Section 4.2(b)(iii) of the ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Sublicense Agreement and Section 4.2(b)(iii) of the Aquila Sublicense Agreementcountry.
(c) The royalty rates applicable For the avoidance of doubt, royalties shall be payable only once with respect to Generic Products the same unit of Covered Product.
(d) Notwithstanding the foregoing, with respect to any country for which the Royalty Term has expired pursuant to Sections 6.5(a)(iiSection 4.1(b)(i) and 6.5(b)(ii)above, respectivelyin the event that the conditions reflected in Section 4.1(b)(i) cease to be satisfied following expiration of the Royalty Term in such country [*****************], shall apply the obligation to pay royalties under this Section 4.1 on Net Sales of Covered Products in such country shall resume with immediate effect until the conditions reflected in Section 4.1(b)(i) are again satisfied with respect to such country [***********************], in which case the terms of this Section 4.1(d) shall remain in effect.
(e) Notwithstanding the foregoing, with respect to any country commencing for which the Royalty Term has been deemed to have expired pursuant to Section 4.1(b)(ii) above [*******************************] the obligation to pay royalties under this Section 4.1 on Net Sales of Covered Products in such country shall resume with immediate effect until the calendar quarter during which such Licensed Product first becomes a Generic Product conditions reflected in Section 4.1(b)(i) are satisfied with respect to Covered Products in such country, in which case the terms of Section 4.1(d) shall remain in effect.
Appears in 1 contract
Sources: Il 1 Antibody Termination Agreement (Regeneron Pharmaceuticals Inc)