Common use of Royalty Stacking Clause in Contracts

Royalty Stacking. (a) If (i) the Licensee or a sub-licensee considers it necessary to obtain a licence from any Third Party (a “Third Party Licence”) in order to avoid infringing such Third Party’s patents solely in the exercise of the Licensee’s or sub-licensee’s rights to develop, research, manufacture, have manufactured, use market, sell, have sold, supply, import, and export a Licensed Product, and (ii) the Third Party Licence provides that the Licensee or sub-licensee shall pay such Third Party a royalty calculated as a percentage of the invoiced price of a Licensed Product (a “Third Party Royalty”), and (iii) the Licensee notifies the Licensor within [***] of entering into the Third Party Licence, then the Third Party Royalty payable on each Licensed Product shall be deducted from the royalties on Net Sales payable under this Agreement, provided that the amount of royalty payable by the Licensee to the Licensor under clause 3.5 in any Calendar Quarter shall not be reduced by more than the [***] by virtue of this clause 3.9. (b) The Parties acknowledge and agree that: (i) The deductions referred to in this clause shall only be made where (and to the extent that) the technology that is the subject of the Licensed Intellectual Property cannot be used in accordance with the provisions of this Agreement without infringing the patents that are the subject of the Third Party Licence (and shall not be made in respect of any other third party technology or intellectual property that the Licensee chooses to use in the manufacture or sale of any Licensed Product); and (ii) This clause does not provide for any reduction in the Net Sales royalties payable by the Licensee in the event that the Licensee considers it necessary to obtain any Third Party Licence in order to avoid infringing any Third Party patents in the course of the development, manufacture or sale of any Know-How Product.

Royalty Stacking. (a) If (i) The parties recognize and agree that, in order for Licensee and/or its Sublicensees to develop and commercialize the Licensed Technology and/or Licensed Product within the Field of Use and Territory, it may be necessary for Licensee and/or its Sublicensees to make use of and/or incorporate multiple elements of third party intellectual property from multiple sources. Licensee will determine, acting reasonably and in good faith, which elements of third party intellectual property are required for the development and commercialization of the Licensed Technology and/or Licensed Product. Royalty payments or license fees may be required to be paid by Licensee and/or its Sublicensees to third parties if intellectual property owned by a sub-licensee considers it necessary third party is required for the commercialization of the Licensed Technology and/or Licensed Products in the Field of Use and Territory. All commercially reasonable payments to third parties that Licensee and/or its Sublicensees are required to pay to obtain licenses or other rights to use or incorporate third party intellectual property or products that are required for the development and commercialization of a licence from any Third Party (a “Third Party Licence”) in order to avoid infringing such Third Party’s patents solely Licensed Technology and/or Licensed Product in the exercise of Field Of Use and Territory will be creditable in the Licensee’s year they are paid by Licensee and/or its Sublicensees against royalties otherwise owed to Licensor hereunder in that same year for that same Licensed Technology or sub-licensee’s rights to develop, research, manufacture, have manufactured, use market, sell, have sold, supply, import, and export a Licensed Product, and (ii) the Third Party Licence provides provided that the Licensee or sub-licensee shall pay such Third Party a royalty calculated as a percentage of the invoiced price of a Licensed Product (a “Third Party Royalty”), and (iii) the Licensee notifies the Licensor within [***] of entering into the Third Party Licence]; provided, then the Third Party Royalty payable on each Licensed Product shall that in no one year will such expenses be deducted from the royalties on Net Sales payable under this Agreement, provided that the amount of royalty payable by the Licensee to the Licensor under clause 3.5 in any Calendar Quarter shall not be reduced by credited against more than the [***] ]% of royalty payments otherwise owed to Licensor. In any event, in order for payments to third parties to be credited, such payments must have been commercially reasonable and have to have been made in good faith. * Confidential Information, indicated by virtue of [***], has been omitted from this clause 3.9. (b) The Parties acknowledge filing and agree that: (i) The deductions referred to in this clause shall only be made where (and to the extent that) the technology that is the subject of the Licensed Intellectual Property cannot be used in accordance filed separately with the provisions of this Agreement without infringing the patents that are the subject of the Third Party Licence (Securities and shall not be made in respect of any other third party technology or intellectual property that the Licensee chooses to use in the manufacture or sale of any Licensed Product); and (ii) This clause does not provide for any reduction in the Net Sales royalties payable by the Licensee in the event that the Licensee considers it necessary to obtain any Third Party Licence in order to avoid infringing any Third Party patents in the course of the development, manufacture or sale of any Know-How Product.Exchange Commission

Royalty Stacking. (a) If Liverco, its Affiliates or any Sub-Licensees in-license or acquire rights under or otherwise purchase (i) the Licensee or a sub-licensee considers it necessary to obtain a licence any Patent Rights from any Third Party (a including an obligation from such Third Party not to assert the Patent Rights in question); and/or, (ii) subject to Clause 12.9 any Patent Rights from UCLB; and/or (iii) [**] (or part thereof), and such Patent Rights, [**] (as reasonably assessed, based on such Patent Rights [**] being reasonably required) to Exploit any Royalty Product(s) and/or [**] in any way (“Third Party LicenceAccess Rights”) ), to the extent Liverco, its Affiliates or its Sub-Licensees are required to pay any consideration, royalties, monies, milestones, or other fees under or in order to avoid infringing connection with such Third Party’s patents solely in Party Access Rights applicable to any Royalty Product(s) and/or [**] Product(s) (“TP Fees”), such TP Fees (which shall be calculated as at the exercise of full rate prior to applying any stacking or deduction provisions under the Licensee’s or sub-licensee’s rights agreement applicable to develop, research, manufacture, have manufactured, use market, sell, have sold, supply, import, and export a Licensed Product, and (ii) the Third Party Licence provides Access Rights) shall be deductible from Royalties otherwise due on those Royalty Product(s) and/or [**] Product(s) subject to a maximum deduction [**] that the Licensee would otherwise be payable were it not for this Clause (“Royalty Collar”). The determination as to whether an acquisition, licence or subnon-licensee shall pay such assert amounts to Third Party a royalty calculated as a percentage of the invoiced price of a Licensed Product Access Rights shall be determined by Liverco’s intellectual property counsel and if UCLB disagree with that determination (a “Third Party Royalty”), and (iii) the Licensee notifies the Licensor which it must do within [**] of notification by Liverco) then the matter shall be referred for final determination, binding on Liverco and UCLB, to an independent intellectual property lawyer with Liverco and UCLB each bearing [**] of entering into the Third Party Licence, then costs of such instruction and determination. If by virtue of the Third Party capsid gene sequence utilised in a Royalty payable on each Licensed Product shall be deducted from the royalties on Net Sales payable under this Agreement, provided that the amount of royalty payable by the Licensee to the Licensor under clause 3.5 in any Calendar Quarter shall not be reduced by more than the and/or [**] Product, such Royalty Product and/or [**] by virtue Product infringes or would infringe (in the absence of this clause 3.9. a licence) any Capsid Claims of any Patent Rights filed (bas opposed to claiming priority) The Parties acknowledge and agree that: (i) The deductions referred to in this clause shall only be made where (and to the extent that) the technology that is the subject [**] of the Licensed Intellectual Property cannot First Serotype Patent Rights identified in Part A of Schedule 2 (“Vector Patents”), then any TP Fees payable shall be used in accordance with the provisions of this Agreement without infringing the patents that are the subject of the Third Party Licence (and shall not be made in respect of any other third party technology or intellectual property that the Licensee chooses to use in the manufacture or sale of any Licensed Product); and (ii) This clause does not provide for any reduction in the Net Sales royalties payable by the Licensee in the event that the Licensee considers it necessary to obtain any Third Party Licence in order to avoid infringing any Third Party patents in the course of the development, manufacture or sale of any Know-How Product.deductible [**]

Royalty Stacking. (a) If (i) On a jurisdiction-by-jurisdiction and Licensed Product-by-Licensed Product basis, if NeuroBo or any of its Approved Sublicensees, as applicable, determine in good faith and in the Licensee or a sub-licensee considers exercise of reasonable business judgment that it is necessary to obtain a licence license from any Third Party (other than to NeuroBo, any Approved Sublicensees, or any Affiliates of either of the foregoing) to a Patent controlled by such Third Party (a “Third Party LicenceLicense”) in order to avoid infringing exploit any Licensed Product as provided in this Agreement, and only if and for the duration that NeuroBo is required to make a payment under a Third Party License for such Licensed Product in such jurisdiction then the Royalties payment that would otherwise be due to Dong-A for such Licensed Product in such jurisdiction in any calendar quarter pursuant to Section 8.3(a) shall be reduced by the royalty payment that NeuroBo or any of its Approved Sublicenses have paid or must pay to such Third Party in such calendar quarter in consideration for such Third Party License. For the avoidance of any doubt, notwithstanding any of the foregoing, (i) there shall be no reduction pursuant to this Section 8.3(d) for any lump sum license fees, milestone payments, minimum annual royalties in excess of accrued royalties payments, any amounts paid for past infringement of any Third Party’s patents solely 's rights, or any amount not paid for rights required to permit NeuroBo to exploit the Licensed Product in the exercise of the Licensee’s or sub-licensee’s rights to develop, research, manufacture, have manufactured, use market, sell, have sold, supply, import, and export Territory as provided in this Agreement under a Licensed Product, Third Party License and (ii) in no event shall the Third Party Licence provides that the Licensee or sub-licensee shall pay Royalties rate for such Third Party a royalty calculated as a percentage of the invoiced price of a Licensed Product (a “Third Party Royalty”), and (iii) in the Licensee notifies applicable jurisdiction in the Licensor within [***] of entering into the Third Party Licence, then the Third Party Royalty payable on each Licensed Product shall be deducted from the royalties on Net Sales payable under this Agreement, provided that the amount of royalty payable by the Licensee to the Licensor under clause 3.5 in any Calendar Quarter shall not Territory be reduced by more than the [**] such that the Royalties rate for such Licensed Product in such jurisdiction shall always be at least [**] by virtue of the original Royalties rate at the date of this clause 3.9Agreement. (b) The Parties acknowledge and agree that: (i) The deductions referred to in this clause shall only be made where (and to the extent that) the technology that is the subject of the Licensed Intellectual Property cannot be used in accordance with the provisions of this Agreement without infringing the patents that are the subject of the Third Party Licence (and shall not be made in respect of any other third party technology or intellectual property that the Licensee chooses to use in the manufacture or sale of any Licensed Product); and (ii) This clause does not provide for any reduction in the Net Sales royalties payable by the Licensee in the event that the Licensee considers it necessary to obtain any Third Party Licence in order to avoid infringing any Third Party patents in the course of the development, manufacture or sale of any Know-How Product.

Royalty Stacking. (a) If (i) Where in order to manufacture, use, market or sell Products it is legally necessary for the Licensee or a sub-licensee considers it necessary to obtain also have a licence from any a Third Party (a “Third Party Licence”other than an Affiliate) in order to avoid infringing such Third Party’s patents solely in the exercise under any Patent Rights and by reason of the Licensee’s or sub-licensee’s rights to develop, research, manufacture, have manufactured, use market, sell, have sold, supply, import, and export a Licensed Product, and (ii) the Third Party Licence provides that the Licensee or sub-licensee shall pay an agreement with such Third Party a royalty calculated as on the Net Sales Price (or similarly defined amount) is payable to such Third Party, [****]: (i) [****] (ii) the Licensee shall make available to the Licensor appropriate documentary and other evidence to verify the amount of royalties being paid under the licences giving rise to a percentage reduction of the invoiced price of a Licensed Product (a “Third Party Royalty”Royalty payable to the Licensor under Clause 3.1(a)(i), and ; (iii) the Licensee notifies the Licensor within [***] of entering into the foregoing shall apply only if any Third Party Licence, then the Third Party Royalty payable on each Licensed Product shall be deducted from the royalties on Net Sales payable under this Agreement, provided that the amount of royalty payable by whom it is legally necessary for the Licensee to obtain a licence in order to manufacture, sell, use or otherwise dispose of the Licensor under clause 3.5 Products and with whom the licensee enters into an agreement following the Agreed Date agrees that the provisions of equivalent effect to this Clause 3.2(a) apply in any Calendar Quarter shall not be reduced by more than respect of the [***] by virtue sums payable to such Third Party; and (iv) in calculating whether the Total Royalty exceeds the Royalty Cap for the purposes of this clause 3.9Clause 3.2(a), any royalties payable to sub-licensees in respect of the manufacture, use, marketing or sale of Products containing Cross Licensed Rights are to be disregarded. (b) The Parties acknowledge Where the Licensed Rights and/or Cross Licensed Rights are sub-licensed by the Licensee (or any Affiliate under a Sub-licence) together with other patents, patent applications, know-how, technology, material and/or resources owned by or under the control of the Licensee (the “Other Technology”) and agree that: the relevant Sub-licence does not apportion the amounts to be paid under that Sub-licence between the Licensed Rights and/or the Cross Licensed Rights (ion the one hand) The deductions referred to in this clause shall only be made where (and the Other Technology being licensed or sub-licensed to the extent that) sub-licensee (on the technology that is other hand), the subject amount received from the sub-licensee under the relevant Sub-licence in respect of exploitation of the Licensed Intellectual Property cannot Rights and/or the Cross Licensed Rights shall for the purposes of calculating the amounts payable to the Licensor under Clause 3.1(a)(ii) be used in accordance with the provisions of this Agreement without infringing the patents that are the subject deemed to be such proportion of the Third Party Licence total consideration payable thereunder as the parties shall agree is fair and reasonable taking into account the relative values of the licensed Rights and/or the Cross Licensed Rights (on the one hand) and shall the Other Technology being sub-licensed or licensed to the relevant sublicence (on the other hand). If at any time a dispute arises under this Clause 3.2(b) (including without limitation a failure to reach agreement in relation to the relative values of the Licensed Rights and/or the Cross Licensed Rights (on the one hand) and the Other Technology being sub-licensed or licensed to the relevant sub-licensee (on the other hand)) and the parties are not be made in respect able to resolve such dispute within thirty (30) days of any the dispute first arising, either party may elect by serving a written notice on the other third party technology or intellectual property to refer such dispute for determination to the Principal of the Licensor and the Chief Executive Officer of the Licensee. (c) The Licensee will use all reasonable endeavours to ensure that the Licensee chooses to use in Licensed Rights and the manufacture or sale of any Cross Licensed Product); and (ii) This clause does not provide for any reduction in the Net Sales royalties payable Rights are sub-licensed by the Licensee in the event that the Licensee considers it necessary to obtain (or any Third Party Licence in order to avoid infringing any Third Party patents in the course of the development, manufacture or sale of any KnowAffiliate under a Sub-How Productlicence) at normal commercial rates.