Settlement Cross-Licensing Clause Samples

Settlement Cross-Licensing. If pursuant to a bona fide settlement of any Enforcement Action or Infringement Claim controlled by Pfizer, Pfizer grants to a Third Party (that was a party to the Enforcement Action or Infringement Claim) any sublicense to any of the Patent Rights licensed to Pfizer under this Agreement in respect of that Third Party’s Competitive Product, then Pfizer shall pay to BioNTech (i) at a minimum, if such sublicense includes any of the rights granted to Pfizer under a Current License or Future BioNTech Third Party Agreement (subject to Sections 2.1, 2.2, 2. 9), all royalties due by BioNTech to the relevant Third Party for such sublicense under any Current License and Future BioNTech Third Party Agreement in respect of licensed sales of such Competitive Product and (ii) all other royalties received by Pfizer shall be deemed Net Sales pursuant to Section 7.3.2(c) provided that in no event shall such payment obligations exceed the maximum royalty that would be due had such Third Party become a Sublicensee. For the avoidance of doubt, should the Third Party as part of the same agreement grant any cross-license to Pfizer for any Candidates or Products, such cross-license shall not be deemed “non-cash” consideration for the purpose of the Net Sales definition.