Sublicense Fees. In partial consideration of the License and subject to Sections 3.7 and 3.8, Company will pay to Penn: (i) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of sublicensing royalties actually received by Company and its Affiliates in consideration of sublicenses of the License for Licensed Products Sold by sublicensees for use in the Field of Use while covered in the country of Sale of expected use by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, provided that, such amounts payable to Penn with respect to such sublicensing royalties for such Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and (ii) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of all other sublicensing fees and payments and other consideration actually received by Company in consideration of sublicenses under the License granted by Company or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (i) above, (2) equity investments to the extent not in excess of fair market value made by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount of the Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) share.
Appears in 6 contracts
Samples: Patent License Agreement, Patent License Agreement, Patent License Agreement (Aegerion Pharmaceuticals, Inc.)
Sublicense Fees. In partial consideration of the License licenses and subject rights granted to Sections 3.7 and 3.8LICENSEE hereunder, Company will LICENSEE shall pay to Penn:
LICENSOR the applicable percentage of all Third Party Fees payable from any of LICENSEE’s sublicensees, assignees and other transferees (i) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of sublicensing royalties actually received by Company and its Affiliates in consideration of sublicenses of including without limitation the License for Licensed Products Sold by sublicensees for use in the Field of Use while covered in the country of Sale of expected use by a Valid Claim of the Penn Patent Rights PRC Sublicensee but excluding any sublicensee, assignee or transferee that is licensed to Company an Affiliate of LICENSEE immediately following the applicable sublicense, assignment or transfer) (the “Sublicense Fees”) as set forth below. As used herein, “Third Party Fees” means any and all consideration in any form provided by sublicensees, assignees and other transferees (including without limitation the PRC Sublicensee) hereunder for rights under the License, provided that, such amounts payable to Penn with respect to such sublicensing royalties for such Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of all other sublicensing fees and payments and other consideration actually received by Company in consideration of sublicenses under the License granted by Company or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (i) above, (2) equity investments Technology related to the extent not in excess of fair market value made by sublicensees in Company or its AffiliatesRoyalty & Milestone Products, excluding: (3a) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and Royalties (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount of the Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such Section 4.1.2 above); (b) reimbursement of actual research and Development expenses for Royalty & Milestone Product; (c) manufacturing costs for the Royalty & Milestone Product; (d) payments for prosecution, enforcement or maintenance of any Licensed Technology; (e) Milestone Payments which are less than the Milestone Payments due to LICENSOR hereunder, if for achievement of the same Milestone event; and (f) any proceeds from a Change in Control of LICENSEE or a sale of all or substantially all of LICENSEE’s assets wherein [CONFIDENTIAL TREATMENT REQUESTED***] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED***]) [***]. LICENSEE shall pay all Sublicense Fees received during each Calendar Quarter within [***] /*/%([***]) share.following the expiration of each such Calendar Quarter. All payments shall be accompanied by a report that includes a calculation of all Sublicense Fees payable to LICENSOR for the applicable Calendar Quarter. Sublicense Fees Percentage by LICENSOR’s Product Family Equity LICENSOR’s Product Family Equity [*** ] [*** ] [*** ] Percentage of Third Party Fees [*** ] [*** ] [*** ]
Appears in 3 contracts
Samples: License Agreement (Zentalis Pharmaceuticals, Inc.), License Agreement (Zentalis Pharmaceuticals, LLC), License Agreement (Zentalis Pharmaceuticals, LLC)
Sublicense Fees. In partial part consideration of the License license rights granted by Marina Bio under this Agreement and subject the right to Sections 3.7 and 3.8, Company will sublicense such licenses. MirnaRx shall pay to Penn:
Marina Bio an amount (i“Sublicense Fees”) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) equal to a percentage of sublicensing royalties actually any Sublicensing Revenue received by Company and MirnaRx (or its Affiliates in consideration Affiliate) from any Sublicensee based on the grant to such Sublicensee of sublicenses sublicense rights under MirnaRx’s license rights under the Licensed Patents. Such percentage shall be determined based on the development stage of the License for applicable Licensed Products Sold Product (that is covered by sublicensees for use in the Field of Use while covered in sublicense) at the country of Sale of expected use time that the particular sublicense agreement is executed by the parties thereto, as follows: [***] [***]% [***] [***]% [***] [***]% [***] [***]% [***] [***]% If, as to a particular Licensed Product being developed by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, provided thatSublicensee, such amounts payable to Penn Sublicensee first achieves, with respect to such sublicensing royalties for Licensed Product, one of the Milestone Events in the milestone table in Section 5.3(a) above, then in no event will the cumulative amount (the “Cumulative Sublicense Fees”, as of the applicable date) of Sublicense Fees paid to Marina Bio by MirnaRx. under this Section 5.6, by the date [***] after the date that such Sales of Milestone Event is achieved, with. respect to Sublicense Revenues received by MirnaRx from such Licensed Products shall not Sublicensee, be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent the cumulative amount ([CONFIDENTIAL TREATMENT REQUESTED] /*/%the “Milestone Payment Sum”, as of the applicable date) of Net Sales the Milestone Payments that would have been due under Section 5.3(a) by such date, for all Milestone Events achieved by such Sublicensee (as of such date), had MirnaRx achieved such Milestone Events. If, as to a Sublicensee that first achieves a particular Milestone Event for the applicable Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 Product sublicensed to such sublicensees’ Net SalesSublicensee, the Cumulative Sublicense Fees paid by MirnaRx to Marina Bio based on Sublicense Revenues received from such Sublicensee, by the date that is [***] after the date when such Milestone Event is achieved, is less than the Milestone Payment Sum effective as of such date, then MirnaRx will by such date also pay to Marina Bio the amount of such difference (such amount, the “True-Up Payment” as to the applicable Milestone Event achieved by such Sublicensee); and
. An example of the calculation of such amounts and the determination of such difference (iiif any) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent is given in Appendix B of this Agreement. For clarity, any such True-Up Payment shall be deemed a Sublicensee Fee payment for all purposes of this Agreement. Further, if in the sublicense agreement between MirnaRx and a particular Sublicensee, the definition of “Major Markets” ([CONFIDENTIAL TREATMENT REQUESTED] /*/%or equivalent definition) is different from the definition in Section 1.27 of this Agreement, then the definition in such sublicense agreement will be used with respect to the achievement of the Milestone Event in subclause (i)(4) of all other sublicensing fees and payments and other consideration actually received by Company the milestone table in consideration of sublicenses under the License granted by Company or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (iSection 5.3(a) above, (2) equity investments for the purpose of determining [***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the extent not in excess of fair market value made omitted portions. whether any “True-Up Payment” is owed by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for MirnaRx based on the Sublicensee achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount Regulatory Approval of the Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) shareapplicable Licensed Product in a Major Market.
Appears in 3 contracts
Samples: License Agreement (Mirna Therapeutics, Inc.), License Agreement (Mirna Therapeutics, Inc.), License Agreement (Mirna Therapeutics, Inc.)
Sublicense Fees. 3.6.1 In partial further consideration of the License rights and subject licenses granted to Sections 3.7 and 3.8Licensee under this Agreement, Company Licensee will pay Licensor [***]% of any sublicense fees (including upfront payments and milestone payments) received by Licensee or its Affiliates for the Licensed Commercial Patents from any Third Party Sublicensee or from any Third Party granted any option to Pennobtain a sublicense.
3.6.2 With respect to the obligations under this Section 3.6, Licensee shall not be required to submit any amounts received from a Third Party for the following:
(ia) Reimbursement for research, development, and/or manufacturing activities performed by Licensee or its Affiliates corresponding directly to the development of Licensed Products pursuant to a specific agreement; CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT REQUESTED] /*/ percent UNDER RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
([CONFIDENTIAL TREATMENT REQUESTED] /*/%b) Consideration received for the purchase of sublicensing royalties actually received by Company and an equity interest in Licensee or its Affiliates in consideration of sublicenses of the License for Licensed Products Sold by sublicensees for use at fair market value or in the Field form of Use while covered in the country loans at commercially reasonable rates of Sale of expected use by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, provided that, such amounts payable to Penn with respect to such sublicensing royalties for such Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales)interest; and
(iic) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent Any and all amounts paid to Licensee or its Affiliates by a Third Party Sublicensee as royalties on sales of Licensed Product sold by such Sublicensee under a sublicense agreement.
3.6.3 If Licensee or its Affiliate receives sublicense fees from Third Party Sublicensees or from any Third Party granted any option to obtain a sublicense under this Agreement in the form of non-cash consideration, then, at Licensor’s option, Licensee shall pay Licensor payments as required by this Section 3.6 ([CONFIDENTIAL TREATMENT REQUESTED] /*/%a) in the form of all other sublicensing fees and payments and other the non-cash consideration actually received by Company in consideration of sublicenses under the License granted by Company Licensee or its Affiliates, excluding for this clause Affiliates or (iib) (1) sublicensing royalties addressed by clause (i) above, (2) equity investments to a cash payment determined based on the extent not in excess of fair market value made by sublicensees in Company of such non-cash consideration. If Licensee or its AffiliatesAffiliate enters into any sublicense with a Third Party Sublicensee that is not an arm’s length transaction, (3) payments fees due under this Section 3.6 will be calculated based on the fair market value of such transaction, at the time of the transaction, assuming an arm’s length transaction made in the ordinary course of business, as determined jointly by sublicensees to Company or Affiliates for Licensor and Licensee based on transactions of a similar type and standard industry practice, if any.
3.6.4 To the extent Licensee receives payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving Third Party relating to one or more of the same milestone subject to this events set forth in the table in Section 3.5(ii)3.4, then the amount of the Company’s payment made to Penn Licensor under such Section 3.2 shall be deducted from 3.4 with respect to such sublicensee’s payment for purposes of this Section 3.5(ii) and milestone event shall not be deemed sublicense fees under this Section 3.6; instead, the amounts due under this Section 3.6 shall be calculated by applying the sublicense fee rate set forth in Section 3.6.1 above to the sublicense fees received by Licensee from such Third Party after deducting the amount of the payment under Section 3.4.
3.6.5 If a sublicense or option is part of a transaction in which Licensee or its Affiliates also licenses, sublicenses, or grants rights to technology, patent rights, or other intellectual property rights other than Licensed Patents, that portion of the consideration received by Licensee or its Affiliates and subject to this Section 3.6 shall be equitably apportioned between the Licensed Patents and those other rights, and such apportionment shall be reasonable and in accordance with customary standards in the industry. Licensee shall promptly deliver to Licensor a written report setting forth such apportionment and shall describe in reasonable detail the rationale for such allocation, together with a copy of all underlying documents necessary to determinate the basis and accuracy of such allocation. If Licensor disagrees with the determination made by Licensee, Licensor shall so notify Licensee within [CONFIDENTIAL TREATMENT REQUESTED***] /*/ percent (of receipt of Licensee’s report, and the Parties shall meet to discuss and resolve such disagreement in good faith. If the Parties are unable to agree as to such apportionment within [CONFIDENTIAL TREATMENT REQUESTED] /*/%) share***], then the matter shall be submitted in accordance with the dispute resolution process set forth in Section 10.6.
Appears in 3 contracts
Samples: License Agreement (Voyager Therapeutics, Inc.), License Agreement (Voyager Therapeutics, Inc.), License Agreement (Voyager Therapeutics, Inc.)
Sublicense Fees. In partial consideration of the License and subject respect to Sections 3.7 and 3.8, Company will sublicenses granted by Licensee under Article 6
3.6.1 Licensee shall pay to Penn:University an amount equal to [***] of Sublicensing Revenue within 30 days of Licensee’s receipt of Sublicensing Revenue; and
(i) 3.6.2 Licensee shall pay to University an amount equal to [CONFIDENTIAL TREATMENT REQUESTED***] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of sublicensing royalties actually received by Company and its Affiliates in consideration of sublicenses of the License for Licensed Products Sold by sublicensees for use in the Field of Use while covered in the country of Sale of expected use by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, Sublicensing Royalty Revenue provided that, such amounts payable to Penn notwithstanding the foregoing, the total payment due University under this Section 3.6.2 with respect to Sublicensing Royalty Revenue during any particular quarter shall not, in any event, exceed an amount equal to the royalties that would have been due to University with respect to the Licensed Products had Licensee itself sold such sublicensing royalties for Licensed Product, based on such Sales Sublicensee’s net sales of such Licensed Products (determined in a manner substantially similar to the manner in which Net Sales are determined under this Agreement for Licensee’s sales of Licensed Products) and calculated in a manner consistent with Sections 3.4, 3.7, 3.8, and 3.9. Any such payments shall be made concurrently with the submission of Royalty Reports as set forth in Section 4.2. Licensee shall not sell or transfer to a third party Licensee’s interest in all or a portion of any future Sublicensing Revenue and/or Sublicensing Royalty Revenue under such sublicense agreement(s) in exchange for a single cash payment or series of cash payments (the “Exchange Consideration”) without the prior written approval of University, such approval not to be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of unreasonably withheld. In the event that University approves such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of all other sublicensing fees and payments and other consideration actually received by Company in consideration of sublicenses under the License granted by Company sale or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (i) abovetransfer, (2a) equity investments the portion of any Exchange Consideration reasonably allocated by Licensee to the extent not value of its interest in excess of fair market value made by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for such future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount of the Company’s payment to Penn under Section 3.2 Sublicensing Revenue shall be deducted from such sublicensee’s payment treated as Sublicensing Revenue for purposes of this Section 3.5(ii3.6 and (b) and the portion of any such Exchange Consideration reasonably allocated by Licensee to the value of its interest in such future Sublicensing Royalty Revenue shall be treated as Sublicensing Royalty Revenue for purposes of this Section 3.6. For the avoidance of doubt, to the extent Exchange Consideration has been allocated to the value of Licensee’s interest in future Sublicensing Revenue or Sublicensing Royalty Revenue, any such Sublicensing Revenue or Sublicensing Royalty Revenue shall thereafter not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) shareincluded within the definitions of Sublicensing Revenue or Sublicensing Royalty Revenue originally established in Article 1.
Appears in 2 contracts
Samples: Exclusive License Agreement (908 Devices Inc.), Exclusive License Agreement (908 Devices Inc.)
Sublicense Fees. In partial (a) With respect to Sublicenses granted by Licensee under Section 2.4(a), Licensee shall pay to UFRF an amount equal that Licensee would have been required to pay under Section 4.3 had Licensee sold the Licensed Products that are sold by a Sublicensee.
(b) If Company receives any consideration such as fees, minimum royalties, milestone payments or other payments pursuant to sublicense of the License Patent Rights and subject to Sections 3.7 Know-How, and 3.8such payments are not running royalties based on Net Sales, then Company will shall pay to Penn:
(i) UFRF [CONFIDENTIAL TREATMENT REQUESTED**] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%**]%) of sublicensing royalties actually such consideration within [**] of receipt. Royalties from Sublicenses will pass through to UFRF at the same Royalty rate as is specified in this term sheet. For clarity, Sublicense Fees shall exclude (the “Excluded Amounts”): amounts received by in connection with financing events, capital investments (debt and/or equity), assignments (and not as a consequence of restructuring or other corporate organizing or merger or sale of Company or any business or assets or similar transaction), acquisition of Company, payments/reimbursements for R&D and its Affiliates in consideration of sublicenses of the License for Licensed Products Sold by sublicensees for use in the Field of Use while covered in the country of Sale of expected use by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, provided that, such amounts payable to Penn other out-of-pocket expenses incurred with respect to the Patent Rights or Licensed Products, distribution, service contracts, regulatory trials and joint development efforts. For clarity, such sublicensing exclusions may be part of a larger transaction in which a sublicense under the Patent Rights is granted, provided that such transactions will also contemplate significant future milestones, royalties for such Sales or other income that would be considered Sublicense Payments. Licensee may not receive from Sublicensees anything of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) value in lieu of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of all other sublicensing fees and cash payments and other consideration actually received by Company in consideration for any Sublicense under this Agreement other than the Excluded Amount without the express prior written consent of sublicenses under the License granted by Company UFRF, not to be unreasonably withheld, conditioned or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (i) above, (2) equity investments to the extent not in excess of fair market value made by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount of the Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) sharedelayed.
Appears in 2 contracts
Samples: Standard Exclusive License Agreement (Solid Biosciences Inc.), Standard Exclusive License Agreement (Solid Biosciences Inc.)
Sublicense Fees. In partial consideration of the License and subject to Sections 3.7 and 3.8License, Company will pay to Penn:
(i) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) Penn sublicense fees as per the table below of sublicensing royalties actually the sum of all payments plus the fair market value of all other consideration of any kind, received by Company and its Affiliates from non-Affiliate sublicensees in consideration of sublicenses for the grant of the License for Licensed Products Sold by sublicensees for use in sublicense during the Field of Use while covered in the country of Sale of expected use Quarter (“Sublicense Fees”), other than: (a) royalties paid to Company by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, provided that, such amounts payable to Penn with respect to such sublicensing royalties for such sublicensee based upon Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of or Net Sales of such Licensed Products made by sublicensees the sublicensee; (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of all other sublicensing fees and payments and other consideration actually received by Company in consideration of sublicenses under the License granted by Company or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (i) above, (2b) equity investments to the extent not in excess of fair market value made by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject up to this Section 3.5(ii), then the amount of the fair market value of the equity purchased on the date of the investment; (c) loan proceeds paid to Company by a sublicensee in an arms-length, full recourse debt financing to the extent that such loan is not forgiven; and (d) sponsored research funding paid to Company by a sublicensee in a bona fide transaction for future research to be performed by Company. [**] [ **] [**] [ **] [**] [ **] 1 Orphan Designation (or sometimes “orphan status”) is a special status that is granted to a drug or biological product to treat a rare disease or condition upon request of the Company. For a drug to qualify for orphan designation both the drug and the disease or condition must meet certain criteria specified in the Orphan Drug Act and FDA’s payment implementing regulations at 21 CFR Part 316. For purposes of the Agreement, Orphan Designation shall mean that the FDA or other foreign regulatory body has granted the Company market exclusivity with respect to the Licensed Product. Notwithstanding anything to the contrary herein, Company shall be permitted to sublicense or otherwise transfer its rights under this Agreement to any subsidiary or Affiliate of the Company and no sublicense fees shall be payable in respect of such transactions. Furthermore, in the event that the sublicense granted above involves the sublicense of additional technologies or patent rights, Penn and Company will in good faith mutually agree upon the allocation of any Sublicense Fees such that the amount of consideration payable to Penn under Section 3.2 in respect of the grant of the Sublicense is attributable to the Patent Rights granted hereunder. Any dispute regarding the allocation of any Sublicense Fees shall be deducted from such sublicensee’s payment for purposes of this determined in accordance with Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) share13.11.
Appears in 2 contracts
Samples: Patent License Agreement (Spark Therapeutics, Inc.), Patent License Agreement (Spark Therapeutics, Inc.)
Sublicense Fees. In partial consideration of the License and subject to Sections 3.7 and 3.8, Company Panacela will pay to Pennthe following sublicense fees in connection with sublicensing rights regarding Licensed Products:
a) Where a sublicense has been granted by Panacela prior to the filing of an INDA for a Licensed Product, Panacela shall pay to CCIA the following percentage of any and all sublicense fees and all royalties received from the sublicensee of a Licensed Patent: (i1) for the sublicense of Licensed Patents related to a Licensed Product that are solely owned by CCIA, [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ***]%; or (2) for the sublicense of Licensed Patents related to a Licensed Product that are jointly owned by CCIA and Panacela and/or a third party, [CONFIDENTIAL TREATMENT REQUESTED] /*/%***]%;
b) Where a sublicense has been granted after filing of sublicensing an INDA for a Licensed Product, Panacela shall pay to CCIA the following percentage of any and all sublicense fees and all royalties actually received from the sublicensee of a Licensed Patent: (1) for the sublicense of Licensed Patents related to a Licensed Product that are solely owned by Company CCIA, [***]%; or (2) for the sublicense of Licensed Patents related to a Licensed Product that are jointly owned by CCIA and its Affiliates in consideration of sublicenses of the License for Licensed Products Sold by sublicensees for use in the Field of Use while covered in the country of Sale of expected use by Panacela and/or a Valid Claim of the Penn Patent Rights that is licensed to Company under the Licensethird party, provided that, such amounts payable to Penn with respect to such sublicensing royalties for such Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales)***]%; and
(iic) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) Where a sublicense has been granted after final approval of the relevant NDA for a Licensed Product, Panacela shall pay to CCIA the following percentage of any and all other sublicensing sublicense fees and payments and other consideration actually all royalties received by Company in consideration from the sublicensee of sublicenses under the License granted by Company or its Affiliates, excluding for this clause (ii) a Licensed Patent: (1) sublicensing royalties addressed for the sublicense of Licensed Patents related to a Licensed Product that are solely owned by clause (i) aboveCCIA, [***]%; or (2) equity investments for the sublicense of Licensed Patents related to the extent not in excess of fair market value made a Licensed Product that are jointly owned by sublicensees in Company or its AffiliatesCCIA and Panacela and/or a third party, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount of the Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) share***]%.
Appears in 1 contract
Samples: Exclusive License and Option Agreement (Cleveland Biolabs Inc)
Sublicense Fees. In partial consideration addition to all other amounts due hereunder, B&L will reimburse Symbollon with respect to each calendar quarter for [* INDICATES THAT MATERIAL HAS BEEN OMITTED AND CONFIDENTIAL TREATMENT HAS BEEN REQUESTED THEREFOR. ALL SUCH OMITTED MATERIAL HAS BEEN FILED SEPARATELY WITH THE COMMISSION PURSUANT TO RULE 24b-2.] of any amounts that Symbollon is required to pay to any third party due to B&L's sublicense of such third party's patent rights during such quarter; provided that if, on a product-by-product basis, the amount that Symbollon is required to pay (less any amounts reimbursed by B&L) third parties due to B&L's sublicense of such third parties' patent rights during such quarter exceeds [* INDICATES THAT MATERIAL HAS BEEN OMITTED AND CONFIDENTIAL TREATMENT HAS BEEN REQUESTED THEREFOR. ALL SUCH OMITTED MATERIAL HAS BEEN FILED SEPARATELY WITH THE COMMISSION PURSUANT TO RULE 24b-2.] of the License and subject royalties that B&L is required to Sections 3.7 and 3.8pay Symbollon for such quarter pursuant to Section 7.1, Company then, in addition to the amount determined above that B&L will pay to Penn:
(i) reimburse Symbollon, B&L will also reimburse Symbollon for the amount by which such third parties' payments exceeds [* INDICATES THAT MATERIAL HAS BEEN OMITTED AND CONFIDENTIAL TREATMENT REQUESTEDHAS BEEN REQUESTED THEREFOR. ALL SUCH OMITTED MATERIAL HAS BEEN FILED SEPARATELY WITH THE COMMISSION PURSUANT TO RULE 24b-2.] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of sublicensing royalties actually received by Company and its Affiliates in consideration of sublicenses of the License royalties that B&L is required to pay Symbollon for Licensed Products Sold by sublicensees for use in the Field such quarter pursuant to Section 7.1. If B&L and Symbollon mutually agree, which agreement shall not be unreasonably withheld, to license any additional third party Proprietary Information related to a Product's composition of Use while covered in the country of Sale of expected use by a Valid Claim of the Penn Patent Rights that is licensed to Company under the Licensematter (excluding packaging), provided that, such then any and all amounts payable to Penn due with respect to such sublicensing royalties license (regardless of which party is responsible for such Sales payment of such Licensed Products amounts) shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made governed by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of all other sublicensing fees and payments and other consideration actually received by Company in consideration of sublicenses under the License granted by Company or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (i) above, (2) equity investments to the extent not in excess of fair market value made by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount of the Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) share7.2.
Appears in 1 contract
Samples: Collaboration and Sale/License Agreement (Symbollon Corp)
Sublicense Fees. In partial consideration of the License and subject to Sections 3.7 and 3.8License, Company will pay to Penn:
PSRF a sublicense fee of (i) [*CONFIDENTIAL TREATMENT REQUESTEDPORTION OMITTED AND FILED SEPARATELY WITH THE SEC PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT*] /*/ percent Percent ([*CONFIDENTIAL TREATMENT REQUESTED] /*/%PORTION OMITTED AND FILED SEPARATELY WITH THE SEC PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT*]%) of sublicensing royalties actually the sum of all payments plus the fair market value of all other consideration of any kind, (alternatively, Additional Sublicensing Revenue) received by Company and its Affiliates in consideration of sublicenses of the License for Licensed Products Sold by from sublicensees for use in the Field of Use while covered in the country of Sale of expected use by a Valid Claim of the Penn sublicenses involving solely Patent Rights that is licensed to Company under the License, provided that, such amounts payable to Penn with respect to such sublicensing royalties for such Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [*CONFIDENTIAL TREATMENT REQUESTEDPORTION OMITTED AND FILED SEPARATELY WITH THE SEC PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT*] /*/ percent Percent ([*CONFIDENTIAL TREATMENT REQUESTED] /*/%PORTION OMITTED AND FILED SEPARATELY WITH THE SEC PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT*]%) of the sum of all payments plus the fair market value of all other sublicensing fees and payments and other consideration actually of any kind, received by Company in consideration of for all other sublicenses, including, but not limited to, sublicenses under involving Patent Rights together with non-PSRF Company owned or controlled intellectual property during the License granted Quarter, other than: (a) royalties paid to Company by a sublicensee based upon Sales by the sublicensee; (b) milestone payments paid to Company or its Affiliates, excluding for this clause by a sublicensee which Company pays to PSRF pursuant to Section 3.6 as a pass through; (ii) (1) sublicensing royalties addressed by clause (i) above, (2c) equity investments to the extent not in excess of fair market value made by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject up to this Section 3.5(ii), then the amount of the fair market value of the equity purchased on the date of the investment; (d) loan proceeds paid to Company by a sublicensee in an arms length, full recourse debt financing to the extent that such loan is not forgiven; and (e) sponsored research funding, including clinical research funding, paid to Company by a sublicensee in a bona fide transaction for future research to be performed by Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) share.
Appears in 1 contract
Sublicense Fees. 4.1.3.1 In partial circumstances where BIOMIRA sublicenses any of its rights in the TERRITORY under this AGREEMENT to the LICENSED TECHNOLOGY to a third party for use by such third party, on a solely stand alone and non-collaborative with BIOMIRA basis, in SUBLICENSEE LICENSED PRODUCT(S) that do not contain any technology or components proprietary to BIOMIRA, a sublicense payment in an amount equal to [+] of all fees, payments, royalties or other consideration (excluding any reimbursements to BIOMIRA for expenses incurred by or on behalf of BIOMIRA including without limitation for patent expenses (including filing, prosecution, maintenance and protection), preclinical and clinical trials, [+] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR CONFIDENTIALITY PURPOSES product development, regulatory approvals, and the License and subject to Sections 3.7 and 3.8, Company will pay to Penn:
(ilike) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of sublicensing royalties actually received by Company BIOMIRA from such third party specifically for such sublicensed rights, provided that BIOMIRA shall also be entitled to deduct from any such sublicense payment any amounts payable by BIOMIRA as a result of such sublicensed LICENSED TECHNOLOGY infringing the rights of any third party or being invalid. Such payments shall be deemed earned and due within [+] of their receipt by BIOMIRA. For greater certainty, the sublicense flow through payments for a sublicense to BIOMIRA LICENSED PRODUCT(S) is defined in section 4.1.3.2 hereunder;
4.1.3.2 Subject to section 4.1.3.3, in circumstances where BIOMIRA licenses BIOMIRA LICENSED PRODUCT(S), including its Affiliates in consideration of sublicenses of the License for Licensed Products Sold by sublicensees liposomal delivery technology, to a third party for use (in the Field of Use while covered FIELD OF USE in the country TERRITORY) with such third party's own antigen(s) and such BIOMIRA liposomal delivery technology incorporates the PATENT RIGHTS, a sublicense payment in an amount equal to [+] of Sale all fees, payments or other consideration (excluding all royalties on sales of expected use BIOMIRA LICENSED PRODUCT(S)), received by a Valid Claim of BIOMIRA from such third party specifically for the Penn Patent Rights that is licensed to Company under the Licensesublicensed LICENSED TECHNOLOGY, provided thatthat BIOMIRA shall also be entitled to deduct from any such sublicense payment any reimbursements to BIOMIRA for expenses incurred by or on behalf of BIOMIRA including without limitation for patent expenses (including filing, prosecution, maintenance and protection), preclinical and clinical trials, product development, regulatory approvals, and the like, and, provided further, that BIOMIRA shall also be entitled to deduct from any such sublicense payment any amounts payable to Penn with respect to such sublicensing royalties for such Sales by BIOMIRA as a result of such Licensed Products sublicensed LICENSED TECHNOLOGY infringing the rights of any third party or being invalid. Such payments shall be deemed earned and due within [+] of their receipt by BIOMIRA. For greater certainty, royalties payable to UA on sales of such BIOMIRA LICENSED PRODUCT(S) by SUBLICENSEE(S) are determined by sections 4.1.2.1 and 4.1.2.2 of this AGREEMENT;
4.1.3.3 Notwithstanding the foregoing, the flow through payments referred to in section 4.1.3.2 shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied apply to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of all other sublicensing fees and payments and other consideration actually received by Company in consideration of sublicenses under the License granted by Company or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (i) above, (2) equity investments to the extent not in excess of fair market value made by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount of the Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) shareBLP25.
Appears in 1 contract
Samples: License Agreement (Biomira CORP)
Sublicense Fees. In partial consideration of the License and subject licenses to Sections 3.7 and 3.8Compound Specific Patents granted to LICENSEE hereunder, Company will LICENSEE shall pay to Penn:
(i) LICENSOR [CONFIDENTIAL TREATMENT REQUESTED***] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of sublicensing royalties actually received by Company and its Affiliates in consideration of sublicenses of the License for Licensed Products Sold by sublicensees for use in the Field of Use while covered in the country of Sale of expected use by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, provided that, such amounts payable to Penn with respect to such sublicensing royalties for such Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%***]) of all other sublicensing fees and payments Third Party Fees payable from any of LICENSEE’s and/or Affiliates’ sublicensees, assignees and other transferees (including without limitation the PRC Sublicensee but excluding any sublicensee, assignee or transferee that is an Affiliate of LICENSEE immediately following the applicable sublicense, assignment or transfer) (the “Sublicense Fees”) as set forth below. As used herein, “Third Party Fees” means any and all consideration actually received in any form provided by Company in consideration of sublicenses sublicensees, assignees and other transferees (including without limitation the PRC Sublicensee) hereunder for rights under the License granted by Company Licensed Technology related to the Royalty & Milestone Products, excluding: (a) royalties (which shall be subject to Section 4.1.2 above); (b) reimbursement of actual research and Development expenses for Royalty & Milestone Product; (c) manufacturing costs for the Royalty & Milestone Product; (d) payments for prosecution, enforcement or maintenance of any Licensed Technology; (e) milestone payments which are less than the Milestone Payments due to LICENSOR hereunder, if for achievement of the same Milestone event; and (f) any consideration received in connection with a Change in Control of LICENSEE and/or its Affiliates. LICENSEE shall pay all Sublicense Fees received during each Calendar Quarter within [***] ([***]) [***] following the expiration of each such Calendar Quarter. All payments shall be accompanied by a report that includes a calculation of all Sublicense Fees payable to LICENSOR for the applicable Calendar Quarter. For clarity, excluding for all Sublicense Fees due under this clause (ii) (1) sublicensing royalties addressed by clause (i) aboveAgreement resulting from activity concerning each and every sublicensee, (2) equity investments assignee and transferee of LICENSEE and/or its Affiliates anywhere in the Territory, including the sublicensees pursuant to the extent not in excess of fair market value made by sublicensees in Company or its AffiliatesGreater China Sublicense Agreements, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject shall be determined pursuant to this Section 3.5(ii), then the amount of the Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) share4.1.3.
Appears in 1 contract
Sublicense Fees. In partial consideration of the License licenses and subject rights granted to Sections 3.7 and 3.8LICENSEE hereunder, Company will LICENSEE shall pay to Penn:
LICENSOR the applicable percentage of all Third Party Fees payable from any of LICENSEE’s and/or its Affiliates’ sublicensees, assignees and other transferees (i) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of sublicensing royalties actually received by Company and its Affiliates in consideration of sublicenses of including without limitation the License for Licensed Products Sold by sublicensees for use in the Field of Use while covered in the country of Sale of expected use by a Valid Claim of the Penn Patent Rights PRC Sublicensee but excluding any sublicensee, assignee or transferee that is licensed to Company an Affiliate of LICENSEE immediately following the applicable sublicense, assignment or transfer) (the “Sublicense Fees”) as set forth below. As used herein, “Third Party Fees” means any and all consideration in any form provided by sublicensees, assignees and other transferees (including without limitation the PRC Sublicensee) hereunder for rights under the License, provided that, such amounts payable to Penn with respect to such sublicensing royalties for such Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of all other sublicensing fees and payments and other consideration actually received by Company in consideration of sublicenses under the License granted by Company or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (i) above, (2) equity investments Technology related to the extent not in excess of fair market value made by sublicensees in Company or its AffiliatesRoyalty & Milestone Products, excluding: (3a) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and Royalties (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount of the Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to Section 4.1.2 above); (b) reimbursement of actual research and Development expenses for Royalty & Milestone Product; (c) manufacturing costs for the Royalty & Milestone Product; (d) payments for prosecution, enforcement or maintenance of any Licensed Technology; (e) Milestone Payments which are less than the Milestone Payments due to LICENSOR hereunder, if for achievement of the same Milestone event; and (f) any consideration received in connection with a Change in Control of LICENSEE and/or its Affiliates. LICENSEE shall pay all Sublicense Fees received during each Calendar Quarter within [***] following the expiration of each such Calendar Quarter. All payments shall be accompanied by a report that includes a calculation of all Sublicense Fees payable to LICENSOR for the applicable Calendar Quarter. Sublicense Fees Percentage by LICENSOR’s Product Family Equity Percentage of Third Party Fees By LICENSOR Ownership LICENSOR’s Product [CONFIDENTIAL TREATMENT REQUESTED***] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED***] /*/%) share.[***] Family Equity Percentage of Third [***] [***] [***] Party Fees For clarity, all sublicense fees due under the Agreement resulting from activity concerning each and every sublicensee, assignee and transferee of LICENSEE and/or its Affiliates anywhere in the Territory, including the sublicensees pursuant to the Greater China Sublicense Agreements, shall be determined pursuant to Section 4.1.3 as amended herein. 3. Second
Appears in 1 contract
Sublicense Fees. In partial consideration of the License and subject to Sections 3.7 and 3.8License, Company will pay to Penn:
PSRF a sublicense fee of (i) [CONFIDENTIAL TREATMENT REQUESTED*Confidential Portion Omitted and Filed Separately with the SEC Pursuant to a Request for Confidential Information*] /*/ percent Percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%*Confidential Portion Omitted and Filed Separately with the SEC Pursuant to a Request for Confidential Information*]%) of sublicensing royalties actually the sum of all payments plus the fair market value of all other consideration of any kind, (alternatively, Additional Sublicensing Revenue) received by Company and its Affiliates in consideration of sublicenses of the License for Licensed Products Sold by from sublicensees for use in the Field of Use while covered in the country of Sale of expected use by a Valid Claim of the Penn sublicenses involving solely Patent Rights that is licensed to Company under the License, provided that, such amounts payable to Penn with respect to such sublicensing royalties for such Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED*Confidential Portion Omitted and Filed Separately with the SEC Pursuant to a Request for Confidential Information*] /*/ percent Percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%*Confidential Portion Omitted and Filed Separately with the SEC Pursuant to a Request for Confidential Information*]%) of the sum of all payments plus the fair market value of all other sublicensing fees and payments and other consideration actually of any kind, received by Company in consideration of for all other sublicenses, including, but not limited to, sublicenses under involving Patent Rights together with non-PSRF Company owned or controlled intellectual property during the License granted Quarter, other than: (a) royalties paid to Company by a sublicensee based upon Sales by the sublicensee; (b) milestone payments paid to Company or its Affiliates, excluding for this clause by a sublicensee which Company pays to PSRF pursuant to Section 3.6 as a pass through; (ii) (1) sublicensing royalties addressed by clause (i) above, (2c) equity investments to the extent not in excess of fair market value made by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject up to this Section 3.5(ii), then the amount of the fair market value of the equity purchased on the date of the investment; (d) loan proceeds paid to Company by a sublicensee in an arms length, full recourse debt financing to the extent that such loan is not forgiven; and (e) sponsored research funding, including clinical research funding, paid to Company by a sublicensee in a bona fide transaction for future research to be performed by Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) share.
Appears in 1 contract
Sublicense Fees. In partial further consideration of the License licenses and subject rights granted to Sections 3.7 and 3.8LICENSEE hereunder, Company LICENSEE will pay to Penn:
(i) PFIZER [CONFIDENTIAL TREATMENT REQUESTED**] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%**]%) of sublicensing royalties actually the Sublicense Fees. “Sublicense Fees” means all consideration received by Company and LICENSEE or its Affiliates with respect to the granting of a sublicense under any Intellectual Property Right licensed to LICENSEE hereunder, including any up-front payments, milestone payments, or equity in the sublicensee entity received for granting such sublicense, but excluding any amounts received by LICENSEE or its Affiliates in consideration respect of sublicenses (a) research funding for the development of the License a Product, (b) direct pass-through costs, (c) in exchange for Licensed Products Sold by sublicensees for use services priced at fair market value, provided in connection with such sublicensee’s Use of a Product, (d) equity participation in the Field LICENSEE or its Affiliates at fair market value (which may, for the avoidance of Use while covered in doubt, include a premium above the country of Sale of expected use publicly quoted price), or (e) amounts received by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, provided that, such amounts LICENSEE on sales by its sublicensee for which Royalties are actually paid or payable to Penn with respect PFIZER pursuant to such sublicensing royalties for such Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent Section 5.1.3 hereof, in each case ([CONFIDENTIAL TREATMENT REQUESTED] /*/%(a) of Net Sales of such Licensed Products made by sublicensees through (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Salesc); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of all other sublicensing fees and payments and other consideration actually received by Company in consideration of sublicenses under the License granted by Company or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (i) above, (2) equity investments to the extent not such amounts, if marked up above actual costs or at a premium above the publicly quoted price (in excess the case of fair market value made by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEsequity participation), are reasonable and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount bona fide payments in respect of the Company’s payment to Penn under Section 3.2 item concerned consistent with industry standards. LICENSEE shall pay all Sublicense Fees received during each Calendar Quarter within [**] days following the expiration of each such Calendar Quarter. All payments shall be deducted from such sublicensee’s payment accompanied by a report that includes a calculation of all Sublicense Fees payable to PFIZER for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) sharethe applicable Calendar Quarter.
Appears in 1 contract
Samples: License Agreement (Medicines Co /De)
Sublicense Fees. In partial consideration of for the License and subject right to Sections 3.7 and 3.8sublicense the License, Company will pay to Penn:
the Licensor Parties a sublicense fee of: (i) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent *Confidential Portion Omitted and Filed Separately with the SEC Pursuant to a Request for Confidential Information*]Percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%*Confidential Portion Omitted and Filed Separately with the SEC Pursuant to a Request for Confidential Information*]%) of sublicensing royalties actually the sum of all payments plus the fair market value of all other consideration of any kind, (alternatively, “Additional Sublicensing Revenue” received by Company and its Affiliates in consideration of from Sublicensees for sublicenses of the License for Licensed Products Sold by sublicensees for use in the Field of Use while covered in the country of Sale of expected use by a Valid Claim of the Penn solely involving Patent Rights that is licensed to Company under the License, provided that, such amounts payable to Penn with respect to such sublicensing royalties for such Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED*Confidential Portion Omitted and Filed Separately with the SEC Pursuant to a Request for Confidential Information*] /*/ percent Percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%*Confidential Portion Omitted and Filed Separately with the SEC Pursuant to a Request for Confidential Information*]%) of the sum of all payments plus the fair market value of all other sublicensing fees and payments and other consideration actually of any kind, received by Company in consideration of for all other sublicenses, including, but not limited to, sublicenses under involving Patent Rights together with patents or intellectual property not owned by the License granted Licensing Parties or patents or intellectual property owned or controlled by the Company or its Affiliatesduring the Quarter, excluding for this clause other than: (iia) milestone payments paid to Company by a Sublicensee which Company pays to pursuant to Section 3.6 as a pass through; (1) sublicensing royalties addressed by clause (i) above, (2b) equity investments to the extent not in excess of fair market value made by sublicensees in Company or its Affiliates, (3) payments by sublicensees a Sublicensee up to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount of the fair market value of the equity purchased on the date of the investment; and (c) loan proceeds paid to Company by a sublicensee in an arms length, full recourse debt financing to the extent that such loan is not forgiven; and (d) sponsored research funding, including clinical research funding, paid to Company by a sublicensee in a bona fide transaction for future research to be performed by Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) share.. Xxxx X. Xxxxx M.D. LDN Research Group LLC TNI BioTech Inc.
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Sublicense Fees. 3.6.1 In partial further consideration of the License rights and subject licenses granted to Sections 3.7 and 3.8Licensee under this Agreement, Company Licensee will pay Licensor a percentage of any sublicense fees [***] received by Licensee or its Affiliates for the Licensed Commercial Patents from any Third Party Sublicensee or from any Third Party granted any option to Pennobtain a sublicense. The applicable percentage due to Licensor for each sublicense (or option) in the Commercial Field of Friedreich’s Ataxia (CNS) shall be [***]. The applicable percentage due to Licensor for each sublicense (or option) in the Commercial Field of Friedreich’s Ataxia (Systemic) shall be as follows: If sublicensed (or optioned) on or before [***] [***] If sublicensed (or optioned) on or before [***] [***] If sublicensed (or optioned) on or before [***] [***] If sublicensed (or optioned) after [***] [***] For the avoidance of doubt, with respect to an option to obtain a sublicense in the Commercial Field of Friedreich’s Ataxia (Systemic), if a sublicense is later granted as a result of the exercise of such option, the sublicense fees applicable to such sublicense will be determined by reference to [***].
3.6.2 With respect to the obligations under this Section 3.6, Licensee shall not be required to submit any amounts received from a Third Party for the following:
(ia) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) Reimbursement or payment, in either case, of sublicensing royalties actually received Licensee’s actual costs for research, development, and/or manufacturing activities performed by Company and Licensee or its Affiliates in consideration corresponding directly to the research, development and/or manufacturing of sublicenses of the License for Licensed Products Sold by sublicensees pursuant to a specific agreement;
(b) Consideration received for use the purchase of an equity interest in Licensee or its Affiliates at fair market value or in the Field form of Use while covered in the country loans at commercially reasonable rates of Sale of expected use by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, provided that, such amounts payable to Penn with respect to such sublicensing royalties for such Sales of such Licensed Products shall not be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales)interest; and
(iic) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent Any and all amounts paid to Licensee or its Affiliates by a Third Party Sublicensee as royalties on sales of Licensed Product sold by such Sublicensee under a sublicense agreement.
3.6.3 If Licensee or its Affiliate receives sublicense fees from Third Party Sublicensees or from any Third Party granted any option to obtain a sublicense under this Agreement in the form of non-cash consideration, then, at Licensor’s option, Licensee shall pay Licensor payments as required by this Section 3.6 ([CONFIDENTIAL TREATMENT REQUESTED] /*/%a) in the form of all other sublicensing fees and payments and other the non-cash consideration actually received by Company in consideration of sublicenses under the License granted by Company Licensee or its Affiliates, excluding for this clause Affiliates or (iib) (1) sublicensing royalties addressed by clause (i) above, (2) equity investments to a cash payment determined based on the extent not in excess of fair market value made by sublicensees in Company of such non-cash consideration. If Licensee or its AffiliatesAffiliate enters into any sublicense that is not an arm’s length transaction, (3) payments fees due under this Section 3.6 will be calculated based on the fair market value of such transaction, at the time of the transaction, assuming an arm’s length transaction made in the ordinary course of business, as determined jointly and in good faith by sublicensees to Company or Affiliates for payment or reimbursement Licensor and Licensee based on transactions of patent prosecutiona similar type and standard industry practice, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company if any.
3.6.4 To the extent Licensee or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone receives payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving Third Party relating to one or more of the same milestone subject to this events set forth in the tables in Section 3.5(ii)3.4, then the amount of the Company’s payment made to Penn Licensor under such Section 3.2 shall be deducted from 3.4 with respect to such sublicensee’s payment for purposes of this Section 3.5(ii) and milestone event shall not be subject deemed sublicense fees under this Section 3.6; instead, the amounts due under this Section 3.6 shall be calculated by applying the applicable sublicense fee rate set forth in Section 3.6.1 above to the sublicense fees received by Licensee or its Affiliates from such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) shareThird Party after deducting the amount of the payment under Section 3.4.
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Sublicense Fees. In partial part consideration of the License license rights granted by Marina Bio under this Agreement and subject the right to Sections 3.7 and 3.8sublicense such licenses, Company will MirnaRx shall pay to Penn:
Marina Bio an amount (i“Sublicense Fees”) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) equal to a percentage of sublicensing royalties actually any Sublicensing Revenue received by Company and MirnaRx (or its Affiliates in consideration Affiliate) from any Sublicensee based on the grant to such Sublicensee of sublicenses sublicense rights under MirnaRx’s license rights under the Licensed Patents. Such percentage shall be determined based on the development stage of the License for applicable Licensed Products Sold Product (that is covered by sublicensees for use in the Field of Use while covered in sublicense) at the country of Sale of expected use time that the particular sublicense agreement is executed by the parties thereto, as follows: [***] [***] % [***] [***] % [***] [***] % [***] [***] % [***] [***] % If, as to a particular Licensed Product being developed by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, provided thatSublicensee, such amounts payable to Penn Sublicensee first achieves, with respect to such sublicensing royalties for Licensed Product, one of the Milestone Events in the milestone table in Section 5.3(a) above, then in no event will the cumulative amount (the “Cumulative Sublicense Fees”, as of the applicable date) of Sublicense Fees paid to Marina Bio by MirnaRx under this Section 5.6, by the date [***] after the date that such Sales of Milestone Event is achieved, with respect to Sublicense Revenues received by MirnaRx from such Licensed Products shall not Sublicensee, be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent the cumulative amount ([CONFIDENTIAL TREATMENT REQUESTED] /*/%the “Milestone Payment Sum”, as of the applicable date) of Net Sales the Milestone Payments that would have been due under Section 5.3(a) by such date, for all Milestone Events achieved by such Sublicensee (as of such date), had MirnaRx achieved such Milestone Events. If, as to a Sublicensee that first achieves a particular Milestone Event for the applicable Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 Product sublicensed to such sublicensees’ Net SalesSublicensee, the Cumulative Sublicense Fees paid by MirnaRx to Marina Bio based on Sublicense Revenues received from such Sublicensee, by the date that is [***] after the date when such Milestone Event is achieved, is less than the Milestone Payment Sum effective as of such date, then MirnaRx will by such date also pay to Marina Bio the amount of such difference (such amount, the “True-Up Payment” as to the applicable Milestone Event achieved by such Sublicensee); and
. An example of the calculation of such amounts and the determination of such difference (iiif any) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent is given in Appendix B of this Agreement. For clarity, any such True-Up Payment shall be deemed a Sublicensee Fee payment for all purposes of this Agreement. Further, if in the sublicense agreement between MirnaRx and a particular Sublicensee, the definition of “Major Markets” ([CONFIDENTIAL TREATMENT REQUESTED] /*/%or equivalent definition) is different from the definition in Section 1.27 of this Agreement, then the definition in such sublicense agreement will be used with respect to the achievement of the Milestone Event in subclause (i)(4) of all other sublicensing fees and payments and other consideration actually received by Company the milestone table in consideration of sublicenses under the License granted by Company or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (iSection 5.3(a) above, (2) equity investments to for the extent not in excess purpose of fair market value made determining whether any “True-Up Payment” is owed by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for MirnaRx based on the Sublicensee achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount Regulatory Approval of the Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) shareapplicable Licensed Product in a Major Market.
Appears in 1 contract
Sublicense Fees. In partial consideration of the License and subject respect to Sections 3.7 and 3.8, Company will pay to Penn:sublicenses granted by Licensee under Article 6,
(i) Licensee shall pay University, within thirty (30) days of receipt by Licensee, [CONFIDENTIAL TREATMENT REQUESTED***] /*/ percent of any Sublicensing Revenue.
(ii) Licensee shall pay to University an amount equal to [CONFIDENTIAL TREATMENT REQUESTED***] /*/%) of sublicensing royalties actually received by Company and its Affiliates in consideration of sublicenses of the License for Licensed Products Sold by sublicensees for use in the Field of Use while covered in the country of Sale of expected use by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, Sublicensing Royalty Revenue provided that, such amounts payable to Penn notwithstanding the foregoing, the total payment due University under this Section 3.6(ii) with respect to Sublicensing Royalty Revenue received from a Sublicensee during any particular time period shall not, in any event, exceed an amount equal to the royalties that would have been due to University with respect to the Licensed Products sold by such sublicensing royalties for Sublicensee generating such Sales Sublicensing Royalty Revenue had Licensee itself sold such Licensed Products, based on such Sublicensee’s net sales of such Licensed Products (determined in a manner substantially similar to the manner in which Net Sales are determined under this Agreement for Licensee’s sales of Licensed Products) and calculated in a manner consistent with Sections 3.4, 3.7, 3.8, and 3.9. Any such payments shall be made concurrently with the submission of Royalty Reports as set forth in Section 4.2. Licensee shall not sell or transfer to a third party Licensee’s interest in all or a portion of any future Sublicensing Revenue and/or Sublicensing Royalty Revenue under such sublicense agreement(s) in exchange for a single cash payment or series of cash payments (the “Exchange Consideration”) without the prior written approval of University, such approval not to be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of Net Sales of unreasonably withheld. In the event that University approves such Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 to such sublicensees’ Net Sales); and
(ii) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) of all other sublicensing fees and payments and other consideration actually received by Company in consideration of sublicenses under the License granted by Company sale or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (i) abovetransfer, (2a) equity investments the portion of any Exchange Consideration reasonably allocated by Licensee to the extent not value of its interest in excess of fair market value made by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for such future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount of the Company’s payment to Penn under Section 3.2 Sublicensing Revenue shall be deducted from such sublicensee’s payment treated as Sublicensing Revenue for purposes of this Section 3.5(ii3.6 and (b) and the portion of any such Exchange Consideration reasonably allocated by Licensee to the value of its interest in such future Sublicensing Royalty Revenue shall be treated as Sublicensing Royalty Revenue for purposes of this Section 3.6. For the avoidance of doubt, to the extent Exchange Consideration has been allocated to the value of Licensee’s interest in future Sublicensing Revenue or Sublicensing Royalty Revenue, any such Sublicensing Revenue or Sublicensing Royalty Revenue shall thereafter not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) shareincluded within the definitions of Sublicensing Revenue or Sublicensing Royalty Revenue originally established in Article 1.
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Sublicense Fees. In partial part consideration of the License license rights granted by Marina Bio under this Agreement and subject the right to Sections 3.7 and 3.8sublicense such licenses, Company will MirnaRx shall pay to Penn:
Marina Bio an amount (i“Sublicense Fees”) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) equal to a percentage of sublicensing royalties actually any Sublicensing Revenue received by Company and MirnaRx (or its Affiliates in consideration Affiliate) from any Sublicensee based on the grant to such Sublicensee of sublicenses sublicense rights under MirnaRx’s license rights under the Licensed Patents. Such percentage shall be determined based on the development stage of the License for applicable Licensed Products Sold Product (that is covered by sublicensees for use in the Field sublicense) at the time that the particular sublicense agreement is executed by the parties thereto, as follows: [***] Percentage of Use while covered in the country of Sale of expected use Sublicense Revenue [***] [***] % [***] [***] % [***] [***] % [***] [***] % [***] [***] % If, as to a particular Licensed Product being developed by a Valid Claim of the Penn Patent Rights that is licensed to Company under the License, provided thatSublicensee, such amounts payable to Penn Sublicensee first achieves, with respect to such sublicensing royalties for Licensed Product, one of the Milestone Events in the milestone table in Section 5.3(a) above, then in no event will the cumulative amount (the “Cumulative Sublicense Fees”, as of the applicable date) of Sublicense Fees paid to Marina Bio by MirnaRx under this Section 5.6, by the date [***] after the date that such Sales of Milestone Event is achieved, with respect to Sublicense Revenues received by MirnaRx from such Licensed Products shall not Sublicensee, be less than [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent the cumulative amount ([CONFIDENTIAL TREATMENT REQUESTED] /*/%the “Milestone Payment Sum”, as of the applicable date) of Net Sales the Milestone Payments that would have been due under Section 5.3(a) by such date, for all Milestone Events achieved by such Sublicensee (as of such date), had MirnaRx achieved such Milestone Events. If, as to a Sublicensee that first achieves a particular Milestone Event for the applicable Licensed Products made by sublicensees (as such Net Sales definition is applied to sublicensees, and applying Section 3.8 Product sublicensed to such sublicensees’ Net SalesSublicensee, the Cumulative Sublicense Fees paid by MirnaRx to Marina Bio based on Sublicense Revenues received from such Sublicensee, by the date that is [***] after the date when such Milestone Event is achieved, is less than the Milestone Payment Sum effective as of such date, then MirnaRx will by such date also pay to Marina Bio the amount of such difference (such amount, the “True-Up Payment” as to the applicable Milestone Event achieved by such Sublicensee); and
. An example of the calculation of such amounts and the determination of such difference (iiif any) [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent is given in Appendix B of this Agreement. For clarity, any such True-Up Payment shall be deemed a Sublicensee Fee payment for all purposes of this Agreement. Further, if in the sublicense agreement between MirnaRx and a particular Sublicensee, the definition of “Major Markets” ([CONFIDENTIAL TREATMENT REQUESTED] /*/%or equivalent definition) is different from the definition in Section 1.27 of this Agreement, then the definition in such sublicense agreement will be used with respect to the achievement of the Milestone Event in subclause (i)(4) of all other sublicensing fees and payments and other consideration actually received by Company the milestone table in consideration of sublicenses under the License granted by Company or its Affiliates, excluding for this clause (ii) (1) sublicensing royalties addressed by clause (iSection 5.3(a) above, (2) equity investments to for the extent not in excess purpose of fair market value made determining whether any “True-Up Payment” is owed by sublicensees in Company or its Affiliates, (3) payments by sublicensees to Company or Affiliates for payment or reimbursement of patent prosecution, defense, enforcement and maintenance and/or other related expenses, and (4) payments by sublicensees to Company or its Affiliates for future research, development or commercialization activities (including pre-clinical or clinical studies) undertaken by or for Company or its Affiliates (including payments for FTEs), and further provided that if Company pays to Penn a milestone payment under Section 3.2 for MirnaRx based on the Sublicensee achieving a milestone for which Company receives from a sublicensee a payment for achieving the same milestone subject to this Section 3.5(ii), then the amount Regulatory Approval of the Company’s payment to Penn under Section 3.2 shall be deducted from such sublicensee’s payment for purposes of this Section 3.5(ii) and shall not be subject to such [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/%) shareapplicable Licensed Product in a Major Market.
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Samples: License Agreement
