Sublicense Payments. Within thirty (30) days of receipt by COMPANY, COMPANY shall pay LICENSOR the percentage as specified in APPENDIX E on any non -royalty based fees or payments paid to COMPANY by any Sublicensee (“Sublicense Percentage”) as consideration for any sublicenses grant under this Agreement, including but not limited to any initial licensing fees, milestone fees, maintenance fees, but specifically excluding (a) royalties on the sale or distribution of Licensed Product, (b) consideration received for purchase of equity in COMPANY up to the fair market value of such equity (the Sublicense Percentage being due solely on “premium equity payments”, as defined below) (c) payments for research and development services regarding Licensed Product and (d) reimbursement of patent prosecution costs regarding the Licensed Patents. For purposes of this Agreement, premium equity payments shall mean the positive difference, if any, between the per share amount paid for equity in COMPANY by a Sublicensee and the per share fair market value of said equity, multiplied by the number of shares purchased by such Sublicense. The per share fair market value of COMPANY’ s equity shall be the per share amount paid by an investor to COMPANY in the most recent round of financing within the twelve (12) month period immediately preceding an equity purchase by a Sublicensee. If no round of financing occurred in the immediately preceding twelve (12) month period, the per share fair market value of COMPANY’s equity shall be agreed upon by the parties. In the event that COMPANY and LICENSOR cannot agree on a per share price within thirty (30) days of COMPANY’ s receipt of such premium equity payments, said price shall be determined by a mutually agreeable qualified appraiser. In the event COMPANY owes LICENSOR a portion of such premium equity payment, COMPANY shall have the option of remitting payment to LICENSOR in the form of equity in COMPANY, with the per share market value of such equity determined as set forth in this Section 3.3. In the event that a portion or all of the premium equity payments are required to be reimbursed to Sublicensee under the terms of the sublicense agreement, then LICENSOR’s pro rata share of such reimbursable premium equity payment shall be credited against any running royalties earned in the particular calendar year to which the reimbursable premium equity payment relate.
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Sublicense Payments. Within thirty Any and all revenues, equity interests and other consideration paid to Licensee in consideration of the grant to a third party of a sublicense to the Licensed Patent Rights and/or Licensed Biological Materials to any Sublicensee that is not an Affiliate of Licensee (30collectively “Sublicense Revenues”) shall be reported and paid to TSRI by Licensee on a quarterly basis within sixty (60) days of receipt the end of the applicable quarter in which such Sublicense Revenues are received by COMPANYLicensee. Notwithstanding the foregoing, COMPANY shall pay LICENSOR the percentage as specified in APPENDIX E on any non -royalty all royalties based fees upon transfers or payments paid to COMPANY by any Sublicensee (“Sublicense Percentage”) as consideration for any sublicenses grant under this Agreement, including but not limited to any initial licensing fees, milestone fees, maintenance fees, but specifically excluding (a) royalties on the sale or distribution sales of Licensed ProductProducts or Licensed Processes, (b) consideration received payments for purchase of equity in COMPANY up to the fair market value of such equity (the Sublicense Percentage being due solely on “premium equity payments”, as defined below) (c) payments or reimbursement for costs for research and development services regarding Licensed Product (to the extent itemized in the sublicense agreement), payments for or reimbursements for costs for patent prosecution, defense, enforcement and (d) reimbursement of patent prosecution costs regarding the Licensed Patents. For purposes of this Agreementmaintenance, premium equity and payments shall mean the positive difference, if any, between the per share amount paid for equity and debt securities, so long as said payments reflect the current fair market value, and not a premium thereon, shall be excluded from Sublicense Revenues. Any non-cash Sublicense Revenues received by Licensee from a Sublicensee or other third party shall be valued at its fair market value as of the date of receipt, as determined in COMPANY good faith by Licensee. Licensee shall pay to TSRI a non-creditable, nonrefundable percentage of these Sublicense Revenues according to the following schedule (“Sublicense Payments”): Up to $[***] [***] $[***] [***] More than $[***] [***] Any milestone payment that Licensee makes to TSRI under Section 4.4 below upon achievement of a given milestone event by a Sublicensee would be credited against any payment due under this Section 4.1 only with respect to Sublicense Revenues received in connection with achievement of the same milestone event. To the extent that patent rights, other intellectual property rights or other rights or obligations other than Licensed Patent Rights are sublicensed or granted by Licensee, including, without limitation, pursuant to Other License Agreements, that portion of the consideration received by Licensee and the per share fair market value of said equity, multiplied by the number of shares purchased by such Sublicense. The per share fair market value of COMPANY’ s equity subject to this Section 4.1 shall be equitably apportioned between the per share amount paid by an investor to COMPANY Licensed Patent Rights and those other rights and obligations, and such apportionment shall be reasonable and in accordance with customary standards in the most recent round of financing within the twelve (12) month period immediately preceding an equity purchase by industry. Licensee shall promptly deliver to TSRI a Sublicensee. If no round of financing occurred in the immediately preceding twelve (12) month period, the per share fair market value of COMPANY’s equity shall be agreed upon by the partieswritten report setting forth such apportionment. In the event that COMPANY TSRI disagrees with the determination made by Licensee, TSRI shall so notify Licensee within [***] of receipt of Licensee’s report and LICENSOR cannot the parties shall meet to discuss and resolve such disagreement in good faith. If the parties are unable to agree on a per share price in good faith as to such fair market values within thirty (30) days of COMPANY’ s receipt of such premium equity paymentsdays, said price then the matter shall be determined by a mutually agreeable qualified appraiser. In the event COMPANY owes LICENSOR a portion of such premium equity payment, COMPANY shall have the option of remitting payment to LICENSOR submitted in the form of equity in COMPANY, accordance with the per share market value of such equity determined as dispute resolution process set forth in this Section 3.314.9. In Notwithstanding the event that a portion or all of the premium equity payments are required foregoing, with respect to be reimbursed to Sublicensee under the terms of the any sublicense agreement, then LICENSOR’s pro rata share the parties agree that the percentage of “Sublicense Revenues” attributable to such reimbursable premium equity payment shall be credited against any running royalties earned in sublicense agreement is not cumulative across Other License Agreements, regardless of the particular calendar year number of Other License Agreements that are applicable to which the reimbursable premium equity payment relatesuch sublicense agreement, and regardless of whether sublicenses are granted under more than one Other License Agreement.
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Sublicense Payments. Within thirty Any and all revenues, equity interests and other consideration paid to Licensee in consideration of the grant to a third party of a sublicense to the Licensed Patent Rights and/or Licensed Biological Materials to any Sublicensee that is not an Affiliate of Licensee (30collectively “Sublicense Revenues”) shall be reported and paid to TSRI by Licensee on a quarterly basis within sixty (60) days of receipt the end of the applicable quarter in which such Sublicense Revenues are received by COMPANYLicensee. Notwithstanding the foregoing, COMPANY shall pay LICENSOR the percentage as specified in APPENDIX E on any non -royalty all royalties based fees upon transfers or payments paid to COMPANY by any Sublicensee (“Sublicense Percentage”) as consideration for any sublicenses grant under this Agreement, including but not limited to any initial licensing fees, milestone fees, maintenance fees, but specifically excluding (a) royalties on the sale or distribution sales of Licensed ProductProducts or Licensed Processes, (b) consideration received payments for purchase of equity in COMPANY up to the fair market value of such equity (the Sublicense Percentage being due solely on “premium equity payments”, as defined below) (c) payments or reimbursement for costs for research and development services regarding Licensed Product (to the extent itemized in the sublicense agreement), payments for or reimbursements for costs for patent prosecution, defense, enforcement and (d) reimbursement of patent prosecution costs regarding the Licensed Patents. For purposes of this Agreementmaintenance, premium equity and payments shall mean the positive difference, if any, between the per share amount paid for equity and debt securities, so long as said * Confidential Information, indicated by [***], has been omitted from this filing and filed separately with the Securities and Exchange Commission payments reflect the current fair market value, and not a premium thereon, shall be excluded from Sublicense Revenues. Any non-cash Sublicense Revenues received by Licensee from a Sublicensee or other third party shall be valued at its fair market value as of the date of receipt, as determined in COMPANY good faith by Licensee. Licensee shall pay to TSRI a non-creditable, nonrefundable percentage of these Sublicense Revenues according to the following schedule (“Sublicense Payments”): Up to $[***] [***] $[***] [***] More than $[***] [***] Any milestone payment that Licensee makes to TSRI under Section 4.4 below upon achievement of a given milestone event by a Sublicensee would be credited against any payment due under this Section 4.1 only with respect to Sublicense Revenues received in connection with achievement of the same milestone event. To the extent that patent rights, other intellectual property rights or other rights or obligations other than Licensed Patent Rights are sublicensed or granted by Licensee, including, without limitation, pursuant to Other License Agreements, that portion of the consideration received by Licensee and the per share fair market value of said equity, multiplied by the number of shares purchased by such Sublicense. The per share fair market value of COMPANY’ s equity subject to this Section 4.1 shall be equitably apportioned between the per share amount paid by an investor to COMPANY Licensed Patent Rights and those other rights and obligations, and such apportionment shall be reasonable and in accordance with customary standards in the most recent round of financing within the twelve (12) month period immediately preceding an equity purchase by industry. Licensee shall promptly deliver to TSRI a Sublicensee. If no round of financing occurred in the immediately preceding twelve (12) month period, the per share fair market value of COMPANY’s equity shall be agreed upon by the partieswritten report setting forth such apportionment. In the event that COMPANY TSRI disagrees with the determination made by Licensee, TSRI shall so notify Licensee within [***] of receipt of Licensee’s report and LICENSOR cannot the parties shall meet to discuss and resolve such disagreement in good faith. If the parties are unable to agree on a per share price in good faith as to such fair market values within thirty (30) days of COMPANY’ s receipt of such premium equity paymentsdays, said price then the matter shall be determined by a mutually agreeable qualified appraiser. In the event COMPANY owes LICENSOR a portion of such premium equity payment, COMPANY shall have the option of remitting payment to LICENSOR submitted in the form of equity in COMPANY, accordance with the per share market value of such equity determined as dispute resolution process set forth in this Section 3.314.9. In Notwithstanding the event that a portion or all of the premium equity payments are required foregoing, with respect to be reimbursed to Sublicensee under the terms of the any sublicense agreement, then LICENSOR’s pro rata share the parties agree that the percentage of “Sublicense Revenues” attributable to such reimbursable premium equity payment shall be credited against any running royalties earned in sublicense agreement is not cumulative across Other License Agreements, regardless of the particular calendar year number of Other License Agreements that are applicable to which the reimbursable premium equity payment relatesuch sublicense agreement, and regardless of whether sublicenses are granted under more than one Other License Agreement.
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Sublicense Payments. Within thirty Any and all revenues, equity interests and other consideration paid to Licensee in consideration of the grant to a third party of a sublicense to the Licensed Patent Rights and/or Licensed Biological Materials to any Sublicensee that is not an Affiliate of Licensee (30collectively “Sublicense Revenues”) shall be reported and paid to TSRI by Licensee on a quarterly basis within sixty (60) days of receipt the end of the applicable quarter in which such Sublicense Revenues are received by COMPANYLicensee. Notwithstanding the foregoing, COMPANY shall pay LICENSOR the percentage as specified in APPENDIX E on any non -royalty all royalties based fees upon transfers or payments paid to COMPANY by any Sublicensee (“Sublicense Percentage”) as consideration for any sublicenses grant under this Agreement, including but not limited to any initial licensing fees, milestone fees, maintenance fees, but specifically excluding (a) royalties on the sale or distribution sales of Licensed ProductProducts or Licensed Processes, (b) consideration received payments for purchase of equity in COMPANY up to the fair market value of such equity (the Sublicense Percentage being due solely on “premium equity payments”, as defined below) (c) payments or reimbursement for costs for research and development services regarding Licensed Product (to the extent itemized in the sublicense agreement), payments for or reimbursements for costs for patent prosecution, defense, enforcement and (d) reimbursement of patent prosecution costs regarding the Licensed Patents. For purposes of this Agreementmaintenance, premium equity and payments shall mean the positive difference, if any, between the per share amount paid for equity and debt securities, so long as said payments reflect the current fair market value, and not a premium thereon, shall be excluded from Sublicense Revenues. Any non-cash Sublicense Revenues received by Licensee from a Sublicensee or other third party shall be valued at its fair market value as of the date of receipt, as determined in COMPANY good faith by Licensee. Licensee shall pay to TSRI a non-creditable, non-refundable percentage of these Sublicense Revenues according to the following schedule (“Sublicense Payments”): Up to $[***] [***] * Confidential Information, indicated by [***], has been omitted from this filing and filed separately with the Securities and Exchange Commission $[***] [***] More than $[***] [***] Any milestone payment that Licensee makes to TSRI under Section 4.4 below upon achievement of a given milestone event by a Sublicensee would be credited against any payment due under this Section 4.1 only with respect to Sublicense Revenues received in connection with achievement of the same milestone event. To the extent that patent rights, other intellectual property rights or other rights or obligations other than Licensed Patent Rights are sublicensed or granted by Licensee, including, without limitation, pursuant to Other License Agreements, that portion of the consideration received by Licensee and the per share fair market value of said equity, multiplied by the number of shares purchased by such Sublicense. The per share fair market value of COMPANY’ s equity subject to this Section 4.1 shall be equitably apportioned between the per share amount paid by an investor to COMPANY Licensed Patent Rights and those other rights and obligations, and such apportionment shall be reasonable and in accordance with customary standards in the most recent round of financing within the twelve (12) month period immediately preceding an equity purchase by industry. Licensee shall promptly deliver to TSRI a Sublicensee. If no round of financing occurred in the immediately preceding twelve (12) month period, the per share fair market value of COMPANY’s equity shall be agreed upon by the partieswritten report setting forth such apportionment. In the event that COMPANY TSRI disagrees with the determination made by Licensee, TSRI shall so notify Licensee within [***] days of receipt of Licensee’s report and LICENSOR cannot the parties shall meet to discuss and resolve such disagreement in good faith. If the parties are unable to agree on a per share price in good faith as to such fair market values within thirty (30) days of COMPANY’ s receipt of such premium equity paymentsdays, said price then the matter shall be determined by a mutually agreeable qualified appraiser. In the event COMPANY owes LICENSOR a portion of such premium equity payment, COMPANY shall have the option of remitting payment to LICENSOR submitted in the form of equity in COMPANY, accordance with the per share market value of such equity determined as dispute resolution process set forth in this Section 3.314.9. In Notwithstanding the event that a portion or all of the premium equity payments are required foregoing, with respect to be reimbursed to Sublicensee under the terms of the any sublicense agreement, then LICENSOR’s pro rata share the parties agree that the percentage of “Sublicense Revenues” attributable to such reimbursable premium equity payment shall be credited against any running royalties earned in sublicense agreement is not cumulative across Other License Agreements, regardless of the particular calendar year number of Other License Agreements that are applicable to which the reimbursable premium equity payment relatesuch sublicense agreement, and regardless of whether sublicenses are granted under more than one Other License Agreement.
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Sublicense Payments. Within thirty Any and all revenues, equity interests and other consideration paid to Licensee in consideration of the grant to a third party of a sublicense to the Licensed Patent Rights and/or Licensed Biological Materials to any Sublicensee that is not an Affiliate of Licensee (30collectively “Sublicense Revenues”) shall be reported and paid to TSRI by Licensee on a quarterly basis within sixty (60) days of receipt the end of the applicable quarter in which such Sublicense Revenues are received by COMPANYLicensee. Notwithstanding the foregoing, COMPANY shall pay LICENSOR the percentage as specified in APPENDIX E on any non -royalty all royalties based fees upon transfers or payments paid to COMPANY by any Sublicensee (“Sublicense Percentage”) as consideration for any sublicenses grant under this Agreement, including but not limited to any initial licensing fees, milestone fees, maintenance fees, but specifically excluding (a) royalties on the sale or distribution sales of Licensed ProductProducts or Licensed Processes, (b) consideration received payments for purchase of equity in COMPANY up to the fair market value of such equity (the Sublicense Percentage being due solely on “premium equity payments”, as defined below) (c) payments or reimbursement for costs for research and development services regarding Licensed Product (to the extent itemized in the sublicense agreement), payments for or reimbursements for costs for patent prosecution, defense, enforcement and (d) reimbursement of patent prosecution costs regarding the Licensed Patents. For purposes of this Agreementmaintenance, premium equity and payments shall mean the positive difference, if any, between the per share amount paid for equity and debt securities, so long as said payments reflect the current fair market value, and not a premium thereon, shall be excluded from Sublicense Revenues. Any non-cash Sublicense Revenues received by Licensee from a Sublicensee or other third party shall be valued at its fair market value as of the date of receipt, as determined in COMPANY good faith by Licensee. Licensee shall pay to TSRI a non-creditable, non-refundable percentage of these Sublicense Revenues according to the following schedule (“Sublicense Payments”): Up to $[***] [***] $[***] [***] More than $[***] [***] Any milestone payment that Licensee makes to TSRI under Section 4.4 below upon achievement of a given milestone event by a Sublicensee would be credited against any payment due under this Section 4.1 only with respect to Sublicense Revenues received in connection with achievement of the same milestone event. To the extent that patent rights, other intellectual property rights or other rights or obligations other than Licensed Patent Rights are sublicensed or granted by Licensee, including, without limitation, pursuant to Other License Agreements, that portion of the consideration received by Licensee and the per share fair market value of said equity, multiplied by the number of shares purchased by such Sublicense. The per share fair market value of COMPANY’ s equity subject to this Section 4.1 shall be equitably apportioned between the per share amount paid by an investor to COMPANY Licensed Patent Rights and those other rights and obligations, and such apportionment shall be reasonable and in accordance with customary standards in the most recent round of financing within the twelve (12) month period immediately preceding an equity purchase by industry. Licensee shall promptly deliver to TSRI a Sublicensee. If no round of financing occurred in the immediately preceding twelve (12) month period, the per share fair market value of COMPANY’s equity shall be agreed upon by the partieswritten report setting forth such apportionment. In the event that COMPANY TSRI disagrees with the determination made by Licensee, TSRI shall so notify Licensee within [***] days of receipt of Licensee’s report and LICENSOR cannot the parties shall meet to discuss and resolve such disagreement in good faith. If the parties are unable to agree on a per share price in good faith as to such fair market values within thirty (30) days of COMPANY’ s receipt of such premium equity paymentsdays, said price then the matter shall be determined by a mutually agreeable qualified appraiser. In the event COMPANY owes LICENSOR a portion of such premium equity payment, COMPANY shall have the option of remitting payment to LICENSOR submitted in the form of equity in COMPANY, accordance with the per share market value of such equity determined as dispute resolution process set forth in this Section 3.314.9. In Notwithstanding the event that a portion or all of the premium equity payments are required foregoing, with respect to be reimbursed to Sublicensee under the terms of the any sublicense agreement, then LICENSOR’s pro rata share the parties agree that the percentage of “Sublicense Revenues” attributable to such reimbursable premium equity payment shall be credited against any running royalties earned in sublicense agreement is not cumulative across Other License Agreements, regardless of the particular calendar year number of Other License Agreements that are applicable to which the reimbursable premium equity payment relatesuch sublicense agreement, and regardless of whether sublicenses are granted under more than one Other License Agreement.
Appears in 1 contract
Sublicense Payments. Within Any and all revenues, equity interests and other consideration paid to Licensee in consideration of the grant to a third party of a sublicense to the Licensed Patent Rights and/or Licensed Biological Materials to any Sublicensee that is not an Affiliate of Licensee (collectively “Sublicense Revenues”) shall be reported and paid to TSRI by Licensee on a quarterly basis within sixty (60) days of the end of the applicable quarter in which such Sublicense Revenues are received by Licensee. Notwithstanding the foregoing, all royalties based upon transfers or sales of Licensed Products or Licensed Processes, payments for or reimbursement for costs for research and development (to the extent itemized in the sublicense agreement), payments for or reimbursements for costs for patent prosecution, defense, enforcement and maintenance, and payments for equity and debt securities, so long as said payments reflect the current fair market value, and not a premium thereon, shall be excluded from Sublicense Revenues. Any non-cash Sublicense Revenues received by Licensee from a Sublicensee or other third party shall be valued at its fair market value as of the date of receipt, as determined in good faith by Licensee. Licensee shall pay to TSRI a non-creditable, non-refundable percentage of these Sublicense Revenues according to the following schedule (“Sublicense Payments”): Up to $[***] [***] $[***] [***] More than $[***] [***] Any milestone payment that Licensee makes to TSRI under Section 4.4 below upon achievement of a given milestone event by a Sublicensee would be credited against any payment due under this Section 4.1 only with respect to Sublicense Revenues received in connection with achievement of the same milestone event. * Confidential Information, indicated by [***], has been omitted from this filing and filed separately with the Securities and Exchange Commission To the extent that patent rights, other intellectual property rights or other rights or obligations other than Licensed Patent Rights are sublicensed or granted by Licensee, including, without limitation, pursuant to Other License Agreements, that: portion of the consideration received by Licensee and subject to this Section 4.1 shall be equitably apportioned between the Licensed Patent Rights and those other rights and obligations, and such apportionment shall be reasonable and in accordance with customary standards in the industry. Licensee shall promptly deliver to TSRI a written report setting forth such apportionment. In the event TSRI disagrees with the determination made by Licensee, TSRI shall so notify Licensee within thirty (30) days of receipt by COMPANYof Licensee’s report and the parties shall meet to discuss and resolve such disagreement in good faith. If the parties are unable to agree in good faith as to such fair market values within [***] days, COMPANY then the matter shall pay LICENSOR be submitted in accordance with the dispute resolution process set forth in Section 14.9. Notwithstanding the foregoing, with respect to any sublicense agreement, the parties agree that the percentage as specified in APPENDIX E on any non -royalty based fees or payments paid to COMPANY by any Sublicensee (of “Sublicense Percentage”) as consideration for any sublicenses grant under this AgreementRevenues” attributable to such sublicense agreement is not cumulative across Other License Agreements, including but not limited to any initial licensing fees, milestone fees, maintenance fees, but specifically excluding (a) royalties on the sale or distribution regardless of Licensed Product, (b) consideration received for purchase of equity in COMPANY up to the fair market value of such equity (the Sublicense Percentage being due solely on “premium equity payments”, as defined below) (c) payments for research and development services regarding Licensed Product and (d) reimbursement of patent prosecution costs regarding the Licensed Patents. For purposes of this Agreement, premium equity payments shall mean the positive difference, if any, between the per share amount paid for equity in COMPANY by a Sublicensee and the per share fair market value of said equity, multiplied by the number of shares purchased by Other License Agreements that are applicable to such Sublicense. The per share fair market value of COMPANY’ s equity shall be the per share amount paid by an investor to COMPANY in the most recent round of financing within the twelve (12) month period immediately preceding an equity purchase by a Sublicensee. If no round of financing occurred in the immediately preceding twelve (12) month period, the per share fair market value of COMPANY’s equity shall be agreed upon by the parties. In the event that COMPANY and LICENSOR cannot agree on a per share price within thirty (30) days of COMPANY’ s receipt of such premium equity payments, said price shall be determined by a mutually agreeable qualified appraiser. In the event COMPANY owes LICENSOR a portion of such premium equity payment, COMPANY shall have the option of remitting payment to LICENSOR in the form of equity in COMPANY, with the per share market value of such equity determined as set forth in this Section 3.3. In the event that a portion or all of the premium equity payments are required to be reimbursed to Sublicensee under the terms of the sublicense agreement, then LICENSOR’s pro rata share and regardless of such reimbursable premium equity payment shall be credited against any running royalties earned in the particular calendar year to which the reimbursable premium equity payment relatewhether sublicenses are granted under more than one Other License Agreement.
Appears in 1 contract
Sublicense Payments. Within Any and all revenues, equity interests and other consideration paid to Licensee in consideration of the grant to a third party of a sublicense to the Licensed Patent Rights and/or Licensed Biological Materials to any Sublicensee that is not an Affiliate of Licensee (collectively “Sublicense Revenues”) shall be reported and paid to TSRI by Licensee on a quarterly basis within sixty (60) days of the end of the applicable quarter in which such Sublicense Revenues are received by Licensee. Notwithstanding the foregoing, all royalties based upon transfers or sales of Licensed Products or Licensed Processes, payments for or reimbursement for costs for research and development (to the extent itemized in the sublicense agreement), payments for or reimbursements for costs for patent prosecution, defense, enforcement and maintenance, and payments for equity and debt securities, so long as said payments reflect the current fair market value, and not a premium thereon, shall be excluded from Sublicense Revenues. Any non-cash Sublicense Revenues received by Licensee from a Sublicensee or other third party shall be valued at its fair market value as of the date of receipt, as determined in good faith by Licensee. Licensee shall pay to TSRI a non-creditable, non-refundable percentage of these Sublicense Revenues according to the following schedule (“Sublicense Payments”): Up to $[***] [***] $[***] [***] More than $[***] [***] Any milestone payment that Licensee makes to TSRI under Section 4.4 below upon achievement of a given milestone event by a Sublicensee would be credited against any payment due under this Section 4.1 only with respect to Sublicense Revenues received in connection with achievement of the same milestone event. To the extent that patent rights, other intellectual property rights or other rights or obligations other than Licensed Patent Rights are sublicensed or granted by Licensee, including, without limitation, pursuant to Other License Agreements, that: portion of the consideration received by Licensee and subject to this Section 4.1 shall be equitably apportioned between the Licensed Patent Rights and those other rights and obligations, and such apportionment shall be reasonable and in accordance with customary standards in the industry. Licensee shall promptly deliver to TSRI a written report setting forth such apportionment. In the event TSRI disagrees with the determination made by Licensee, TSRI shall so notify Licensee within thirty (30) days of receipt by COMPANYof Licensee’s report and the parties shall meet to discuss and resolve such disagreement in good faith. If the parties are unable to agree in good faith as to such fair market values within [***] days, COMPANY then the matter shall pay LICENSOR be submitted in accordance with the dispute resolution process set forth in Section 14.9. Notwithstanding the foregoing, with respect to any sublicense agreement, the parties agree that the percentage as specified in APPENDIX E on any non -royalty based fees or payments paid to COMPANY by any Sublicensee (of “Sublicense Percentage”) as consideration for any sublicenses grant under this AgreementRevenues” attributable to such sublicense agreement is not cumulative across Other License Agreements, including but not limited to any initial licensing fees, milestone fees, maintenance fees, but specifically excluding (a) royalties on the sale or distribution regardless of Licensed Product, (b) consideration received for purchase of equity in COMPANY up to the fair market value of such equity (the Sublicense Percentage being due solely on “premium equity payments”, as defined below) (c) payments for research and development services regarding Licensed Product and (d) reimbursement of patent prosecution costs regarding the Licensed Patents. For purposes of this Agreement, premium equity payments shall mean the positive difference, if any, between the per share amount paid for equity in COMPANY by a Sublicensee and the per share fair market value of said equity, multiplied by the number of shares purchased by Other License Agreements that are applicable to such Sublicense. The per share fair market value of COMPANY’ s equity shall be the per share amount paid by an investor to COMPANY in the most recent round of financing within the twelve (12) month period immediately preceding an equity purchase by a Sublicensee. If no round of financing occurred in the immediately preceding twelve (12) month period, the per share fair market value of COMPANY’s equity shall be agreed upon by the parties. In the event that COMPANY and LICENSOR cannot agree on a per share price within thirty (30) days of COMPANY’ s receipt of such premium equity payments, said price shall be determined by a mutually agreeable qualified appraiser. In the event COMPANY owes LICENSOR a portion of such premium equity payment, COMPANY shall have the option of remitting payment to LICENSOR in the form of equity in COMPANY, with the per share market value of such equity determined as set forth in this Section 3.3. In the event that a portion or all of the premium equity payments are required to be reimbursed to Sublicensee under the terms of the sublicense agreement, then LICENSOR’s pro rata share and regardless of such reimbursable premium equity payment shall be credited against any running royalties earned in the particular calendar year to which the reimbursable premium equity payment relatewhether sublicenses are granted under more than one Other License Agreement.
Appears in 1 contract
