Common use of Third Party Royalty Offset Clause in Contracts

Third Party Royalty Offset. (a) If after the License Grant Date, Servier, its Affiliates or its Sublicensee or designee (i) is required, as agreed by the Parties in good faith, ***, to obtain a license from any Third Party under an Identified Patent controlled by such Third Party in order to Manufacture, Develop, Commercialize or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, and pursuant to such license ***, or (ii) is required by any court of competent jurisdiction, due to infringement of an Identified Patent controlled by such Third Party in any country(ies) in the Servier Territory, ***, then Servier may deduct from the milestones (other than the milestone set forth in Section 9.3.1) and/or royalties that would otherwise be due to MacroGenics on Net Sales resulting from the sales of such Licensed Product in such country in a Calendar Quarter *** of the amount paid by Servier to such Third Party with respect to such Licensed Product for such country during such Calendar Quarter; ***. (b) If, (i) in order to Manufacture, Develop, Commercialize or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, Servier or its Affiliates or Sublicensees *** under a MacroGenics Third Party Agreement listed in Exhibit C as of the Effective Date ***, or (ii) after the License Grant Date, Servier or its sublicensee or designee: (A) is required, as agreed by the Parties in good faith, ***, to obtain a license from any Third Party under Patents (other than Identified Patents) controlled by such Third Party in order to make, have made, use, sell, offer for sale or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, and pursuant to such license ***, or (B) is required by any court of competent jurisdiction, due to infringement of patent rights (other than Identified Patents) controlled by such Third Party in any country(ies) in the Servier Territory, to pay such a royalty to such a Third Party based on sales of such Licensed Product in such country(ies), then Servier may deduct from the milestones and/or royalties that would otherwise be due to MacroGenics on Net Sales resulting from the sales of such Licensed Product in such country in a Calendar Quarter *** of the amount paid by Servier to such Third Party with respect to such Licensed Product for such country during such Calendar Quarter; ***.

Third Party Royalty Offset. (aSubject to Section 4.2.3(e) If after the License Grant Datehereof, Servierif, with respect to a Calendar Quarter, ImmunoGen or any of its Affiliates or its Sublicensee Sublicensees actually makes royalty payments to one or designee (i) is required, as agreed by the more Third Parties in good faithconsideration of a license, ***in the absence of which ImmunoGen could not practice the Licensed Intellectual Property to make, to obtain a license from any Third Party under an Identified Patent controlled by such Third Party in order to Manufactureoffer for sale, Develop, Commercialize sell or import a Program Antibody and/or a the Mask or Substrate portion of the Probody portion of any Licensed Product in included within the Licensed Intellectual Property (excluding any country in Licensed Intellectual Property jointly owned by CytomX or its Affiliates, on the Servier Territoryone hand, and pursuant to such license ***ImmunoGen or its Affiliates, on the other hand) without infringing an issued patent or (ii) is required by any court of competent jurisdiction, due to infringement of an Identified Patent controlled patents owned or exclusively licensed by such Third Party in any country(ies) in country (collectively, “Third Party Payments”), as evidenced, to the Servier Territoryextent requested by CytomX, ***by an opinion of Independent Patent Counsel selected by ImmunoGen and approved by CytomX (which approval shall not be unreasonably withheld), then Servier may deduct from ImmunoGen shall have the milestones (other than right to reduce the milestone set forth in Section 9.3.1) and/or royalties that would otherwise be due to MacroGenics on CytomX pursuant to Section 4.2.1, 4.2.3(c) or 4.2.3(d) hereof (but not the royalties otherwise due to CytomX pursuant to Section 4.2.3(b) hereof) with respect to Net Sales resulting from the sales in such country of such Licensed Product Products in such country in a Calendar Quarter *** by an amount equal to fifty percent (50%) of the amount paid by Servier to of such Third Party Payments. For purposes of clarity, the term “Third Party Payments” includes only prospective running royalties payable on the same basis as required by this Section 4.2, and does not include any lump-sum license fees, milestone payments, minimum royalties in excess of accrued royalties, any amounts paid for past infringement of any Third Party’s rights or any amount paid for rights not required to permit ImmunoGen to practice the Licensed Intellectual Property to make, use, offer for sale, sell or import the Xxxx or Substarte portion of the Probody portion of any Licensed Product included in the Licensed Intellectual Property in any country. For the avoidance of doubt, the Parties agree and acknowledge that this Section 4.2.3(a) shall not apply with respect to such Licensed Product for such country during such Calendar Quarter; ***. (b) If, (i) in order royalties payable by a Party to Manufacture, Develop, Commercialize or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, Servier or its Affiliates or Sublicensees *** under a MacroGenics Third Party Agreement listed under any agreement in Exhibit C existence as of the Effective Date ***, or (ii) after the License Grant Date, Servier or its sublicensee or designee: (A) is required, as agreed by the Parties in good faith, ***, to obtain a license from any Third Party under Patents (other than Identified Patents) controlled by such Third Party in order to make, have made, use, sell, offer for sale or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, and pursuant to such license ***, or (B) is required by any court of competent jurisdiction, due to infringement of patent rights (other than Identified Patents) controlled by such Third Party in any country(ies) in the Servier Territory, to pay such a royalty to such a Third Party based on sales of such Licensed Product in such country(ies), then Servier may deduct from the milestones and/or royalties that would otherwise be due to MacroGenics on Net Sales resulting from the sales of such Licensed Product in such country in a Calendar Quarter *** of the amount paid by Servier to such Third Party with respect to such Licensed Product for such country during such Calendar Quarter; ***.

Third Party Royalty Offset. (a) If after In the License Grant Dateevent that MBio believes, Servierin its reasonable and good faith belief, its Affiliates that in order for it to be able to manufacture and sell a Product hereunder in a commercially feasible manner it must utilize technology that is covered by a "Recombinant Expression Patent," and MBio does so utilize such technology and does enter in to a license agreement under such Recombinant Expression Patent with a non-Affiliate third party, and is obligated to pay a running royalty thereunder in accordance with the sale of such Product under such license, MBio may offset [*] of any running royalty payments made by MBio to such third party on sales of such Product in a particular county, against the royalty amounts due to ABX under this Section 3.3 on Net Sales of such Product in such county; provided, however, that the royalty amount payable to ABX under this Section 3.3 with respect to such Net Sales for such Product in such country shall not be reduced pursuant to this Section 3.3.3 to an amount below [*] of Net Sales of such Product. (b) For purposes of this Section 3.3.6, such "Recombinant Expression Patent" shall mean an issued, unexpired patent that is owned or controlled by a third party (other than ABX, a Sublicensee, or an Affiliate of either MBio or its Sublicensee Sublicensee) that has not been invalidated in a final unappealed or designee (i) is required, as agreed unappealable judgment by the Parties in good faith, ***, to obtain a license from any Third Party under an Identified Patent controlled by such Third Party in order to Manufacture, Develop, Commercialize or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, and pursuant to such license ***, or (ii) is required by any court of competent jurisdiction, due to infringement which patent covers the expression of an Identified Patent controlled Antibodies from recombinant cell lines in which a recombinant Antibody Cell that produces Product is generated through the cointroduction into a cell of Genetic Materials encoding heavy chain immunoglobulin genes and light chain immunoglobulin genes and which patent would be infringed by the sale of Products but for MBio's obtaining a royalty-bearing license under such Third Party in any country(ies) in the Servier Territory, ***, then Servier may deduct from the milestones patent (other than the milestone set forth in Section 9.3.1) and/or royalties that would otherwise be due pursuant to MacroGenics on Net Sales resulting from the sales of such Licensed Product in such country in a Calendar Quarter *** of the amount paid by Servier to such Third Party with respect to such Licensed Product for such country during such Calendar Quarter; ***. (b) If, (ithis Agreement) in order to Manufacture, Develop, Commercialize or import a Program Antibody and/or a Licensed Product in any country commercialize Products in the Servier Territory, Servier or its Affiliates or Sublicensees *** Field under a MacroGenics Third Party Agreement listed in Exhibit C as of the Effective Date ***, or (ii) after the License Grant Date, Servier or its sublicensee or designee: (A) is required, as agreed by the Parties in good faith, ***, to obtain a license from any Third Party under Patents (other than Identified Patents) controlled by such Third Party in order to make, have made, use, sell, offer for sale or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, and pursuant to such license ***, or (B) is required by any court of competent jurisdiction, due to infringement of patent rights (other than Identified Patents) controlled by such Third Party in any country(ies) in the Servier Territory, to pay such a royalty to such a Third Party based on sales of such Licensed Product in such country(ies), then Servier may deduct from the milestones and/or royalties that would otherwise be due to MacroGenics on Net Sales resulting from the sales of such Licensed Product in such country in a Calendar Quarter *** of the amount paid by Servier to such Third Party with respect to such Licensed Product for such country during such Calendar Quarter; ***this Agreement.

Third Party Royalty Offset. (a) If after the License Grant DateSubject to Section 11.3.4, Servierif, with respect to a Calendar Quarter, ImmunoGen or any of its Affiliates or its Sublicensee or designee (i) is required, as agreed by the Parties in good faith, ImmunoGen Licensees [***, ] to obtain a license from one or more Third Parties [***] any Third Party under an Identified Patent controlled by such Third Party in order rights to Manufacture, Develop, Commercialize or import a Program Antibody and/or a Licensed any intellectual property that are [***] the ImmunoGen Product in any country (collectively, “ImmunoGen Third Party Payments”), then ImmunoGen shall have the right to reduce the royalties otherwise due to Jazz pursuant to Section 11.3.1 with respect to Net Sales in such country of the Servier TerritoryImmunoGen Product in such Calendar Quarter by an amount equal to [***] of the amount of such ImmunoGen Third Party Payments; provided, and however, if ImmunoGen or any of its Affiliates or ImmunoGen Licensees obtains rights to any intellectual property subject to this Section 11.3.2 that is [***], then (i) with respect to any ImmunoGen Third Party Payment made pursuant to such license agreement that became due because of an event pertaining [***] to [***], or ImmunoGen may reduce the royalties pursuant to this Section 11.3.2 by [***] of such ImmunoGen Third Party Payment, (ii) is required by any court of competent jurisdiction, due to infringement of an Identified Patent controlled by such Third Party in any country(ies) in the Servier Territory, ***, then Servier may deduct from the milestones (other than the milestone set forth in Section 9.3.1) and/or royalties that would otherwise be due to MacroGenics on Net Sales resulting from the sales of such Licensed Product in such country in a Calendar Quarter *** of the amount paid by Servier to such Third Party with respect to such Licensed Product for such country during such Calendar Quarter; ***. (b) If, (i) in order to Manufacture, Develop, Commercialize or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, Servier or its Affiliates or Sublicensees *** under a MacroGenics ImmunoGen Third Party Agreement listed in Exhibit C as of the Effective Date ***, or (ii) after the License Grant Date, Servier or its sublicensee or designee: (A) is required, as agreed by the Parties in good faith, ***, to obtain a license from any Third Party under Patents (other than Identified Patents) controlled by such Third Party in order to make, have made, use, sell, offer for sale or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, and Payment made pursuant to such license agreement that became due because of an event [***, or (B) is required by any court of competent jurisdiction, due ] specifically to infringement of patent rights (other than Identified Patents) controlled by such Third Party in any country(ies) in the Servier Territory, to pay such a royalty to such a Third Party based on sales of such Licensed Product in such country(ies), then Servier may deduct from the milestones and/or royalties that would otherwise be due to MacroGenics on Net Sales resulting from the sales of such Licensed Product in such country in a Calendar Quarter [*** of the amount paid by Servier to such Third Party *], ImmunoGen shall [***], and (iii) with respect to any other ImmunoGen Third Party Payment made pursuant to such Licensed Product for license agreement, then the amount by which ImmunoGen may reduce the royalties pursuant to this Section 11.3.2 on account of such country during such Calendar Quarter; ImmunoGen Third Party Payment shall be [***] (e.g., if the intellectual property [***], then ImmunoGen may deduct [***] of such ImmunoGen Third Party Payment). For the avoidance of doubt, with respect to the ImmunoGen Product, this Section 11.3.2 shall not apply to any ImmunoGen Third Party Payments payable by ImmunoGen or any of its Affiliates or ImmunoGen Licensees under any license or other agreement, written or oral, between ImmunoGen or any of its Affiliates or ImmunoGen Licensees, on the one hand, and any Third Party, on the other hand, in existence as of the date such ImmunoGen Product became an ImmunoGen Product.

Third Party Royalty Offset. (aSubject to Section 4.2.3(e) If after the License Grant Datehereof, Servierif, with respect to a Calendar Quarter, CytomX or any of its Affiliates or its Sublicensee Sublicensees actually makes royalty payments to one or designee (i) is required, as agreed by the more Third Parties in good faithconsideration of a license, ***in the absence of which CytomX could not practice the Licensed Intellectual Property to make, to obtain a license from any Third Party under an Identified Patent controlled by such Third Party in order to Manufactureoffer for sale, Develop, Commercialize sell or import a Program Antibody and/or a the Cytotoxic Compound portion or Linker portion of any Licensed Product in included within the Licensed Intellectual Property (excluding any country in Licensed Intellectual Property jointly owned by ImmunoGen or its Affiliates, on the Servier Territoryone hand, and pursuant to such license ***CytomX or its Affiliates, on the other hand) without infringing an issued patent or (ii) is required by any court of competent jurisdiction, due to infringement of an Identified Patent controlled patents owned or exclusively licensed by such Third Party in any country(ies) in country (collectively, “Third Party Payments”), as evidenced, to the Servier Territoryextent requested by ImmunoGen, ***by an opinion of Independent Patent Counsel selected by CytomX and approved by ImmunoGen (which approval shall not be unreasonably withheld), then Servier may deduct from CytomX shall have the milestones (other than right to reduce the milestone set forth in Section 9.3.1) and/or royalties that would otherwise be due to MacroGenics on ImmunoGen pursuant to Section 4.2.1, 4.2.3(c) or 4.2.3(d) hereof (but not the royalties otherwise due to ImmunoGen pursuant to Section 4.2.3(b) hereof) with respect to Net Sales resulting from the sales in such country of such Licensed Product Products in such country in a Calendar Quarter *** by an amount equal to fifty percent (50%) of the amount paid by Servier to of such Third Party Payments. For purposes of clarity, the term “Third Party Payments” includes only prospective running royalties payable on the same basis as required by this Section 4.2, and does not include any lump-sum license fees, milestone payments, minimum royalties in excess of accrued royalties, any amounts paid for past infringement of any Third Party’s rights or any amount paid for rights not required to permit CytomX to practice the Licensed Intellectual Property to make, use, offer for sale, sell or import the Cytotoxic Compound portion or Linker portion of any Licensed Product included in the Licensed Intellectual Property in any country. For the avoidance of doubt, the Parties agree and acknowledge that this Section 4.2.3(a) shall not apply with respect to such Licensed Product for such country during such Calendar Quarter; ***. (b) If, (i) in order royalties payable by a Party to Manufacture, Develop, Commercialize or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, Servier or its Affiliates or Sublicensees *** under a MacroGenics Third Party Agreement listed under any agreement in Exhibit C existence as of the Effective Date ***, or (ii) after the License Grant Date, Servier or its sublicensee or designee: (A) is required, as agreed by the Parties in good faith, ***, to obtain a license from any Third Party under Patents (other than Identified Patents) controlled by such Third Party in order to make, have made, use, sell, offer for sale or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, and pursuant to such license ***, or (B) is required by any court of competent jurisdiction, due to infringement of patent rights (other than Identified Patents) controlled by such Third Party in any country(ies) in the Servier Territory, to pay such a royalty to such a Third Party based on sales of such Licensed Product in such country(ies), then Servier may deduct from the milestones and/or royalties that would otherwise be due to MacroGenics on Net Sales resulting from the sales of such Licensed Product in such country in a Calendar Quarter *** of the amount paid by Servier to such Third Party with respect to such Licensed Product for such country during such Calendar Quarter; ***.

Third Party Royalty Offset. (aSubject to Section 4.2.3(e) If after the License Grant Datehereof, Servierif, with respect to a Calendar Quarter, CytomX or any of its Affiliates or its Sublicensee Sublicensees actually makes royalty payments to one or designee (i) is required, as agreed by the more Third Parties in good faithconsideration of a license, ***in the absence of which CytomX could not practice the Licensed Intellectual Property to make, to obtain a license from any Third Party under an Identified Patent controlled by such Third Party in order to Manufactureoffer for sale, Develop, Commercialize sell or import a Program Antibody and/or a the Cytotoxic Compound portion or Linker portion of any Licensed Product in included within the Licensed Intellectual Property (excluding any country in Licensed Intellectual Property jointly owned by ImmunoGen or its Affiliates, on the Servier Territoryone hand, and pursuant to such license ***CytomX or its Affiliates, on the other hand) without infringing an issued patent or (ii) is required by any court of competent jurisdiction, due to infringement of an Identified Patent controlled patents owned or exclusively licensed by such Third Party in any country(ies) in country (collectively, “Third Party Payments”), as evidenced, to the Servier Territoryextent requested by ImmunoGen, ***by an opinion of Independent Patent Counsel selected by CytomX and approved by ImmunoGen (which approval shall not be unreasonably withheld), then Servier may deduct from CytomX shall have the milestones (other than right to reduce the milestone set forth in Section 9.3.1) and/or royalties that would otherwise be due to MacroGenics on ImmunoGen pursuant to Section 4.2.1, 4.2.3(c) or 4.2.3(d) hereof (but not the royalties otherwise due to ImmunoGen pursuant to Section 4.2.3(b) hereof) with respect to Net Sales resulting from the sales in such country of such Licensed Product Products in such country in a Calendar Quarter *** by an amount equal to fifty percent (50%) of the amount paid by Servier to of such Third Party Payments. For purposes of clarity, the term “Third Party Payments” includes only prospective running royalties payable on the same basis as required by this Section 4.2, and does not include any lump-sum license fees, milestone payments, minimum royalties in excess of accrued royalties, any amounts paid for past infringement of any Third Party’s rights or any amount paid for rights not required to permit CytomX to practice the Licensed Intellectual Property to make, use, offer for sale, sell or import the Cytotoxic Compound portion or Linker portion of any Licensed Product included in the Licensed Intellectual Property in any country. For the avoidance of doubt, the Parties agree and acknowledge that this Section 4.2.3(a) shall not apply with respect to such Licensed Product for such country during such Calendar Quarter; ***. (b) If, (i) in order royalties payable by a Party to Manufacture, Develop, Commercialize or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, Servier or its Affiliates or Sublicensees *** under a MacroGenics Third Party Agreement listed under any agreement in Exhibit C existence as of the Effective Date Date. [***, or (ii) after ] Certain information contained herein has been omitted and filed separately with the License Grant Date, Servier or its sublicensee or designee: (A) is required, as agreed by the Parties in good faith, ***, to obtain a license from any Third Party under Patents (other than Identified Patents) controlled by such Third Party in order to make, have made, use, sell, offer for sale or import a Program Antibody and/or a Licensed Product in any country in the Servier Territory, Securities and pursuant to such license ***, or (B) is required by any court of competent jurisdiction, due to infringement of patent rights (other than Identified Patents) controlled by such Third Party in any country(ies) in the Servier Territory, to pay such a royalty to such a Third Party based on sales of such Licensed Product in such country(ies), then Servier may deduct from the milestones and/or royalties that would otherwise be due to MacroGenics on Net Sales resulting from the sales of such Licensed Product in such country in a Calendar Quarter *** of the amount paid by Servier to such Third Party Exchange Commission. Confidential treatment has been requested with respect to such Licensed Product for such country during such Calendar Quarter; ***the omitted portions.