Common use of Third Party Patents Clause in Contracts

Third Party Patents. If, after June 17, 2014, it was or is Necessary or Useful for Allogene (or Pfizer, to the extent identified by Pfizer prior to the Assignment) to license one or more Patent Rights from one or more Third Parties in order to Develop, Manufacture, Commercialize or use any Allogene Licensed Product, whether directly or through any Allogene Affiliate or Sublicensee, then Allogene may, in its sole discretion, negotiate and obtain a license under such Patent Right(s) (each such Third Party license, or any such Third Party license entered into as of the Effective Date by Allogene or by Pfizer and assigned to Allogene, referred to herein as an “Additional Third Party License”). Any royalty otherwise payable to Cellectis under this Agreement with respect to Net Sales of any Allogene Licensed Product by Allogene, its Affiliates or Sublicensees will be reduced by [***] of the amounts payable to Third Parties pursuant to any Additional Third Party Licenses, such reduction to continue until all such amounts have been expended, provided that in no event will the total royalty payable to Cellectis for any Allogene Licensed Product be less than [***] of the royalty amounts otherwise payable for such Allogene Licensed Product and in no event will the royalty payable to Cellectis for any Allogene Licensed Product be reduced below [***] (in each case, other than in the case of Cellectis’ breach of any representation, warranty or covenant hereunder). For purposes of this Section 5.2.2(b), (i) “Necessary” means that, without a license to use the Third Party’s Patent Right, the Development, Manufacture, Commercialization or use of any Allogene Licensed Product in the form such Allogene Licensed Product exists at the time that the Additional Third Party License is executed would, in Allogene’s opinion, infringe such Third Party’s Patent Right and (ii) “Useful” means that Allogene has determined in its discretion that use of such Third Party’s Patent Right would enhance the commercial potential of such Allogene Licensed Product. For the avoidance of doubt, the Parties agree and acknowledge that this Section 5.2.2(b) will not apply with respect to royalties payable by Allogene to any Third Party under any agreement in existence as of June 17, 2014. Neither Party will intentionally negotiate with a Third Party an exclusive license that excludes sublicense rights to the other Party, in the event such Third Party rights are necessary, as determined by the negotiating Party, to Develop and Commercialize Allogene Licensed Products and Cellectis Products in connection with this Agreement in the Field.

Third Party Patents. If, after June 17, 2014the Effective Date, it was or is Necessary or Useful for Allogene (or Pfizer, to the extent identified by Pfizer prior to the Assignment) to license one or more Patent Rights from one or more Third Parties in order to Develop, Manufacture, Commercialize or use any Allogene Licensed Product, whether directly or through any Allogene Pfizer Affiliate or Sublicensee, then Allogene Pfizer may, in its sole discretion, negotiate and obtain a license under such Patent Right(s) (each such Third Party license, or any such Third Party license entered into as of the Effective Date by Allogene or by Pfizer and assigned to Allogene, referred to herein as an “Additional Third Party License”). Any royalty otherwise payable to Cellectis CytomX under this Agreement with respect to Net Sales of any Allogene Licensed Product by AllogenePfizer, its Affiliates or Sublicensees will shall be reduced by [***] fifty percent (50%) of the amounts royalties payable to Third Parties pursuant to any Additional Third Party LicensesLicenses with respect to such Licensed Product, such reduction to continue until all such amounts royalties have been expended, provided that in no event will (other than in the case of CytomX’s breach of any representation, warranty or covenant hereunder) shall the total royalty payable to Cellectis CytomX for any Allogene such Licensed Product be less than [***] fifty percent (50%) of the royalty amounts otherwise payable for such Allogene Licensed Product and in no event will the royalty payable to Cellectis CytomX for any Allogene such Licensed Product be reduced below [***] three percent (in each case, other than in the case of Cellectis’ breach of any representation, warranty or covenant hereunder3%). For purposes of this Section 5.2.2(b5.5.2(b), (i) “Necessary” means that, without a license to use the Third Party’s Patent RightRight in question, the Development, Manufacture, Commercialization or use of any Allogene Licensed Product in the form such Allogene Licensed Product exists at the time that the Additional Third Party License is executed would, in AllogenePfizer’s opinion, infringe such Third Party’s Patent Right and (ii) “Useful” means that Allogene Pfizer has determined in its discretion that use of such Third Party’s Patent Right would reasonably enhance the commercial sales potential of such Allogene Licensed Product, provided that Third Party Patent Rights covering the Manufacture or formulation of such Licensed Product shall only be considered Useful to the extent they cover the form of such Licensed Product as it exists at the time that the Additional Third Party License is executed. For the avoidance of doubt, the Parties agree and acknowledge that this Section 5.2.2(b5.5.2(b) will shall not apply with respect to royalties payable by Allogene Pfizer to any Third Party under any agreement in existence as of June 17, 2014the Effective Date. Neither Party will intentionally negotiate ***Certain information contained herein has been omitted and filed separately with a Third Party an exclusive license that excludes sublicense rights the Securities and Exchange Commission. Confidential treatment has been requested with respect to the other Party, in the event such Third Party rights are necessary, as determined by the negotiating Party, to Develop and Commercialize Allogene Licensed Products and Cellectis Products in connection with this Agreement in the Fieldomitted portions.

Third Party Patents. IfIf the Responsible Party is producing Clinical Requirements or Commercial Requirements for the other Party and either Party becomes aware of any patents or other appropriate intellectual property belonging to a third party which either Party reasonably believes that, after June 17in the absence of a license thereto, 2014the Responsible Party would infringe by virtue of the Responsible Party's manufacture of that Product, it was then the Responsible Party shall advise the other Party of such. The Parties shall thereafter discuss a means of resolving such potential infringement including one Party or is Necessary or Useful for Allogene the other (or Pfizer, to the extent identified by Pfizer prior to the Assignmentjointly) to license one or more Patent Rights from one or more Third Parties in order to Develop, Manufacture, Commercialize or use any Allogene Licensed Product, whether directly or through any Allogene Affiliate or Sublicensee, then Allogene may, in its sole discretion, negotiate and obtain a license under such Patent Right(s) (each such Third Party license, or any such Third Party license entered into as of the Effective Date by Allogene or by Pfizer and assigned to Allogene, referred to herein as an “Additional Third Party License”). Any royalty otherwise payable to Cellectis under this Agreement with respect to Net Sales of any Allogene Licensed Product by Allogene, its Affiliates or Sublicensees will be reduced by [***] of the amounts payable to Third Parties pursuant to any Additional Third Party Licenses, such reduction to continue until all such amounts have been expended, provided that in no event will the total royalty payable to Cellectis for any Allogene Licensed Product be less than [***] of the royalty amounts otherwise payable for such Allogene Licensed Product and in no event will the royalty payable to Cellectis for any Allogene Licensed Product be reduced below [***] (in each case, other than in the case of Cellectis’ breach of any representation, warranty or covenant hereunder). For purposes of this Section 5.2.2(b), (i) “Necessary” means that, without taking a license to use such patent or other intellectual property. If as a result of an agreement between the Third Party’s Patent RightParties, the DevelopmentResponsible Party acquires a license to such patent or other intellectual property, Manufacture, Commercialization or use then the associated intellectual property acquisition and licensing costs shall be deemed to be part of any Allogene Licensed Product the Other Operating Income/Expense as defined in the form Financial Appendix. If the Responsible Party insists that such Allogene Licensed Product exists at a license is necessary but the time other Party does not agree, or if the other Party is not willing to agree to terms for such a license that are acceptable to the Additional Third Responsible Party License is executed wouldand to the third party patent or intellectual property owner, in Allogene’s opinionthen the other Party shall defend, infringe such Third Party’s Patent Right indemnify and hold harmless the Responsible Party and the other Party from and against all third party costs, claims, suits, expenses (iiincluding reasonable attorney's fees) “Useful” means that Allogene has determined in its discretion that use and damages arising out of or resulting from any infringement by the Responsible Party of such Third Party’s Patent Right would enhance patent or intellectual property which covers the commercial potential manufacture of such Allogene Licensed that Drug Candidate or Product. For If the avoidance of doubt, other Party insists that such a license is necessary but the Parties Responsible Party does not agree and acknowledge that this Section 5.2.2(b) will or if the Responsible Party is not apply with respect willing to royalties payable by Allogene agree to any Third Party under any agreement in existence as of June 17, 2014. Neither Party will intentionally negotiate with terms for such a Third Party an exclusive license that excludes sublicense rights are acceptable to the other PartyParty and to the third party patent or intellectual property owner, in then the event such Third Responsible Party rights are necessaryshall defend, as determined indemnify and hold harmless the other Party from and against all third party costs, claims, suits, expenses (including reasonable attorneys fees) and damages arising out of or resulting from any infringement by the negotiating Party, Responsible Party or the other Party of such patent or intellectual property which covers the manufacture of that Product. The provisions of the previous two sentences shall not be transferable to Develop and Commercialize Allogene Licensed Products and Cellectis Products in connection with this Agreement in the Fieldany other party or person.

Third Party Patents. If, after June 17, 2014the Effective Date, it was or is Necessary or Useful for Allogene (or Pfizer, to the extent identified by Pfizer prior to the Assignment) to license one or more Patent Rights from one or more Third Parties in order to Develop, Manufacture, Commercialize or use any Allogene Licensed Product, whether directly or through any Allogene Pfizer Affiliate or Sublicensee, then Allogene Pfizer may, in its sole discretion, negotiate and obtain a license under such Patent Right(s) (each such Third Party license, or any such Third Party license entered into as of the Effective Date by Allogene or by Pfizer and assigned to Allogene, referred to herein as an “Additional Third Party License”). Any royalty otherwise payable to Cellectis CytomX under this Agreement with respect to Net Sales of any Allogene Licensed Product by AllogenePfizer, its Affiliates or Sublicensees will shall be reduced by [***] fifty percent (50%) of the amounts royalties payable to Third Parties pursuant to any Additional Third Party LicensesLicenses with respect to such Licensed Product, such reduction to continue until all such amounts royalties have been expended, provided that in no event will (other than in the case of CytomX’s breach of any representation, warranty or covenant hereunder) shall the total royalty payable to Cellectis CytomX for any Allogene such Licensed Product be less than [***] fifty percent (50%) of the royalty amounts otherwise payable for such Allogene Licensed Product and in no event will the royalty payable to Cellectis CytomX for any Allogene such Licensed Product be reduced below [***] three percent (in each case, other than in the case of Cellectis’ breach of any representation, warranty or covenant hereunder3%). For purposes of this Section 5.2.2(b5.5.2(b), (i) “Necessary” means that, without a license to use the Third Party’s Patent RightRight in question, the Development, Manufacture, Commercialization or use of any Allogene Licensed Product in the form such Allogene Licensed Product exists at the time that the Additional Third Party License is executed would, in AllogenePfizer’s opinion, infringe such Third Party’s Patent Right and (ii) “Useful” means that Allogene Pfizer has determined in its discretion that use of such Third Party’s Patent Right would reasonably enhance the commercial sales potential of such Allogene Licensed Product, provided that Third Party Patent Rights covering the Manufacture or formulation of such Licensed Product shall only be considered Useful to the extent they cover the form of such Licensed Product as it exists at the time that the Additional Third Party License is executed. For the avoidance of doubt, the Parties agree and acknowledge that this Section 5.2.2(b5.5.2(b) will shall not apply with respect to royalties payable by Allogene Pfizer to any Third Party under any agreement in existence as of June 17, 2014the Effective Date. Neither Party will intentionally negotiate ***Certain information contained herein has been omitted pursuant to Regulation S-K 601(b)(10). Confidential treatment has been granted with a Third Party an exclusive license that excludes sublicense rights respect to the other Party, in the event such Third Party rights are necessary, as determined by the negotiating Party, to Develop and Commercialize Allogene Licensed Products and Cellectis Products in connection with this Agreement in the Field.omitted portions. 44

Third Party Patents. IfIf a patent or patents of a Third Party, after June 17other than Third Party Patents or patents [ * ], 2014should exist in any country during the term of this Agreement covering the use or sale of any Primary Pre-Targeting Product comprised of a [ * ], and if it was should prove in Xxxxxxx'x reasonable judgment impractical or is Necessary impossible for Xxxxxxx or Useful for Allogene (or Pfizer, to the extent identified by Pfizer prior to the Assignment) to license one or more Patent Rights from one or more Third Parties in order to Develop, Manufacture, Commercialize or use any Allogene Licensed Product, whether directly or through any Allogene Affiliate or Sublicensee, then Allogene may, in its sole discretion, negotiate and obtain sublicensee to continue the activity or activities licensed hereunder without obtaining a royalty-bearing license under such Patent Right(s) (each from such Third Party licenseunder such patent or patents in said country, or any then, except as provided in Paragraph 4.21, Xxxxxxx shall be entitled to a credit for the royalty paid to such Third Party under such license entered into as for the use or sale of the Effective Date by Allogene or by Pfizer and assigned to AllogenePrimary Pre-Targeting Product in said country ("Royalty"), referred to herein as an “Additional Third Party License”). Any such credit being applied against only the royalty otherwise payable to Cellectis payments due under this Agreement with respect to the Primary Pre-Targeting Product for said country and in an amount equal to [ * ] of the Royalty paid to such Third Party; provided, however, that the earned royalties payable to NeoRx under this Agreement shall not be reduced to less than [ * ] of Net Sales of any Allogene Licensed such Primary Pre-Targeting Product in said country by Allogene, its Affiliates or Sublicensees will be reduced reason of the credit described in this Paragraph 4.17 and the reduction provided by [***this Paragraph 4.17 with respect to the United States shall not exceed [ * ] of the amounts payable to Third Parties pursuant to any Additional Third Party Licenses, such reduction to continue until all such amounts have been expended, provided that in no event will amount by which [ * ] the total royalty payable to Cellectis Royalty exceeds [ * ] for any Allogene Licensed Product be less than [***] of the royalty amounts otherwise payable for such Allogene Licensed Product and in no event will the royalty payable to Cellectis for any Allogene Licensed Product be reduced below [***] (in each case, other than in the case of Cellectis’ breach of any representation, warranty or covenant hereunder)United States. For purposes of this Section 5.2.2(b)example, (i) “Necessary” means that, without with respect to such a license to use the Third Party’s Patent Right, the Development, Manufacture, Commercialization or use of any Allogene Licensed Primary Pre-Targeting Product in the form United States, if A1 equals [ * ], A2 equals [ * ] and the Royalty equals [ * ], then the maximum amount of the Royalty that may be deducted pursuant to this Paragraph 4.17 from the earned royalties otherwise payable on Net Sales in the United States for such Allogene Licensed Primary Pre-Targeting Product exists at shall not exceed [ * ] and shall not be applied to reduce the time that earned royalties payable to NeoRx to less than [ * ] of Net Sales in the Additional Third Party License is executed would, in Allogene’s opinion, infringe United States for such Third Party’s Patent Right and (ii) “Useful” means that Allogene has determined in its discretion that use of such Third Party’s Patent Right would enhance the commercial potential of such Allogene Licensed Primary Pre-Targeting Product. For (Note that by operation of Paragraph 4.5, without the avoidance application of doubtthis Paragraph 4.17, the Parties agree and acknowledge that this Section 5.2.2(b) will not apply with respect earned royalty rate may be reduced to royalties payable by Allogene to any Third Party under any agreement in existence as of June 17, 2014. Neither Party will intentionally negotiate with a Third Party an exclusive license that excludes sublicense rights to the other Party, in the event such Third Party rights are necessary, as determined by the negotiating Party, to Develop and Commercialize Allogene Licensed Products and Cellectis Products in connection with this Agreement in the Field[ * ].)

Third Party Patents. If, after June 17, 2014, it was In the event IDEA or is Necessary ALPHARMA receive notice or Useful for Allogene otherwise become aware of any facts that ALPHARMA's (or Pfizerany of its Affiliates' or sublicensees') making, to the extent identified by Pfizer prior to the Assignment) to license one having made, using, offering for sale, selling or more Patent Rights from one or more Third Parties in order to Develop, Manufacture, Commercialize or use any Allogene Licensed Product, whether directly or through any Allogene Affiliate or Sublicensee, then Allogene may, in its sole discretion, negotiate and obtain importing a license under such Patent Right(s) (each such Third Party license, or any such Third Party license entered into as of the Effective Date by Allogene or by Pfizer and assigned to Allogene, referred to herein as an “Additional Third Party License”). Any royalty otherwise payable to Cellectis under this Agreement with respect to Net Sales of any Allogene Licensed Product by Allogene, its Affiliates or Sublicensees will be reduced by [***] of the amounts payable to Third Parties pursuant to any Additional Third Party Licenses, such reduction to continue until all such amounts have been expended, provided that in no event will the total royalty payable to Cellectis for any Allogene Licensed Product be less than [***] of the royalty amounts otherwise payable for such Allogene Licensed Product and in no event will the royalty payable to Cellectis for any Allogene Licensed Product be reduced below [***] (in each case, other than in the case of Cellectis’ breach of any representation, warranty or covenant hereunder). For purposes of this Section 5.2.2(b), (i) “Necessary” means that, without a license to use the Third Party’s Patent Right, the Development, Manufacture, Commercialization or use of any Allogene Licensed Product in the form Field in accordance with this Agreement infringes, may infringe or is alleged by a third party to infringe any third party Patent Rights (including any patent application that would be infringed if issued as a patent), the Party becoming aware of same shall promptly notify the other. ALPHARMA (or its relevant Affiliate or sublicensee) shall have the right to negotiate with said third party for such Allogene Licensed Product exists at license of the time that the Additional Third Party License is executed would, in Allogene’s opinion, infringe third party Patent Rights as shall be necessary or prudent to avoid such Third Party’s Patent Right infringement or potential infringement and (ii) “Useful” means that Allogene has determined in its discretion that use to defend and settle any action based on infringement or potential infringement of such Third Party’s third party Patent Right would enhance the commercial potential Rights. ALPHARMA shall be entitled to deduct [**] percent ([**]%) of such Allogene Licensed Product. For the avoidance of doubt, the Parties agree and acknowledge any amounts that this Section 5.2.2(bALPHARMA (or its relevant Affiliate or sublicensee) will not apply pays or incurs with respect to royalties such third party Patent Rights, including infringement damages, costs and expenses resulting from any such infringement or potential infringement, attorney fees incurred in defending or settling any dispute regarding such infringement or potential infringement or in negotiating a license to such third party Patent Rights, and license fees, milestone payments and/or Royalties paid in respect of such third party Patent Rights ("Required Third Party Payments") from milestone payments, Royalties and other amounts otherwise payable by Allogene ALPHARMA to IDEA hereunder (in each case after any Third Party under any agreement in existence as of June 17, 2014. Neither Party will intentionally negotiate with a Third Party an exclusive license that excludes sublicense rights other deduction or reduction which it is entitled to make pursuant to the other Partyprovisions of this Article 3). Any such deduction or portion thereof may be carried forward until fully offset against the milestone payments, in the event such Royalties and other amounts otherwise payable by ALPHARMA to IDEA hereunder. Prior to entering into any agreement or settlement that would require ALPHARMA (or its relevant Affiliate or sublicensee) to pay any Required Third Party rights are necessaryPayment, as determined ALPHARMA (or its relevant Affiliate or sublicensee) will consult with IDEA regarding the advisability and payment terms of the proposed agreement or settlement and consider in good faith any views expressed by the negotiating Party, IDEA with respect thereto; provided that ALPHARMA (or its relevant Affiliate or sublicensee) shall retain final decision-making authority with respect to Develop whether and Commercialize Allogene Licensed Products and Cellectis Products in connection with this Agreement in the Fieldon what terms to enter into any such agreement or settlement.

Third Party Patents. If, after June 17, 2014, it was If a Patent or is Necessary or Useful for Allogene (or Pfizer, to the extent identified by Pfizer prior to the Assignment) to license one or more Patent Rights from one or more Third Parties in order to Develop, Manufacture, Commercialize or use any Allogene Licensed Product, whether directly or through any Allogene Affiliate or Sublicensee, then Allogene may, in its sole discretion, negotiate and obtain Patents of a license under such Patent Right(s) (each such Third Party license, should exist or any such should issue to a Third Party license entered into as of in any country in the Effective Date by Allogene or by Pfizer and assigned to Allogene, referred to herein as an “Additional Third Party License”). Any royalty otherwise payable to Cellectis under this Agreement with respect to Net Sales of any Allogene Licensed Product by Allogene, its Affiliates or Sublicensees will be reduced by OMP Territory during the CERTAIN PORTIONS OF THE EXHIBIT THAT ARE NOT MATERIAL AND WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED HAVE BEEN REDACTED PURSUANT TO ITEM 601(B)(10)(IV) OF REGULATION S-K. [***] INDICATES THAT INFORMATION HAS BEEN REDACTED. term of this Agreement, which OMP believes, in its reasonable judgment, may be infringed by the manufacture, use or sale of the amounts payable Product in such country, and OMP believes in its reasonable judgment, that it would be impractical or impossible to Third Parties pursuant continue to any Additional Commercialize or Commercialize the Product without obtaining a royalty bearing license from such Third Party Licensesunder such Patent or Patents in said country, such reduction then OMP shall promptly notify Grünenthal in writing to continue until all such amounts have been expended, provided that in no event will the total royalty payable to Cellectis for any Allogene Licensed Product be less than effect with legal opinions. OMP and Grünenthal shall [***] towards the Patent of such Third Party under the consideration of the royalty amounts otherwise payable interest of both Parties. However, if the Parties are unable to agree on [***], the dispute will be referred to the responsible managing director of Grünenthal and the President of OMP for such Allogene Licensed Product and in no event will the royalty payable to Cellectis for any Allogene Licensed Product be reduced below resolution. If these individuals cannot agree [***] (shall have the right to participate in each case, other than all negotiations with such Third Party directed to obtain rights to such Patent of the Third Party. [***] shall comply with any [***] in the case where the Parties have reached [***]. In case a license has been obtained from a Third Party OMP may deduct from the amount of Cellectis’ breach royalties due to Grünenthal on Net Sales of any representation, warranty or covenant hereunder). For purposes of this Section 5.2.2(bProduct according to Sections 6.3 and 6.4(a), as applicable, fifty percent (i50%) “Necessary” means that, without a license to use of the Third Party’s Patent Right, the Development, Manufacture, Commercialization or use of any Allogene Licensed Product in the form such Allogene Licensed Product exists at the time that the Additional Third Party License is executed would, in Allogene’s opinion, infringe such Third Party’s Patent Right and (ii) “Useful” means that Allogene has determined in its discretion that use of such Third Party’s Patent Right would enhance the commercial potential of such Allogene Licensed Product. For the avoidance of doubt, the Parties agree and acknowledge that this Section 5.2.2(b) will not apply with respect to royalties payable Earned Royalty actually paid by Allogene OMP to any Third Party according to Section 6.8(a), pursuant to a license entered into under any agreement in existence as this Section. This Section shall apply vice versa for Grünenthal if Grünenthal is making payments to OMP according to Section 6.4(c). For the purpose of June 17this Section 7.11, 2014. Neither Party will intentionally negotiate with a Third Party an exclusive license that excludes sublicense rights to the other Party, in the event such Third Party rights are necessary, as determined by the negotiating Party, to Develop and Commercialize Allogene Licensed Products and Cellectis Products in connection with this Agreement in the Fieldshall exclude Affiliates. [***].