Common use of Third Party Royalties Clause in Contracts

Third Party Royalties. If, based on the written advice of reputable, independent outside counsel selected by the Parties, copies of which shall be promptly provided to the Parties, NOVACEA shall deem it necessary in respect of sales of the Licensed Product to obtain a license from any Third Party in order for NOVACEA, its Affiliates or its permitted sublicensees to exercise their rights pursuant to Section 2.1.1 of this Agreement, and (i) the Licensed Product is being commercialized under the [*] Trademark, XXXXXX XXXXX shall bear the full cost of any license fees, milestones, royalties or similar amounts (“License Payments”) payable to such Third Party to the extent such License Payments are allocable to the sale and use of a Licensed Product in the NOVACEA Territory, or (ii) the Licensed Product is not being commercialized under the [*] Trademark, each Party shall bear [*] percent ([*]%) of any License Payments payable to such Third Party to the extent any such License Payments are allocable to the sale and use of a Licensed Product in the NOVACEA Territory; provided, however, that in no event shall XXXXXX XXXXX pay an aggregate amount of License Payments that at any time exceeds the aggregate Trademark Royalty paid to XXXXXX XXXXX from and after the effective date of any such license with a Third Party with respect to Net Sales in the country(ies) that are the subject of the Third Party’s allegations. NOVACEA may credit its share of its obligation under clause (ii) above against any Trademark Royalty due to XXXXXX XXXXX with respect to the Licensed Product (and shall so reflect any such credit in the next report to be delivered pursuant to Section 5.3 hereof).

Third Party Royalties. IfIf Vaccinex determines after consultation with Rochester that it is required to pay royalties or other fees to any third party because the manufacture, based on the written advice use, offer for sale, importation, or sale of reputable, independent outside counsel selected by the Parties, copies of which shall be promptly provided to the Parties, NOVACEA shall deem it necessary in respect of sales of the a Licensed Method or a Licensed Product would otherwise be likely to obtain infringe any patent or other intellectual property rights of such third party in a license from any given country (“Third Party in order for NOVACEARoyalties”), its Affiliates or its permitted sublicensees Vaccinex may deduct from running royalties thereafter due to exercise their rights Rochester (pursuant to Section 2.1.1 Sections 3.2, 3.4 or 3.5 of this Agreement, and (i) the Licensed Product is being commercialized under the [*] Trademark, XXXXXX XXXXX shall bear the full cost of any license fees, milestones, royalties or similar amounts (“License Payments”) payable to such Third Party with respect to the extent Net Sales of such License Payments are allocable to the sale and use of a Licensed Method or Licensed Product in the NOVACEA Territory, or (ii) the Licensed Product is not being commercialized under the such country up to [*] Trademark, each Party shall bear [**] percent ([***]%) of any License Payments payable to such the Third Party Royalties. In no event shall the royalties due to the extent Rochester on such Net Sales in such country on account of any reduction pursuant to this Section 3.6 be thereby reduced to less than [***] percent ([***]%) on such License Payments are allocable to the sale and use Net Sales of a Licensed Method, [***] percent ([***]%) on such Net Sales of a Licensed Product that is a diagnostic product or [***] percent ([***]%) on such Net Sales of a Licensed Product that is a vaccine or therapeutic product in such country. If the sum of the royalties paid hereunder and Third Party Royalties for a given Licensed Product or a Licensed Method in a given country exceeds, at any time, more than [***] percent ([***]%) on a vaccine or other therapeutic product, [***] percent ([***]%) on a diagnostic product or [***] percent ([***]%) on a method of production of the Net Sales for such a Licensed Product or Licensed Method, then upon Vaccinex’s request, Rochester and Vaccinex agree to negotiate in good faith in an effort to agree on a reduction in the NOVACEA Territory; provided, however, that in no event shall XXXXXX XXXXX pay an aggregate amount of License Payments that at any time exceeds the aggregate Trademark Royalty paid royalties payable hereunder to XXXXXX XXXXX from and after the effective date of any Rochester for such license with a Third Party with respect to Net Sales in the country(ies) that are the subject of the Third Party’s allegations. NOVACEA may credit its share of its obligation under clause (ii) above against any Trademark Royalty due to XXXXXX XXXXX with respect to the Licensed Product (and shall so reflect any or Licensed Method in such credit country. In the event the parties are unable to agree to such reduction after a reasonable period of time, not to exceed [***], either party may request that the issue be arbitrated in the next report to be delivered pursuant to accordance with Section 5.3 hereof)12.6 of this Agreement.

Third Party Royalties. If, based on the written advice of reputable, independent outside counsel selected by the Parties, copies of which shall be promptly provided to the Parties, NOVACEA shall deem it necessary in respect of sales of the Licensed Product to obtain a license from any Third Party in order for NOVACEAIf Triangle, its Affiliates or sublicensees determine, after consultation with Dynavax, but at Triangle's sole discretion, that it or they may be required to pay royalties and other amounts (collectively, the "Third Party Royalties") to any third party because the manufacture, use, offer for sale, sale or importation of a Licensed Product infringes or may infringe any patent or patent which may issue from a patent application of such third party in one or more countries (a "Third Party License"), Triangle, its permitted Affiliates or sublicensees may deduct the Third Party Royalties it or they pay to exercise their rights such third party from royalties thereafter payable to Dynavax. If such license relates to ISS per se, Conjugated ISS per se or the use of ISS or Conjugated ISS, Triangle may credit *** percent (***%) of any Third Party Royalties up to *** percent (***%) of Net Sales of Licensed Products and *** percent (***%) of the amount of any Third Party Royalties in excess of *** percent (***%) of Net Sales of Licensed Products. For all other Third Party Licenses, Triangle may credit *** percent (***%) of all Third Party Royalties against royalties thereafter payable to Dynavax. In no event shall the royalties due on Net Sales of Licensed Products in any royalty period be thereby reduced on account of any reduction pursuant to this Section 2.1.1 3.6 by more than *** percent (***%) of the amount which would have been otherwise payable. In the event Triangle enters into a Third Party License pursuant to this AgreementSection 3.6, Dynavax will use its best efforts to settle or otherwise resolve any inter partes patent proceeding which may be pending between Dynavax and (i) the Licensed Product is being commercialized under the [*] Trademark, XXXXXX XXXXX shall bear the full cost of any license fees, milestones, royalties or similar amounts (“License Payments”) payable relevant third party relating to such Third Party License without any claim to any Third Party Royalties and will not, thereafter commence or take any action which might provoke the extent such License Payments are allocable to the sale and use of a Licensed Product in the NOVACEA Territory, or (ii) the Licensed Product is not being commercialized under the [*] Trademark, each Party shall bear [*] percent ([*]%) commencement of any License Payments payable to inter partes proceeding in respect of any patent rights licensed under such Third Party to the extent any such License Payments are allocable to the sale and use of a Licensed Product in the NOVACEA Territory; provided, however, that in no event shall XXXXXX XXXXX pay an aggregate amount of License Payments that at any time exceeds the aggregate Trademark Royalty paid to XXXXXX XXXXX from and after the effective date of any such license with a Third Party with respect to Net Sales in the country(ies) that are the subject of the Third Party’s allegations. NOVACEA may credit its share of its obligation under clause (ii) above against any Trademark Royalty due to XXXXXX XXXXX with respect to the Licensed Product (and shall so reflect any such credit in the next report to be delivered pursuant to Section 5.3 hereof)License.

Third Party Royalties. IfNotwithstanding the foregoing, based on the written advice of reputable, independent outside counsel selected Licensee may obtain (or has obtained) one or more licenses under patents or patent applications owned by the Parties, copies of which shall be promptly provided to the Parties, NOVACEA shall deem it necessary in respect of sales of the Licensed Product to obtain a license from any Third Party in order for NOVACEA, its Affiliates or its permitted sublicensees to exercise their rights pursuant to Section 2.1.1 of this Agreement, and (i) as reasonably necessary to avoid infringement thereof by the Licensed Product is being commercialized under the [*] Trademarkmanufacture, XXXXXX XXXXX shall bear the full cost use, or sale of any license feesLicensed Product, milestonesLicensed Process, royalties or similar amounts Licensed Service, (“License Payments”ii) payable to reasonably avoid infringement-related litigation with respect to such Third Party to the extent such License Payments are allocable to the sale and use of a Licensed Product patent(s), as determined by Licensee in the NOVACEA Territoryits sole discretion, or (iiiii) in order to practice any Third Party’s rights that could improve, enhance, or modify a Licensed Product, Licensed Process, or Licensed Service (including but not limited to obtaining rights to any therapeutic compound, molecule, peptide, moiety, or sequence, or any other therapeutic agent), as determined reasonably and in good faith by Licensee. If it is necessary for Licensee to pay royalties in order to obtain such licenses from Third Parties such that the Licensed Product is not being commercialized under the aggregates royalties on Net Sales due to Third Parties exceeds [*] Trademark, each Party shall bear [**] percent ([*]%) **] of any License Payments payable Net Sales, Licensee shall be permitted to such Third Party reduce the royalty due to the extent any such License Payments are allocable to the sale and use of a Licensed Product in the NOVACEA Territory; provided, however, that in no event shall XXXXXX XXXXX pay an aggregate amount of License Payments that at any time exceeds the aggregate Trademark Royalty paid to XXXXXX XXXXX from and after the effective date DUKE by [***] of any such license with a additional royalties payable to Third Party Parties in excess of [***] percent [***] of Net Sales with respect to Net Sales such Licensed Product, Licensed Process, or Licensed Service, from the royalty owing to DUKE for sales of that Licensed Product, Licensed Process, or Licensed Service under Article 3.03, provided that the royalty paid to all Third Parties will be decreased proportionately, and that in the country(ies) that are the subject of the Third Party’s allegations. NOVACEA may credit its share of its obligation under clause (ii) above against any Trademark Royalty due to XXXXXX XXXXX with respect to the Licensed Product (and shall so reflect any such credit in the next report to be delivered pursuant to Section 5.3 hereof)*** CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.

Third Party Royalties. If, based on the written advice of reputable, independent outside counsel selected by the Parties, copies of which shall be promptly provided to the Parties, NOVACEA shall deem it necessary in respect of sales of the Licensed Product to obtain a license from any Third Party in order for NOVACEAIf Triangle, its Affiliates or sublicensees determine, after consultation with Dynavax, but at Triangle's sole discretion, that it or they may be required to pay royalties and other amounts (collectively, the "Third Party Royalties") to any third party because the manufacture, use, offer for sale, sale or importation of a Licensed Product infringes or may infringe any patent or patent which may issue from a patent application of such third party in one or more countries (a "Third Party License"), Triangle, its permitted Affiliates or sublicensees may deduct the Third Party Royalties it or they pay to exercise their rights such third party from royalties thereafter payable to Dynavax as follows. If such license relates to Compound ISS per se or the use of Compound ISS (other than solely due to the Antigen or the use thereof), Triangle may credit *** of any Third Party Royalties up to *** of Net Sales of Licensed Products and *** of the amount of any Third Party Royalties in excess of *** of Net Sales of Licensed Products. For all other Third Party Licenses, Triangle may credit *** of all Third Party Royalties against royalties thereafter payable to Dynavax. In no event shall the royalties due on Net Sales of Licensed Products in any royalty period be thereby reduced on account of any reduction pursuant to this Section 2.1.1 3.5 by more than *** of the amount which would have been otherwise payable. In the event Triangle enters into a Third Party License pursuant to this AgreementSection 3.5, Dynavax will use its best efforts to settle or otherwise resolve any inter partes patent proceeding which may be pending between Dynavax and (i) the Licensed Product is being commercialized under the [*] Trademark, XXXXXX XXXXX shall bear the full cost of any license fees, milestones, royalties or similar amounts (“License Payments”) payable relevant third party relating to such Third Party License without any claim to any Third Party Royalties and will not, thereafter commence or take any action which might provoke the extent such License Payments are allocable to the sale and use of a Licensed Product in the NOVACEA Territory, or (ii) the Licensed Product is not being commercialized under the [*] Trademark, each Party shall bear [*] percent ([*]%) commencement of any License Payments payable to inter partes proceeding in respect of any patent rights licensed under such Third Party to the extent any such License Payments are allocable to the sale and use License. ---------- *** Portions of a Licensed Product in the NOVACEA Territory; provided, however, that in no event shall XXXXXX XXXXX pay an aggregate amount of License Payments that at any time exceeds the aggregate Trademark Royalty paid to XXXXXX XXXXX from and after the effective date of any such license with a Third Party with respect to Net Sales in the country(ies) that are the subject of the Third Party’s allegations. NOVACEA may credit its share of its obligation under clause (ii) above against any Trademark Royalty due to XXXXXX XXXXX with respect to the Licensed Product (and shall so reflect any such credit in the next report to be delivered this page have been omitted pursuant to Section 5.3 hereof)a request for Confidential Treatment and filed separately with the Commission.

Third Party Royalties. IfIf a Party is required (a) to enter into an agreement to license or acquire rights under a Third Party’s Patent Rights or Know-How that are necessary to use, based on the written advice of reputableimport, independent outside counsel selected by the Partiesexport, copies of which shall be promptly provided to the Parties, NOVACEA shall deem it necessary in respect of sales of the Licensed Product to obtain a license from any Third Party in order for NOVACEA, its Affiliates Manufacture or its permitted sublicensees to exercise their rights pursuant to Section 2.1.1 of this Agreement, and Commercialize (i) a Collaboration Compound contained in a Collaboration Product in the Licensed Field or (ii) a Collaboration Product is being commercialized under in the [*] TrademarkField and (b) pursuant to such agreement, XXXXXX XXXXX shall bear the full cost of any license fees, milestones, to pay to a Third Party royalties or similar amounts (“License Payments”) other payments in order to use, import, export, Manufacture or Commercialize such Collaboration Compound or Collaboration Product in the Field * Confidential Treatment Requested. Execution Copy in a country of the Territory, then such Party may deduct up to * of the royalty or other payments payable to such Third Party from the Royalty Payment thereafter payable to the extent other Party under Sections 6.3.1 and 6.3.2 above, as applicable, with respect to such License Payments are allocable to the sale and use of a Licensed Collaboration Compound or Collaboration Product in the NOVACEA TerritoryField in such country, or provided that the Royalty Payment paid under Sections 6.3.1 and 6.3.2 shall not be reduced by greater than * of what would otherwise have been received pursuant to the terms of this Agreement (ii) and any such amounts not so deducted as a result of the Licensed Product is not being commercialized under application of the [*] Trademarkforegoing limitation shall be carried forward and deducted from subsequent payments of royalties until fully absorbed); and provided further that, each Party shall bear [*] percent ([*]%) of any License Payments payable if Acucela elects to participate in the Co-Promotion pursuant to Section 4.1.2(c), all the royalties and other payments to such Third Party to the extent any such License Payments are allocable to the sale and use for use, import, export, Manufacture or Commercialization of a Licensed Collaboration Compound or Collaboration Product in the NOVACEA Territory; provided, however, that in no event shall XXXXXX XXXXX pay an aggregate amount of License Payments that at any time exceeds the aggregate Trademark Royalty paid to XXXXXX XXXXX from and after the effective date of any such license with a Third Party with respect to Net Sales Shared Territory in the country(ies) that are Field shall be treated as *. In the subject event of a dispute between the Parties whether such Third Party’s allegations. NOVACEA may credit its share Patent Rights or Know-How are required, such dispute shall be resolved by the JDC based upon the well reasoned opinion of its obligation under clause (ii) above against any Trademark Royalty due to XXXXXX XXXXX with respect to a qualified independent patent attorney retained by the Licensed Product (and shall so reflect any such credit in the next report to be delivered pursuant to Section 5.3 hereof)JDC.