Common use of Reversion License Clause in Contracts

Reversion License. 13.6.2.1. Effective upon the date of termination of this Agreement in case of termination by Eureka pursuant to Section 13.3.1.1, 13.4 or 13.5 or termination by Licensee pursuant to Section 13.2, 13.3.1.2 or 13.4, subject to the terms of this Section 13.6.2, Licensee, on behalf of itself and its Affiliates, hereby grants (without any further subsequent action required on the part of Licensee or Eureka) to Eureka and its Affiliates, an irrevocable, perpetual, worldwide license, with the right to grant sublicenses through multiple tiers, under the Licensee Agreement Technology and Licensee’s interest in the Joint Agreement Technology to Exploit products anywhere in the world (the “Reversion License”), where, at Eureka’s election specified in a written notice to Licensee no later than 120 days after, as applicable, the date of Eureka’s notice of termination to Licensee pursuant to Section 13.3.1.1, 13.4 or 13.5 or the date of Eureka’s receipt of Licensee’s notice pursuant to Section 13.2, 13.3.1.2 or 13.4, the Reversion License will be either (i) non-exclusive, royalty-free and fully paid-up, or (ii) exclusive and, except if granted following Eureka’s termination pursuant to Section 13.3.1.1 or 13.5, royalty-bearing, provided that, in the event that Eureka fails to send such written notice to Licensee within such 120-day period, the Reversion License for the Licensee Agreement Technology and Licensee’s interest in the Joint Agreement Technology by default will be non-exclusive, royalty-free and fully paid-up. 13.6.2.2. If, in its written notice in accordance with Section 13.6.2.1, Eureka elects the Reversion License to be granted as an exclusive license as specified in the foregoing Section 13.6.2.1(ii), then, except if the Reversion License is granted following Eureka’s termination pursuant to Section 13.3.1.1 or 13.5, Eureka will make payments to Licensee based on Net Sales (defined mutatis mutandis for Eureka and its Affiliates and (sub)licensees) of the Licensed Products in the Field in the Licensee Territory by Eureka and its Affiliates and (sub)licensees in a given Calendar Year at the following rates: (a) if the termination occurs prior to Regulatory Approval in the United States of a first Licensed Product, [***]%, subject to a maximum royalty payment equal to the amount incurred by or on behalf of Licensee and its Affiliates in connection with the Development and Commercialization of such Licensed Product (excluding all payments to Eureka under this Agreement) prior to the effective date of such termination (where such total amount will be (i) specified in Licensee’s termination notice to Eureka pursuant to Section 13.2, 13.3.1.2 or 13.5, or (ii) submitted in writing to Eureka no later than 20 Business Days following Licensee’s receipt of Eureka’s termination notice pursuant to Section 13.3.1.1, 13.4 or 13.5, or (b) if the termination occurs after receipt of Regulatory Approval in the United States of a first Licensed Product, [***]% (i) for a period of [***] years from the First Commercial Sale of the applicable Licensed Product in the applicable country of the Licensee Territory and (ii) subject to the reductions for Generic Competition of Section 8.4.3 applying mutatis mutandis to Eureka. Payments would be made by Eureka to Licensee in a manner analogous to that set forth in Section 8.6. 13.6.2.3. In the event that Eureka elects the Reversion License to be granted as an exclusive license as specified in the foregoing Section 13.6.2.1(ii), Eureka will have the right to assume, at its cost, (a) the sole responsibility for the Prosecution and Maintenance of the Licensee Agreement Patent Rights in all countries claiming solely the Licensed Products and (b) the sole right to take any action to enforce any such Licensee Agreement Patent Rights in connection with any Competing Infringement of a Licensed Product anywhere in the world.