Common use of ROYALTIES TO LICENSOR Clause in Contracts

ROYALTIES TO LICENSOR. Royalties to Licensor will be due and payable according to the following terms. (i) Licensee will pay Licensor a royalty of [ * ]% of Net Profits of Licensed Product as long as there is at least one unexpired Valid Claim in a Licensed Patent, an Improvement, Joint Improvement or Licensee Improvement and the Valid Claim covers (I) the manufacturing or sale of HE3286, (II) formulations or any Dosage Form that contains HE3286 or (III) any method that uses HE3286 in one or more treatments in the Field of Use. Licensee will pay Licensor a royalty of [ * ]% of Net Profits of Licensed Product that uses a product improvement that is covered by a valid claim in a Licensee Improvement, wherein the product improvement is mutually agreed in writing to be superior or otherwise significantly improve the bioavailability or another useful property of HE3286 and the product improvement is used or present in a Licensed Product. (ii) Net Profit (iii) Licensee will pay Licensor a royalty of [ * ]% of Net Profits of Licensed Product that is covered by an issued and valid claim in a Joint Improvement or Licensee Improvement and there is no unexpired Valid Claim remaining in or arising from any Licensed Patent or Improvement, where such Valid Claim covers (I) the manufacturing or sale of HE3286, (II) formulations or any Dosage Form that contains HE3286 or (III) methods that use HE3286 in one or more treatments in the Field of Use. (iv) If Licensee enters into one or more sublicense agreements before the end of the last phase II clinical trial for each or any clinical indication in the Field of Use, Licensee will pay [ * ]% of all royalties on all Net Profits that Licensee is paid under each sublicense. If Licensee enters into one or more sublicense agreements before the end of the last phase III clinical trial for each or any clinical indication in the Field of Use, Licensee will pay [ * ]% of all royalties on all Net Profits that Licensee is paid under each sublicense. If Licensee enters into one or more sublicense agreements after the end of the last phase III clinical trial for each or any clinical indication in the Field of Use but before the first royalty generating sale in China or Hong Kong, Licensee will pay [ * ]% of all royalties on all Net Profits that Licensee is paid under each sublicense. As used herein, the end of any clinical trial, e.g., phase II clinical trial or phase III clinical trial means that dosing of patients has been completed and the results have been analyzed in sufficient detail to professionally assess the relative success of the clinical trial’s initially planned goals.

ROYALTIES TO LICENSOR. Royalties to Licensor will be due and payable according to the following terms. (i) Licensee will pay Licensor a royalty of [ * ]] % of Net Profits of Licensed Product as long as there is at least one unexpired Valid Claim in a Licensed Patent, an Improvement, Joint Improvement or Licensee Improvement and the Valid Claim covers (I) the manufacturing or sale of HE3286HE3235, (II) formulations or any Dosage Form that contains HE3286 HE3235 or (III) any method that uses HE3286 HE3235 in one or more treatments in the Field of Use. Licensee will pay Licensor a royalty of [ * ]] % of Net Profits of Licensed Product that uses a product improvement that is covered by a valid claim Valid Claim in a Licensee Improvement, wherein the product improvement is mutually agreed in writing to be superior or otherwise significantly improve the bioavailability or another useful pharmaceutical property of HE3286 HE3235 and the product improvement is used or present in a Licensed Product. (ii) Net Profit (iii) Licensee will pay Licensor a royalty of [ * ]] % of Net Profits of Licensed Product that is covered by an issued and valid claim in a Joint Improvement or Licensee Improvement and there is no unexpired Valid Claim remaining in or arising from any Licensed Patent or Improvement, where such Valid Claim covers (I) the manufacturing or sale of HE3286HE3235, (II) formulations or any Dosage Form that contains HE3286 HE3235 or (III) methods that use HE3286 HE3235 in one or more treatments in the Field of Use. (iviii) If Licensee enters into one or more sublicense agreements before the end of the last phase II clinical trial for each or any clinical indication in the Field of Use, Licensee will pay [ * ]] % of all royalties on all Net Profits that Licensee is paid under each sublicense. If Licensee enters into one or more sublicense agreements before the end of the last phase III clinical trial for each or any clinical indication in the Field of Use, Licensee will pay [ * ]] % of all royalties on all Net Profits that Licensee is paid under each sublicense. If Licensee enters into one or more sublicense agreements after the end of the last phase III clinical trial for each or any clinical indication in the Field of Use but before the first royalty generating sale in China or Hong Kong, Licensee will pay [ * ]] % of all royalties on all Net Profits that Licensee is paid under each sublicense. As used herein, the end of any clinical trial, e.g., phase II clinical trial or phase III clinical trial means that dosing of patients has been completed and the results have been analyzed in sufficient detail to professionally assess the relative success of the clinical trial’s initially planned goals.