ROYALTIES ON THE NET SALES (WITH THE DEFINITION OF NET SALES SET FORTH IN
SECTION 1.51 APPLIED TO SUCH LICENSED PRODUCT) BY SYNTA, ITS AFFILIATES AND
SUBLICENSEES OF LICENSED PRODUCTS, AT THE RATE OF [***] PERCENT ([***]%) WITH
RESPECT TO LICENSED PRODUCTS CONTAINING A LICENSED COMPOUND THAT IS COVERED BY
SYNTA PATENT RIGHTS OR JOINT PATENT RIGHTS; PROVIDED, HOWEVER, THAT IF SUCH
LICENSED PRODUCT IS INSTEAD OR ALSO COVERED BY ROCHE PATENT RIGHTS, THEN SUCH
ROYALTY RATE SHALL BE [***] PERCENT ([***]%).
ANY ROYALTIES PAYABLE BY SYNTA
PURSUANT TO THIS SECTION 12.6.8 SHALL BE PAYABLE COMMENCING ON THE FIRST
COMMERCIAL SALE (WITH THE DEFINITION OF FIRST COMMERCIAL SALE SET FORTH IN
SECTION 1.26 APPLIED TO SUCH LICENSED PRODUCT) OF SUCH LICENSED PRODUCT BY
SYNTA, ITS AFFILIATES OR SUBLICENSEES, AND SHALL EXPIRE ON A COUNTRY-BY-COUNTRY
BASIS AND LICENSED PRODUCT-BY-LICENSED PRODUCT BASIS ON THE EXPIRATION OF THE
LAST VALID CLAIM OF THE ROCHE PATENT RIGHTS, SYNTA PATENT RIGHTS OR JOINT PATENT
RIGHTS, AS APPLICABLE, COVERING THE LICENSED COMPOUND CONTAINED
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934,
as amended.
52
IN SUCH LICENSED PRODUCT IN SUCH COUNTRY, AND SUBJECT TO ROYALTY DEDUCTIONS AND
ADJUSTMENTS CORRESPONDING TO THOSE SET FORTH UNDER SECTION 7.6; AND
12.6.9.
ASSIGNMENT OF TRADEMARK.
ROCHE SHALL ASSIGN TO SYNTA
ROCHE'S AND ITS AFFILIATES' ENTIRE RIGHT, TITLE AND INTEREST IN, TO AND UNDER
ANY TRADEMARK USED BY ROCHE, ITS AFFILIATES OR SUBLICENSEES EXCLUSIVELY IN
CONNECTION WITH THE COMMERCIALIZATION OF A LICENSED PRODUCT, IT BEING UNDERSTOOD
THAT SUCH ASSIGNMENT SHALL NOT INCLUDE THE ROCHE NAME OR TRADEMARK FOR THE ROCHE
COMPANY ITSELF.
12.7.
CONSEQUENCES OF TERMINATION BY ROCHE FOR SYNTA
BREACH.
IF ROCHE TERMINATES THIS AGREEMENT PURSUANT TO SECTION 12.4
(TERMINATION FOR CAUSE), THEN, AT ROCHE'S ELECTION, (A) THE RESEARCH LICENSES
GRANTED TO ROCHE PURSUANT TO SECTION 6.1 (RESEARCH LICENSES) SHALL CONTINUE
SOLELY IF THE TERMINATION OCCURS DURING THE RESEARCH TERM AND SOLELY TO ENABLE
ROCHE TO PERFORM THE RESEARCH ACTIVITIES WITH RESPECT TO ANY COLLABORATION
COMPOUND WHICH WERE NOT COMPLETED BY SYNTA UNDER THE RESEARCH PLAN, AND (B) THE
DEVELOPMENT AND COMMERCIALIZATION LICENSES GRANTED TO ROCHE PURSUANT TO
SECTION 6.2 (DEVELOPMENT AND COMMERCIALIZATION LICENSE TO ROCHE) SHALL CONTINUE
SOLELY WITH RESPECT TO LICENSED COMPOUNDS AND LICENSED PRODUCTS; IN EACH CASE
SUBJECT TO ROCHE'S CONTINUED COMPLIANCE WITH ROCHE'S PAYMENT AND OTHER
OBLIGATIONS UNDER ARTICLE VII WITH RESPECT TO SUCH COLLABORATION COMPOUNDS,
LICENSED COMPOUNDS OR LICENSED PRODUCTS.
12.8.
EFFECT OF TERMINATION AND EXPIRATION; ACCRUED
RIGHTS AND OBLIGATIONS.
UPON TERMINATION OR EXPIRATION OF THIS AGREEMENT FOR
ANY REASON, ALL RIGHTS AND OBLIGATIONS OF THE PARTIES, INCLUDING THE LICENSES
GRANTED HEREUNDER, SHALL END, UNLESS OTHERWISE SET FORTH IN THIS ARTICLE XII.
TERMINATION OF THIS AGREEMENT FOR ANY REASON SHALL NOT RELEASE EITHER PARTY FROM
ANY LIABILITY THAT, AT THE TIME OF SUCH TERMINATION, HAS ALREADY ACCRUED OR THAT
IS ATTRIBUTABLE TO A PERIOD PRIOR TO SUCH