Deal 约束与谈判策略

1. Deal framing

不要把问题表述为：

Our technology may infringe, therefore we indemnify MNC.

应表述为：

There is a disclosed third-party patent family that may be asserted in specific territories against one technical feature. The parties will allocate that known risk through territory-specific economics, third-party royalty offsets, liability caps, and control of settlement / launch-at-risk conduct.

中文谈判口径：这是已披露的、地域和 claim 状态相关的第三方 IP 负担，不是我方对全球产品商业化风险的无限兜底。

2. 我方目标

1. 继续推进 MNC out-license。
2. 避免 known patent family 变成 uncapped IP indemnity。
3. 把可能的第三方许可费做成 royalty stack / offset，而不是现金赔偿。
4. 把 China mainland 和未授权/未覆盖 territory 排除。
5. 保留共同挑战、design-around、non-infringement opinion 的空间。
6. 阻止 MNC 自行 launch-at-risk 或自行 settlement 后把账单转给我方。

3. Term sheet 应包含的结构

Known IP Risk Schedule

目标 patent family 应列入披露清单：PCT/EP2018/075824 family、EP3684786B1、US12091434B2 and related U.S. family members、Paris-Saclay / CNRS ownership、Kelonia / Lilly commercial association if confirmed by counsel。

The parties acknowledge that the patent family listed in Schedule [X] has been disclosed to Licensee and constitutes a Known Third-Party IP Matter. Any Losses, royalties, settlement amounts, or business impacts arising from such Known Third-Party IP Matter shall be allocated solely as set forth in Section [Risk Allocation], and shall not constitute a breach of Licensor's general non-infringement representations.

Limited IP indemnity

Indemnity 只覆盖 final non-appealable judgment or settlement approved by us、valid/enforceable/unexpired claim、covered product、covered territory、post-effective-date commercial acts by MNC、actual third-party damages。

必须排除 MNC lost profits、business interruption、reputational damages、consequential / special / punitive damages、MNC willfulness 导致的 enhanced damages、未经同意的 voluntary settlement、无专利覆盖 territory。

Licensor's aggregate liability for the Known Third-Party IP Matter shall not exceed [__]% of amounts actually received by Licensor under this Agreement, or USD [__], whichever is lower. In no event shall Licensor be liable for consequential damages, Licensee lost profits, business interruption, reputational harm, punitive or enhanced damages, or any amounts resulting from Licensee's willful conduct, launch-at-risk decision, refusal to implement a commercially reasonable design-around, or settlement entered without Licensor's prior written consent.

Royalty stacking / offset

Third-party license payments should first reduce royalties owed to us, rather than create uncapped cash reimbursement.

If Licensee is required to pay royalties to a third party under the Known Third-Party IP Matter for the Exploitation of a Licensed Product in a Covered Territory, Licensee may credit [50%-100%] of such third-party royalties against royalties otherwise payable to Licensor for such Licensed Product in such Covered Territory, provided that royalties payable to Licensor shall not be reduced below [__]% of Net Sales.

Settlement consent and control

Licensee shall not settle, compromise, or admit liability with respect to the Known Third-Party IP Matter in a manner that imposes payment obligations, field restrictions, product restrictions, admissions, or other obligations on Licensor without Licensor's prior written consent, not to be unreasonably withheld.

Launch-at-risk exclusion

No indemnity shall apply to Losses arising from Licensee's decision to launch, continue selling, or expand commercialization in a jurisdiction after receiving written notice of a credible infringement claim or after counsel has advised that a commercially reasonable non-infringement, invalidity, license, or design-around path should be pursued, unless Licensor has approved such launch-at-risk strategy in writing.

4. Territory split

5. 谈判策略

Opening position

We have disclosed the family and are not ignoring it. The issue is not whether the MNC should have comfort; the issue is how to allocate a known, bounded, challengeable third-party IP burden without converting it into an uncapped global product indemnity.

What to concede

• 该 patent family 是 known matter，可以进入 schedule。
• MNC 可以获得 cooperation rights。
• MNC 对实际第三方 royalty 可以获得 royalty offset。
• 对于 final judgment / approved settlement，可以有 capped indemnity。
• Europe 可单独定价。

Do not concede

• Uncapped indemnity。
• General rep breach。
• Full product sales base。
• China mainland inclusion。
• Pass-through of voluntary settlement。
• Pass-through of MNC willfulness。

6. Case response scripts

If MNC cites Juno/Kite

Juno/Kite is exactly why we need a cap and a validity-sensitive allocation. The headline judgment was reversed because the broad CAR-T claim lacked written description. It is not a reason for uncapped indemnity.

If MNC cites injunction risk

Injunction risk is a commercial issue, but U.S. injunctions are equitable after eBay and Europe should be handled territory-by-territory. The right solution is cooperation, design-around, and third-party license offset, not global uncapped indemnity.

If MNC demands full royalty reimbursement

We can offset actual third-party royalties against our royalty, subject to a floor. We cannot underwrite an unrelated commercial settlement or a full-product royalty base.

7. Internal decision points

1. Target cap: fixed dollar amount or percentage of received cash。
2. Royalty offset percentage and floor。
3. Whether Europe gets separate economics。
4. Whether MNC has defense control or joint control。
5. Whether we proactively approach Kelonia/Lilly/Paris-Saclay for license intelligence。
6. Whether a design-around path exists and timeline/cost。

8. Board summary

The VSV-G / Cocal-G 354 issue is real enough to be priced, but not clean enough to justify uncapped indemnity. The best structure is to disclose the patent family, split economics by territory, cap our exposure, offset third-party royalties against our economics, and prevent MNC-controlled settlement or launch-at-risk conduct from flowing back to us. This keeps the deal alive while avoiding a scenario where one known, challengeable patent family absorbs the entire value of the out-license.