Royalty Report: Drugs, Biotechnology, Veterinary – Collection: 1318

$100.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 4

Description

This collection of transactions and supporting information was developed using our AI algorithm to curate similar royalty reports into a cohesive collection to support your licensing, transfer pricing or other transaction scenarios where documented royalty rates and/or deal terms are important.
Category: Technology Licenses
Created On: 2022-04-28
Record Count: 4

Primary Industries

  • Drugs
  • Biotechnology
  • Veterinary
  • Pain
  • Delivery
  • Disease
  • Therapeutic
  • Pharmaceuticals

IPSCIO Report Record List

Below you will find the records curated into this collection.  This summary includes the complete licensed property description so that you can review and determine if this collection covers the topics, technology or transaction type that is relevant for your needs.  The full report will include all relevant deal data such as the royalty base, agreement date, term description, royalty rates and other deal terms.  For reference, here is a sample of a full IPSCIO curated royalty rate report: Sample Report

IPSCIO Record ID: 1318

License Grant
Licensor hereby grants to Licensee an exclusive, worldwide license under the Patent Rights and Know-How to develop, have developed, make, have made, use, distribute for sale, have distributed for sale, sell and have sold Product.  Licensor hereby grants to Licensee and Licensee accepts, an irrevocable, royalty-free, fully-paid, exclusive, worldwide license under the Patent Rights and Know-How to develop, have developed, make, have made, use, distribute for sale, have distributed for sale, sell and have sold Propofol Product.
License Property
Licensor and Licensee are parties to the License Agreement dated April 2, 1999, as amended April 26, 2002 (effective February 6, 2002) and August 20, 2004 (the Agreement), pursuant to which Licensor granted to Licensee an exclusive license under certain proprietary cyclic peptide, prodrug and inhalation technologies to develop, make, use and sell products.  Whereas, Licensor and Licensee are also parties to the License Agreement dated July 6, 2001 (the 2001 License) pursuant to which Licensor granted to Licensee an exclusive license under certain pending US and foreign patent applications claiming novel N-H bond containing prodrugs;   Whereas, Licensee desires to return to Licensor all Patent Rights under the Agreement (except those specifically described in the amended in this Agreement) including without limitation those rights relating to US Patent 5,672,584 (the Cyclic Peptide Patent) and any corresponding foreign patent applications and patents, US Patent 6,451,776 (the Alcohol Prodrug Patent), US Patent 5,985,856 (the Secondary and Tertiary Amine Patent) and any corresponding foreign patent applications and patents (collectively, the Returned Patent Rights), and Licensee desires to terminate and return all rights under the 2001 License. Whereas, the Parties now desire to document the termination of the 2001 License and to amend the Agreement to narrow the licensed rights to certain prodrug technologies and to reflect the Parties’ agreement regarding the elimination of certain payment terms under the Agreement.

Patent Rights shall mean (i) U.S. Patent 6,204,257 (the Phenol Prodrug Patent), (ii) any corresponding foreign patent applications and patents, (iii) U.S. patent application 10/208647 (a pending continuation application claiming the priority date of the Phenol Prodrug Patent), and (iv) all divisions, continuations, continuations-in-part, patents of addition, and substitutions of, and all patents issuing on, any of the foregoing, together with all registrations, reissues, reexaminations or extensions of any kind with respect to any such patents, in each case to the extent the same claim and disclose subject matter in the Phenol Prodrug Patent and any patents issued thereon.

On June 11, 2002, Dr. Roger A. Rajewski and Dr. Michelle P. McIntosh submitted to KU and Licensor a certain invention disclosure questionnaire describing an invention referred to as Delivery of a Sedative/Anti-Emetic Compound Via Inhalation (the Inhalation Technology). The term Patent Rights shall also include – in addition to any rights that would otherwise be treated as Patent Rights under this Section 1.08 – (i) the draft patent application related to the Inhalation Technology, and any revisions thereof, in existence on the Third Amendment Effective Date (Existing Application), (ii) any patents issued thereon, (iii) all patents and patent applications claiming (or which could claim) priority therefrom including all divisions, continuations, continuations-in-part, patents of addition, and substitutions of any of the foregoing, (iv) any corresponding foreign patent applications and patents, and (v) all registrations, reissues, reexaminations or extensions of any kind with respect to any of the foregoing.

Product shall mean any pharmaceutical or veterinary products covered by one or more of the claims of an issued patent under the Patent Rights, but excluding Propofol Product.

Propofol Product shall mean prodrugs of propofol, their compositions, methods of use, and processes for making as claimed by the Patent Rights.

Field of Use
Propofol is a short-acting, intravenously administered hypnotic/amnestic agent. Its uses include the induction and maintenance of general anesthesia, sedation for mechanically ventilated adults, and procedural sedation. Propofol is also commonly used in veterinary medicine.

IPSCIO Record ID: 3154

License Grant
Licensor and Licensee entered into a License Agreement effective April 2, 1999, wherein Licensor granted Licensee an exclusive license under certain proprietary cyclic peptide and prodrug technologies to develop, make, use and sell products; and Whereas, on April 26, 2002, the parties entered into a First Amendment to the License Agreement the First Amendment), effective February 6, 2002, wherein the parties amended the terms and conditions of the Agreement (with the initial Agreement, as amended by the First Amendment, being referred to herein as the Amended Agreement); and Whereas, the Parties now desire to make certain additional amendments to the terms of the Amended Agreement to license an additional invention.
License Property
U.S. Patent No. 5,672,584 – Cyclic Prodrugs of Peptides and Peptide Nucleic Acids Having Improved Metabolic Stability and Cell Membrane Permeability

U.S. Patent No. 6,204,257 – Water Soluble Prodrugs of Hindered Alcohols and Phenols (the Alcohol and Phenol Patent)

U.S. Patent No. 6,451,776 – Water Soluble Prodrugs of Hindered Alcohols and Phenols (the Alcohol and Phenol Patent II)

U.S. Patent No. 5,985,856 – Water Soluble Prodrugs of Secondary and Tertiary Amine Containing Drugs and Methods of Making Thereof (the Secondary and Tertiary Amine Patent)

Field of Use
On June 11, 2002, Dr. Roger A. Rajewski and Dr. Michelle P. McIntosh submitted to KU and Licensor a certain invention disclosure questionnaire describing an invention referred to as Delivery of a Sedative/Anti-Emetic Compound via Inhalation (the Inhalation Technology). The term Patent Rights shall also include – in addition to any rights that would be otherwise treated as Patent Rights in this Agreement- (i) the draft patent application and any revisions thereof filed on the Inhalation Technology (which patent application shall be treated as patents within the definition of Existing Application), (ii) any patents issued thereon, (iii) all patents and patent applications claiming (or which could claim) priority therefrom including all divisions, continuations, continuations-in-part, patents of addition, and substitutions of any of the foregoing, (iv) any corresponding foreign patent applications and patents, and (v) all registrations, reissues, reexaminations or extensions of any kind with respect to any of the foregoing.

IPSCIO Record ID: 28741

License Grant
The Licensor hereby grants the Licensee, a limited non-exclusive, worldwide, non-transferable right and license, under the Licensor patents to develop, use, make and have made covered products within the territory; and to market, promote, sell, offer to sell, transfer, distribute, import and export covered products in the territory.
License Property
The Licensor entered into a Separation and Release Agreement with the Licensee, a consultant to the Company. Under the terms of the Separation Agreement, the parties agreed to terminate the License Agreement dated as of February 12, 2012, granting the Licensor the right to utilize certain of the Licensee's patents relating to Sugar Lipid Technology for the potential commercial formulation of Propofol.

Propofol (INN, marketed as Diprivan by AstraZeneca) is a short-acting, intravenously administered hypnotic/amnestic agent.

Each of the Licensor and the Licensee shall pay to the other party royalties on their quarterly net sales of covered products that rely on any valid claims. For covered products sold by either Party or their respective Affiliates, the royalty rate shall be five percent of Net Sales

List of Licensor Patents
Enhanced delivery of antifungal agents
PEG-lipid conjugates for liposomes and drug delivery
W02010107487  Lipid-drug conjugates for drug delivery
W02010085347 10733728.9  PEG-lipid conjugates for increasing the solubility of drug compounds

Field of Use
Propofol's uses include the induction and maintenance of general anesthesia, sedation for mechanically ventilated adults, and procedural sedation. Propofol is also commonly used in veterinary medicine.

IPSCIO Record ID: 1315

License Grant
Licensor and Licensee entered into a License Agreement effective April 2, 1999, wherein Licensor granted Licensee an exclusive license under certain proprietary cyclic peptide and prodrug technology to develop, make, use and sell products.  Whereas, the Parties desire to amend the terms of the Agreement as provided in this Amendment to change the royalty payments due Licensor under such license grant in consideration for the payment by Licensee of certain ongoing expenses for the filing and maintenance of patents in non-United States countries as of the Amendment Effective Date.
Field of Use
The rights granted apply to the amendment to change the royalty payments due of certain ongoing expenses for the filing and maintenance of patents in non-United States countries.
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