Royalty Report: Drugs, Biotechnology, Disease – Collection: 1417

License Grant

The Licensor hereby grants to Licensee of the Netherlands in the License Field in the License Territory
(i) an exclusive, royalty-bearing license under its rights in Patent Rights to make, have made, use, have used, Sell and have Sold Products and Processes; and
(ii) the right to grant sublicenses under the rights granted (a)(i) to Sublicensees.

License Property

Technology relates to a patent family with claims directed to an alternative RNA repair platform that uses an RNA oligonucleotide complex rather than a single stranded oligonucleotide. This patent family includes an issued U.S. patent with a composition of matter claim directed to an RNA oligonucleotide complex containing two specific oligonucleotide sequences for modulating the expression or activity of a CFTR gene product, and an allowed U.S. patent application with method of use claims relating to the treatment of a symptom of cystic fibrosis in a subject by administering to the subject an RNA oligonucleotide complex comprising two oligonucleotides, as well as a composition of matter claim directed to a specific RNA complex for modulating the activity of a CFTR gene product.

Field of Use

License Field shall mean all therapeutic indications in the field of Cystic Fibrosis.

The Licensee was founded in May 2012 with the goal of developing a treatment for cystic fibrosis.

License Grant

The Licensor  grants to the Licensee of the Netherlands in the License Field in the License Territory;
an exclusive license under its rights in Patent Rights to make, have made, use, have used, Sell and have Sold Products and Processes; and the right to grant sublicenses, provided that in each case Company shall be responsible for the performance of any obligations of Sublicensees, and,

The license granted includes
—  the right to grant to the final purchaser, user or consumer of Products the right to use such purchased Products in a method coming within the scope of Patent Rights within the License Field and License Territory; and
—  the right to grant a Distributor the right to Sell, but not to make, have made, use or have used, such Products and/or Processes for or on behalf of Company, its Affiliates and Sublicensees in a manner consistent with this Agreement.

License Property

The patents are for Oligonucleotide Complex Compositions and Methods of Use as Gene Alteration Tools; and,  Oligonucleotide Complexes and their Derivatives as Gene Alteration Tools.

Royalty obligations are based on the development or commercialization of QR-010. The patent rights relate to certain RNA repair technologies.  QR-010 is a RNA-based oligonucleotide, designed to address the underlying cause of the disease by repairing the mRNA defect encoded by the DF508 mutation in the CFTR gene of CF patients. As of July 2014, QR-010 has been granted orphan drug designation in the United States and the European Union.

Field of Use

The rights granted include the exploitation of the in-licensed intellectual property rights in all therapeutic indications in the field of cystic fibrosis.

License Grant

The Canadian Licensee holds an exclusive worldwide License to certain patent rights relating specifically to antisense and related technologies described in patent applications that were pending at the time of the Agreement with Licensor, a Canadian University.

Subsequent patent amendments or advancements to these patents remain as the property of the Licensee, without License rights accruing back to the Licensor.

License Property

Antisense refers to short DNA or RNA sequences, termed oligonucleotides, which are designed to be complementary to a specific gene sequence. The goal is to alter specific gene expression resulting from the binding of the antisense oligonucleotide to a unique gene sequence.

License Grant

The Parties entered into an exclusive worldwide license or sublicense, as applicable, under the Licensee Antisense Patent Rights, to practice Antisense Technology and to discover, develop, make, have made, use, sell, have sold, offer to sell, import and have imported Antisense Products.  Licensee and its Subsidiaries shall have the right to grant sublicenses under the license from Licensor set forth to third parties only to discover, develop, make, have made, use, sell, have sold, offer to sell, import and have imported Licensee Antisense Drugs.

License Property

Antisense Technology shall mean the use of any oligonucleotide or oligonucleotide analog or mimic thereof targeted to a specific sequence of RNA that hybridizes to such sequence and through such hybridization modulates the production of the targeted gene product. The term Antisense Technology shall not include Ribozyme Technology.

US Antisense Patents
5,929,226 – Antisense oligonucleotide alkylphosphonothioates and arylphospohonothioates
5,652,355 – Hybrid oligonucleotide phosphorothioates
6,143,881 – Hybrid oligonucleotide phosphorothioates

Antisense Products shall mean oligonucleotides or oligonucleotide analogs or mimics thereof targeted to a specific sequence of RNA that hybridize to such sequence and through such hybridization modulate the production of the targeted gene product. The term Antisense Products shall not include Ribozymes.

Field of Use

This agreement pertains to the drug industry.

License Grant

The University Licensor grants a non-transferable, non-exclusive license to make, have made, use, import, offer for sale and sell the Licensed Products and the Licensed Services in the United States under the Patent Rights in the Licensed Field from the effective date of this Agreement.

License Property

The licensed property is for CF Mutations in the CFTR Gene and cystic fibrosis genetic markers.

The licensed product is  any material, composition, Licensor marker, nucleic acid sequence, nucleic acid probe, nucleic acid primer, in vitro diagnostic test, and kit containing any or all of the above, or any other product, process or method, the manufacture, use or sale of which would constitute, but for the license granted to Company, an infringement of a claim.

Field of Use

The use is in the field of bio-electric-microfluidic instrumentation/biochip cartridge for cystic fibrosis molecular diagnostic market.

License Grant

Licensor hereby grants to Licensee a non-exclusive license under the Licensed Patents and Technology to make, have made, use (including use in the performance of services for, by or on behalf of its customers), have used, import, market, and/or sell in the Territory, Products designed and marketed solely for use in the Field of Use.

License Property

Technology, as used in this Agreement, shall mean the information, manufacturing techniques, data, designs or concepts developed by Licensor, covering mutations in the gene for cystic fibrosis and uses thereof as encompassed by the claims of U.S. Patent No. 5,981,178 and U.S. Patent No. 6,001,588 entitled “Introns and Exons of the Cystic Fibrosis Gene and Mutations at Various Positions of the Gene”.

5,981,178 – Methods for screening for mutations at various positions in the introns and exons of the cystic fibrosis gene

6,001,588 – Introns and exons of the cystic fibrosis gene and mutations thereof

Licensed Patent(s) shall mean U.S. Patent No. 5,981,178, U.S. Patent No. 6,001,588 and PCT Patent Application No. PCT/CA91/00009 entitled “Introns and Exons of the Cystic Fibrosis Gene and Mutations at Various Positions of the Gene” and all foreign equivalent patent applications and Patent Cooperation Treaty filings, and all patents issuing therefrom, in which Licensor has or acquires a property interest, the current list of such application. Licensed Patent(s) shall also include any divisional, continuation, reissue, reexamination or extension of the above-described patent applications and resulting patents, along with any extended or restored term, and any confirmation patent, registration patent, or patent of addition.

Field of Use

Field of Use shall refer to the field for which Products may be designed, manufactured, used and/or marketed under this Agreement, and shall mean solely Products to be used for the research of, diagnosis of and screening for the disease cystic fibrosis.
Cystic fibrosis is a hereditary disease that affects the lungs and digestive system. The body produces thick and sticky mucus that can clog the lungs and obstruct the pancreas.

License Grant

The University Board hereby grants to Licensee a royalty-bearing, exclusive worldwide license under licensed subject matter to manufacture, have manufactured, import, use, offer for sale and/or sell licensed products for use within field.

License Property

GENE THERAPY means therapeutic use of a designated gene (including therapeutic use of a homolog or derivative, or gene product thereof) which may be incorporated into vectors or other carriers, in a pharmaceutical composition that is administered by in vivo delivery (i.e. introduced inside the body) or by ex vivo delivery (i.e. introduced into cells or other complexes outside of the body which are subsequently introduced into the body). GENE THERAPY specifically excludes ANTISENSE THERAPY.

ANTISENSE THERAPY means therapeutic use of oligonucleotides or modified oligonucleotides that bind in a sequence specific manner to DNA or mRNA.

Field of Use

Field means Gene Therapy for treatment of heart disease and heart failure.