Description
Category: Technology Licenses
Created On: 2022-04-28
Record Count: 4
Primary Industries
- Drugs
- Therapeutic
- Disease
- Osteoarthritis
- Pharmaceuticals
- Pain
- Tissue
- Biotechnology
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: 191384
The licensed patents and technology relate to abaloparatide, also known as TYMLOSTM for the treatment of postmenopausal women with osteoporosis at high risk for fracture defined as history of osteoporotic fracture, multiple risk factors for fracture, or patients who have failed or are intolerant to other available osteoporosis therapy.
IPSCIO Record ID: 7212
The Licensor also granted us an exclusive right and License under the compound technology and related patents to make and have made compounds or product in Japan.
The Licensor also granted the Licensee an exclusive right and License under certain formulation technology and related patents solely for purposes of enabling us to develop, manufacture and commercialize compounds and products covered by the compound technology License in all countries, except Japan and France.
The Licensor shall also pay us a mid-single digit royalty on Licensor's allocable portion of aggregate revenue from the sale of products by both parties in France.
The Licensed Technology involves certain compound technology and related patents covering BA058 to research, develop, manufacture and commercialize certain compounds and related products in all countries, except Japan (where we do not hold commercialization rights) and France (where our commercialization rights are subject to certain co-marketing and co-promotion rights retained by the Licensor).
Specifically, the Licensee Licensed US Patent No. 5,969,095, entitled Analogs of Parathyroid Hormone, US Patent No. 6,544,949, entitled Analogs of Parathyroid Hormone and the corresponding foreign patents and continuing patent applications.
In addition, Licensee has rights to joint intellectual property including rights to US Patent No. 7,803,770 and related patent applications both in the United States and worldwide (excluding Japan) that cover the method of treating osteoporosis using the Phase 3 clinical dosage strength and form.
IPSCIO Record ID: 60407
IPSCIO Record ID: 6978
a) an exclusive (even as to FC ) right and license in all countries of the Territory, under the FC Compound Technology and the FC Joint Technology Rights, to research, develop, register, use, make, have made, import, export, market, distribute, offer for sale and sell Licensed Compound and/or Licensed Product in the Territory (it being understood and agreed that, notwithstanding the foregoing exclusive grant to the Company, Company hereby authorizes and consents to the exercise by FC of any and all rights under the FC Compound Technology if and to the extent necessary for the sole purpose of FC performing its obligations under Section 9.1 of this Agreement or under the Research Agreement);
b) an exclusive (even as to FC and Teijin) right and license under the FC Compound Technology and the FC Joint Technology Rights, to make and have made Licensed Compound and/or Licensed Product in Japan (it being understood that the foregoing exclusive grant to the Company shall not limit or diminish the obligations of the Company);
c) an exclusive (even as to FC) license in all countries of the Territory, under FC Formulation Technology, for use thereof only and solely to develop, register, use, make, have made, import, export, market, distribute, offer for sale and sell Licensed Compound and/or Licensed Product in the Territory, to the exclusion of any use of the FC Formulation Technology for research purposes. Notwithstanding the foregoing exclusive license rights granted to the Company in this paragraph with respect to the FC Formulation Technology, the Company shall not exercise any or all of such exclusive license rights with respect to any formulation for Licensed Compound and/or Licensed Product that is different from the current formulation therefore as of the Effective Date unless and until the Company and FC enter into the Research Agreement. During the Term, (i) FC shall not, except pursuant to the Research Agreement, use all or any portion of the FC Formulation Technology for research purposes related to, or in connection with, Licensed Compound and/or Licensed Product, and (ii) FC shall not grant to any third party the right to use all or any portion of the FC Formulation Technology for research purposes related to, or in connection with, Licensed Compound and/or Licensed Product. During the Term, (x) FC shall not use all or any portion of the FC Formulation Technology for any purpose or use (including, without limitation, research, development and commercial purpose or use) related to, or in connection with, Parathyroid Hormone (PTH), PTH related protein (PTHrP) or analogs of PTH or PTHrP, and (y) FC shall not grant to any third party the right to use all or any portion of the FC Formulation Technology for any purpose or use (including, without limitation, research, development and commercial purpose or use) related to, or in connection with, PTH, PTHrP or analogs of PTH or PTHrP.
Sublicenses The rights and licenses granted to the Company shall include the right to grant sublicenses to a third party under such rights and licenses, in whole or in part, and shall also include the right to grant to any direct or indirect third party sublicensee of such rights and licenses granted to the Company the right of such direct or indirect third party sublicensee to further sublicense such rights and licenses to the Company to another third party. If the Company grants a sublicense, the Company shall ensure that all of the applicable terms and conditions of this Agreement shall apply to the third party sublicensee to the same extent as they apply to the Company with respect to, and to the extent, of the rights sublicensed. The Company shall assume full responsibility for the performance of all obligations so imposed by the Company on such third party sublicensee and will itself account to FC for all payments due under this Agreement by reason of such sublicense.
Licenses to FC The Company shall grant to FC an exclusive (even as to the Company) royalty free license under the Company Inventions, Company Joint Technology Rights, Company Know-How and Company Patent Rights, to research, develop, register, use, import, export, market, distribute, offer for sale and sell Licensed Compound and/or Licensed Product in Japan; provided, however, that (i) such Licensed Compound and/or Licensed Product is Covered by a Valid Claim of FC Patent Rights in the United States, Canada and the European Union and (ii) such Licensed Compound and/or Licensed Product is the same compound or product as Licensed Compound and/or Licensed Product Developed or being Developed by the Company pursuant to the Development Plan. The Company shall make and implement any such grant of exclusive license rights to FC at such time as FC shall have presented evidence reasonably satisfactory to the Company that all inventions, know-how or patent rights owned or controlled by Teijin that are necessary or useful to research, develop, register, use, import, export, market, distribute, offer for sale and sell Licensed Compound and/or Licensed Product in the Territory are included within FC Compound Technology. Such evidence may include a written agreement executed by Teijin acknowledging and agreeing that, for purposes of this Agreement, all inventions, know-how or patent rights owned or controlled by Teijin that are necessary or useful to research, develop, register, use, import, export, market, distribute, offer for sale and sell Licensed Compound and/or Licensed Product in the Territory are included within FC Compound Technology. FC shall have the right to sublicense to Teijin any or all of the exclusive license rights that the Company shall grant to FC in the manner contemplated under this paragraph, and otherwise FC shall not have the right to sublicense, assign or otherwise transfer to any person or entity any or all of such exclusive license rights. Subject to the terms of this Agreement, the Company shall grant to FC a non-exclusive license under the Company Inventions, Company Know-How and Company Patent Rights, to co-promote or co-market Licensed Compound and/or Licensed Product in France pursuant to, and in accordance with, the provisions of Article 10.2. The Company shall make and implement any such grant of non-exclusive license rights to FC in the co-promotion agreement or co-marketing agreement to be entered into by the Parties pursuant to, and in accordance with. FC shall not have the right to sublicense, assign or otherwise transfer to any person or entity any or all of the non-exclusive license rights that the Company shall grant to FC in the manner contemplated under this paragraph.
BA058 is an analogue of the first 34 amino acids of human parathyroid hormone-related peptide [hPTHrP(1-34)]. BA058 was originally discovered and developed under the name BIM44058.
Licensor has developed and owns intellectual property rights related to proprietary compounds known as BIM 44058 and analogs and possesses know-how including know-how related to formulation technology including sustained release formulations.
FC Patent Rights
FC Compound Patent Rights
Patent Family In Which BIM-44058 Is Claimed
5,969,095; 5,723,577; 5,955,574; 6,544,949; 6,921,750
FC Formulation Patent Rights
• Solid drugs (minicylinders) also referred to as IRE WO 96/07397 = EP 778,767
• Needle-less WO 96/08289= EP 782,465 = US 5,542,920
• Vac WO 97/46202
• Micro-VAC 2 (WO 01/26718).
5,969,095 Peptide variants of fragment (1-34) of parathyroid hormone, in which at least one of the amino acid residues at positions 7, 11, 23, 24, 27, 28, and 31 is cyclohexylalanine, or at least one of the amino acid residues at positions 3, 16, 17, 18, 19, and 34 is .alpha.-aminoisobutyric acid; or, alternatively, at least the amino acid residue at position 1 is .alpha.,.beta.-diaminopropionic acid, the amino acid residue at position 27 is homoarginine, or the amino acid residue at position 31 is norleucine.
BA058 is indicated to increase bone mass in men with primary or hypogonadal osteoporosis who are at high risk of fracture.
