Royalty Report: Genome, Energy & Environment, Drugs – Collection: 203290

License Grant

This License of Biomolecules and TMRI Platform Technology Improvements grants various rights depending on biomolecules, exclusivity and the fields of use.

For Exclusive Biomolecule License, Licensor grants to the Swiss Licensee and its Affiliates an exclusive, worldwide license, with the right to sublicense, under the Patent Rights and Know-How Controlled by Licensor and its Affiliates:
– (A) to make, have made, and use all of the Existing Biomolecules that demonstrated the minimum criteria levels specified in the applicable Project Plans under the Research Collaboration Agreement prior to the Effective Date and that are produced using any means of production to use, develop, make, have made, import, sell, offer for sale and have sold Licensee Products for use in the Former Licensee Exclusive Field, the Licensee Exclusive Field, the Biofuel Field, and/or Other Existing Research;
– (B) to make, have made, and use all of the Existing Biomolecules that have not demonstrated the minimum criteria levels specified in the applicable Project Plans under the Research Collaboration Agreement prior to the Effective Date and that are produced using Transgenic Expression to use, develop, make, have made, import, sell, offer for sale and have sold Licensee Products for use in the Licensee Exclusive Field;
– (C) to make, have made, and use those specific Existing Biomolecules listed that have not demonstrated the minimum criteria levels specified in the applicable Project Plans under the Research Collaboration Agreement prior to the Effective Date and that are produced using any means of production including Fermentation and Transgenic Expression to use, develop, make, have made, import, sell, offer for sale and have sold Licensee Products for use in the Animal Feed Field;
– (D) to make, have made, and use those specific Existing Biomolecules listed that have not demonstrated the minimum criteria levels specified in the applicable Project Plans under the Research Collaboration Agreement prior to the Effective Date and that are produced using any means of production including Fermentation and Transgenic Expression to use, develop, make, have made, import, sell, offer for sale and have sold Licensee Products for use in the Biofuel Field and/or the Animal Feed Field;
– (E) to make, have made, and use all of the Biomolecules discovered or identified under the Research Program that are produced using Transgenic Expression to use, develop, make, have made, import, sell, offer for sale and have sold Licensee Products for use in the Licensee Exclusive Field and/or the Other Existing Research;
– (F) to make, have made, and use all of the Subsequent Biomolecules referenced that are produced using Transgenic Expression to use, develop, make, have made, import, sell, offer for sale and have sold Licensee Products for use in the Licensee Exclusive Field; and
– (H) to use for any purpose fermentable sugars, other chemicals and/or byproducts resulting from conversion of Biomass (such as lignins) in each case that result from exercise of the rights under any of the foregoing licenses.

For Non-Exclusive Biomolecule License, Licensor grants to the Swiss Licensee and its Affiliates a non-exclusive license, with the right to sublicense, under the Patent Rights and Know-How Controlled by Licensor and its Affiliates:
– (A) to make, have made and use any Biomolecules discovered or identified under the Research Program that demonstrate the minimum criteria levels specified in the applicable Project Plans on or after the Effective Date and that are produced by Fermentation and included as a component in a Mixed Delivery Product to use, develop, make, have made, import, sell, offer for sale and have sold such Mixed Delivery Product for use in the Animal Feed Field and/or Biofuel Field;
– (B) to make, have made and use all of the Subsequent Biomolecules referenced that are produced by Fermentation and included as a component in a Mixed Delivery Product to use, develop, make, have made, import, sell, offer for sale and have sold Licensee Products for use in the Animal Feed Field and/or Biofuel Field; and
– (C) to use for any purpose fermentable sugars, other intermediate chemicals and/or byproducts resulting from conversion of Biomass (such as lignins) in each case that result from exercise of the rights under any of the foregoing licenses.

For the License of TMRI Platform Technology Improvements, Licensor grants the Swiss Licensee and its Affiliates an irrevocable, worldwide license, with the right to sublicense, to use the TMRI Platform Technology Improvements which are owned or otherwise Controlled by Licensor, in the Licensee Exclusive Field and in the Former Licensee Exclusive Field, it being understood and agreed that such license shall be exclusive during the Research Term and thereafter, such license shall be non-exclusive.

License Property

TMRI Platform Technology means all tools, technologies and methods relating to proteomics, metabolomics, RNA dynamics and bioinformatics and methods to analyze and link these components of genomics.

“Biomolecule” means any Gene, RNA, and protein or chemical entity the synthesis of which is directed by such Gene or Gene pathway, which protein or chemical entity was produced by an organism.

“Fermentation” means a microbial fermentation process, including, without limitation, bacterial-, fungal- and yeast-based fermentation.

Field of Use

Animal Feed Field” means the use of Biomolecules in feed applications to alter, modify or improve feed conversion and/or animal nutrition, which Biomolecules may be produced or expressed through any means including without limitation through Fermentation or Transgenic Expression, but excluding all vaccines and therapeutic applications.

Biofuel Field” means the hydrolytic conversion of Biomass to fermentable sugars and/or other chemicals for use in fuel production. For the avoidance of doubt, the “Biofuel Field” shall not include the pre-treatment of Biomass to make it suitable for hydrolysis or the development and use of organisms designed to ferment the products of hydrolysis to fuels and/or other chemicals.

“Biomass” means material that originates from Plants which can be or is intended to be used as a feedstock in the research, development and/or production of biofuels and bioproducts, including without limitation bioethanol, biodiesel, other fuels for energy applications and chemicals for any purpose, including without limitation agricultural, food and non-food crops and their residues and wastes (e.g. normally non-food material from crops such as stalks, leaves, husks, seed fiber, hulls), forestry residues and wastes (e.g. wood chips, sawdust, cardboard, pressboard, dead trees, tree branches), municipal solid waste (e.g. household garbage and paper products), food processing and other industrial wastes, energy crops (e.g. fast growing trees and grasses grown for this purpose), including, but not limited to, corn stover, switchgrass, and sugar cane bagasse, as well as trees; Biomass is often significantly composed of cellulose, hemi cellulose and lignin structures and may also include oil crops and starch components of crops.

License Grant

For the License of Platform Technology and Biomolecules, Licensor grants the Swiss Licensee a perpetual, exclusive, worldwide license, with the right to sublicense, under the Patent Rights and Know-How Controlled by Licensor and its Affiliates to make, have made and use all of the Biomolecules that demonstrated the minimum criteria levels specified in the applicable Project Plans to use, develop, make, have made, import, sell, offer for sale and have sold Licensee Products for use in the Licensee Exclusive Field.

Licensor agrees to grant to Licensee and its Affiliates a perpetual, worldwide license, with the right to sublicense, under the Patent Rights and Know-How Controlled by Licensor and its Affiliates to make, have made and use all other Biomolecules discovered or provided in the course of the Projects under the Research Program which did not demonstrate such minimum criteria levels to use, develop, make, have made, import, sell, offer for sale and have sold Licensee Products for use in the Licensee Exclusive Field provided Licensor shall grant a license to such Biomolecule in the Licensee Exclusive Field to the greatest extent that Licensor has not granted such rights to a Third Party(ies).

Licensor agrees to grant a worldwide license, with the right to sublicense, to use the Platform Technology Improvements which are owned by Licensor in the Licensee Exclusive Field.

License Property

The licensed patents include, but are not limited to, Method For Identification, Separation And Quantitative Measurement Of Nucleic Acid Fragments;  System And Method For High Throughput Tissue Disruption;  System And Method For Storing Mass Spectrometry Data; and,  identification of Protein Interactions Using In Vitro Post-Translationally Modified Fusion Proteins.

Platform Technology means all tools, technologies and methods relating to proteomics, metabolomics, RNA dynamics and bioinformatics and methods to analyze and link these components of genomics, which are both not publicly available and are proprietary to or Controlled by Licensee or its Affiliates immediately prior to the closing of the transactions under the Transaction Agreement, and claimed or disclosed within the patent applications and patents or are within the scope of the material trade secrets related thereto.

Biomolecule means any Gene and RNA and protein or chemical entity the synthesis of which is directed by such Gene or Gene pathway, which protein or chemical entity was produced by an organism.

Gene means a polynucleotide sequence which can be transcribed into RNA and generally encodes a protein, optionally together with its regulatory sequences.

Plant means a monocotyledonous or dicotyledonous plant, or an angiosperm, a gymnosperm or a pteridophyte.

Field of Use

Licensee Exclusive Field means:  any Biomolecule with Plants as the expression host;  any Plant Gene; any Biomolecule for admixture to the product of any physical or chemical processing of Crops or derivatives of Crops provided that the product contains Plant material unique to Plants; any Biomolecule for any industrial application involving Crops or the close derivatives of Crops, but excluding inert or minor ingredients from or derived from a Plant source which do not materially add value to an end product of an industrial manufacturing process; any Biomolecule useful for Licensees actual or potential customers in the agriculture, food and/or natural fibers markets involving the use of Crops, or the use of close derivatives of Crops (including all uses of corn, wheat, barley, rice, cotton and soy, and other oil Crops and their close derivatives), but excluding inert or minor ingredients from or derived from a Plant source which do not materially add value to an end product of an industrial manufacturing process; any Biomolecule with commercial value, alone or In combination with other Biomolecules, for use in the Animal Feed Field; and, any Project described in the Project List and including the new protein therapeutic projects undertaken.

Animal Feed Field means the use of Biomolecules for feed applications to alter, modify or improve feed conversion and/or animal nutrition, but excluding all vaccines and therapeutic applications and any part of such field to which rights have been granted to Licensee or Licensee or any of its Affiliates under the Licensee Agreements.

License Grant

The original research collaboration agreement was entered to discover and develop new Biomolecules and Products based on such Biomolecules utilizing the technology licensed by the Swiss Licensee to Licensor as well as Licensors technology and expertise.

This agreement is to provide for, among other things, the transfer of certain projects undertaken under the Licensees Affiliates Agreement and the Joint Venture Agreement to the Research Collaboration Agreement, as amended by this Amendment.

The Parties desire to amend the Research Collaboration Agreement in accordance with the Transition Agreement to provide for, among other things, the transfer of certain projects undertaken under the Affiliates Agreement and the Joint Venture Agreement to the Research Collaboration Agreement, as amended by this Amendment.

With this amendment, Licensor grants the Swiss Licensee the exclusive option to include the Affiliates Animal Feed Field in the Licensees Exclusive Field under the terms of the Research Collaboration Agreement, as amended.

Licensor grants an exclusive option to develop and commercialize the product known as D45 and all derivatives thereof on a sole and exclusive basis in the Licensees Exclusive Field.

License Property

Animal Feed Field means the use of Biomolecules for feed applications to alter, modify or improve feed conversion and/or animal nutrition, but excluding all vaccines and therapeutic applications.

Approved Affiliates Research Projects means the projects in existence under the Affiliates Agreement known as Coarse Grain Glucanase, Coarse Grain Amalase and Coarse Grain Protease.

All Biomolecules developed or invented under the Affiliates Agreement and Joint Venture Agreement shall be made available for research, development and commercialization and shall be treated as Biomolecules in all respects, under the Research Collaboration Agreement, as amended by this Amendment, including, without limitation:
(a) the Pre-Amendment Inventions;
(b) the Post-Amendment Inventions;
(c) all of such Biomolecules tested under the criteria set forth in the project plans to establish TB or COB status under the Affiliates Agreement as of the Effective Date but that did not meet the applicable Minimum Activity Level ( as such term is defined in the Affiliates Agreement); and·
(d) all of such Biomolecules for which specific gene sequence data is not available as of the date of execution of this Amendment but whose activity was detected in the applicable screen set forth in the applicable project plan under the Affiliates Agreement.

Field of Use

Licensors Field of Exploitation means products based on microbially-derived Biomolecules, not produced in Plants, for use in the pulp and paper industry solely for deinking, pitch control, papermachine boilout cleaning, deposit control, fiber strengthening, and reduction of bleaching chemicals.

License Grant

Licensor hereby Grants to Licensee from and after the Effective Date, and Licensee hereby accepts from and after the Effective Date, an Exclusive, non-transferable, North American License (the 'License') during the Term to use and sublicense the Technology for any purpose pursuant to the terms and conditions set forth herein.

License Property

The Process relates to a method of producing sugars and other end products using strong acid hydrolysis of cellulosic and hemicellulosic materials, as described in U.S. Patents Nos. 5,562,777 and 5,580,389.

The Technology, converts cellulose and waste materials into Ethanol and other high value chemicals.

Field of Use

The Company’s goal is to develop and operate high-value carbohydrate-based transportation fuel plants to provide a viable alternative to fossil fuels. These 'biorefineries' will convert widely available, inexpensive, organic materials such as agricultural residues, high-content biomass crops, wood residues, and cellulose in municipal solid wastes into ethanol. This versatility enables the Company to consider a wide variety of feedstocks and locations in which to develop facilities to become a low cost producer of ethanol.  The Arkenol Technology, converts cellulose and waste materials into ethanol and other high value chemicals.

License Grant

Licensor grants to Licensee under the Licensed Patent Rights except for those patent rights directed to DNA other than Arabidopsis DNA and, if the Project Plan is extended, except for those patent rights directed to DNA other than Arabidopsis and rice DNA, and for the life of such Licensed Patent Rights a perpetual non-exclusive world-wide license to make and use Project Technology and Licensor DNA Information directed to Arabidopsis DNA and, if the Project Plan is extended, rice DNA and a perpetual exclusive world- wide license to develop, make, have made, import, use, sell, have sold, and offer to sell Paradigm Licensed Products. Monsanto further grants Paradigm the right to sublicense the rights to develop, make, have made, import, use, sell, have sold, and offer to sell Paradigm Licensed Products.

For the research license Licensor grants Licensors interest in Licensed Patent Rights except for those patent rights directed to DNA other than Arabidopsis DNA and, if the Project Plan is extended, except for those patent rights directed to DNA other than Arabidopsis and rice DNA, and project technology a perpetual nonexclusive, world-wide license to use project Technology and Licensor DNA Information directed to Arabidopsis DNA and, if the Project Plan is extended, rice DNA for research purposes only.  Such right shall not extend to any other Licensor owned or in-licensed technology including Licensor DNA Information that is not from  Arabidopsis or, if the Project Plan is extended, rice.

For research license for Licensors Enabling Technology in research crops Licensor grants Licensors interest in Licensor Enabling Technology a perpetual, nonexclusive, U.S. and Europe only, license to use Licensor Enabling Technology in Arabidopsis, tobacco and, if the Project Plan is extended, rice for research purposes only.

License Property

Licensor has certain rights relating to genes which impart traits in plants and plants containing such genes, such rights including possession of technical information and know-how relating to such plants and their use.

The Licensed Product means a particular product or a particular species of animals, plants, plant or animal parts, animal progeny, seed of plants and products from any of the foregoing, or the process of making any of the above.

Field of Use

This agreement is for the industry of gene sequences.  Licensee has expertise in transforming Arabidopsis plants with DNA and analyzing the resultant plants for functional changes.

License Grant

The Licensee entered into an exclusive License with the Licensor to use their technology (Patent No. 5,411,594) to convert cellulosic biomass into fuel grade ethanol in the United States.  This Agreement was amended in November 2005 to extend the initial evaluation period for the technology.

License Property

If such a Municipal Solid Waste & Green Waste to Fuel Ethanol Project is not initiated within three (3) years of the date of this Agreement, the Exclusive Right will be automatically dropped to Non-Exclusive.  Licensee and/or its Designated Affiliates shall have the Non Exclusive Right to utilize the Licensed Products and Know How for processing biomass feedstock applications including but not limited to Sugar Cane Bagasse (SCB), High Fiber Cane (HFC), and Forestry Product (FP) feed-stocks in all United States territories.

On August 30, 2007, the Licensor acknowledged that the Licensee has met all requirements to maintain the exclusivity of its License. The Licensor may terminate the License Agreement on sixty days’ notice if the Licensee fails to make any payment due under this License Agreement.

Field of Use

The technology relates to processing Municipal Solid Waste and Green Waste.

License Grant

The Licensor Parties and their Affiliates grant to Licensee, and Licensee accepts, an exclusive, royalty-free, sublicensable license under and to use the Biofuel IP to perform research and development activities with respect to Licensed Products in the Field and in the Territory to evaluate the Licensee in order to determine Licensor’s interest in obtaining the Commercialization License (the Evaluation License).

The Licensor Parties and their Affiliates grant to Licensee, and Licensee accepts, an exclusive, royalty-bearing, sublicensable  license under and to use the Biofuel IP to research, develop, make, have made, use, import, export, offer to sell and sell Licensed Products in the Field and in the Territory (the Commercialization License).

License Property

Biofuel IP means (a) the Biofuel Patent Rights; and (b) the Biofuel Know-How.

Biofuel Patent Rights means (a) the Existing Biofuel Patent Rights, (b) any and all Patent Rights that claim Biofuel Know-How and that are Controlled by the Licensor Parties or their Affiliates as of the Effective Date and/or during the Term, including the Licensor Parties’ and their Affiliates’ interest in any Joint Patent, and (c) Licensor Improvement Patent Rights.

7,087,419 – DNA encoding a plant lipase, transgenic plants and a method for controlling senescence in plants
6,538,182 – DNA encoding a plant deoxyhypusine synthase, a plant eukaryotic initiation factor 5A, transgenic plants and a method for controlling senescence programmed and cell death in plants
6,989,258 – DNA encoding a plant deoxyhpusine synthase, a plant eukaryotic initiation factor 5A, transgenic plants and a method for controlling senescence programmed and cell death in plants

Licensed Products means any product in the Field that incorporates, contains, utilizes, is enabled by or otherwise exploits the Biofuel IP, or the making, using, selling or importing of which would, absent the Licenses granted hereunder, infringe the Biofuel IP.

Licensor Improvement Patent Rights means any and all Patent Rights that claim Technology created by or on behalf of a Licensor Party or its Affiliates in the course of performing research or development outside of the Field during the Term and which Technology (i) is an improvement to the Existing Technology or any Developed Technology, and (ii) is applicable to plants and plant products (including plant organisms, progeny, cells, seeds, grain, grain component, tissue, and other parts of plants, but excluding Excluded Products).

Technology means all ideas, inventions, discoveries, biologic and other materials, trade secrets, data, instructions, formulae, designs, specifications, methods, processes, formulations, assays, techniques, know-how, technical information (including structural and functional information), and manufacturing process information, patentable or otherwise.

Developed Technology means any and all Technology that is (a) created by or on behalf of the Licensor Parties or their Affiliates in the course of performing research or development in the Field during the Term, or (b) created pursuant to the Services provided by the Licensor Parties’ or their Affiliates’ employees pursuant to this Agreement  (excluding Licensee Owned Service Improvements), in each case that is Controlled by a Licensor Party or its Affiliates during the Term.

Field of Use

Research and development agreement is to use Licensor's proprietary eukaryotic translation initiation Factor 5A (eIF5A) technology platform for sustainable energy applications Licensee, a newly formed start-up company, will have a license to evaluate our technology for the development of plants and plant products suitable for use in the production of biofuel and biofuel feedstock, including all species of algae and all species in the genus Miscanthus (perennial grasses). Biofuels derived from these organisms include biodiesel and bioethanol.

Field means any and all (a) plants and plant products (including plant organisms, progeny, cells, seeds, grain, grain component, tissue, and other parts of plants) suitable for use in the production of biofuel and/or biofuel feedstock, including all species of algae and all species in the genus Miscanthus, but excluding the Excluded Products; (b) biodiesel, bioethanol and other biofuels derived from the plants and plant products described in clause (a) above; and (c) other products derived from the plants and plant products described in clause (a), other than pharmaceutical, nutraceutical and food products, provided that the foregoing exclusion of food products shall not apply to algae.