Royalty Report: Disease, Drugs, Diagnostic – Collection: 203463

License Grant

The Regents hereby grants to Licensee an exclusive license under Regents Patent Rights, in jurisdictions where Regents Patent Rights exist, to make, have made, use, sell, offer for sale and import Licensed Products and to practice Licensed Methods in the Field to the extent permitted by law.

License Property

U.S. Patent No. 5,230,346  Diagnosing Brain Conditions by Quantitative Electroencephalography

U.S. Patent No. 5,269,315  Determining the Nature of Brain Lesions by Electroencephalography

U.S. Patent No. 5,309,923  Method and Apparatus for Determining Brain  Activity, Including the Nature of Brain Lesions by Electroencephalography

Regents Patent Rights means The Regents interest in any of the patents listed to this Agreement and assigned to The Regents; including reissues and reexaminations all of which will be automatically incorporated in and added to  and made a part of this Agreement.

Licensed Product means any article, composition, apparatus, substance, chemical, or any other material covered by Regents Patent Rights or whose manufacture, use or sale would constitute an infringement of any claim within Regents Patent Rights, or any service, article, composition, apparatus, chemical, substance, or any other material made, used, or sold by or utilizing or practicing a Licensed Method.

Field of Use

The Field means diagnosis and management of neurological diseases and conditions by measuring the effects of treatments and/or diseases on the brain.

License Grant

The University hereby grants to Licensee an exclusive license under University 's Patent Rights, in jurisdictions where University's Patent Rights exist, to make, have made, use, sell, offer for sale and import Licensed Products and to practice Licensed Methods in the Field of Use to the extent permitted by law.

License Property

University's Patent Rights means The University interest in any of the patent applications listed in this Agreement and assigned to The University (Case Nos. 1999-560, 2004-331, 2006-369, 2009-271, 2009-569, 2011-416, 2015-573, 2016-631, and 2016-99D); any continuing applications thereof including divisions; but excluding continuations-in-part except to the extent of claims entirely supported in the specification and entitled to the priority date of the parent application; any patents issuing on these applications including reissues and reexaminations; and any corresponding foreign patents or patent applications; all of which will be automatically incorporated in and added to and made a part of this Agreement. The patent applications and patents included as a result of Case Nos. 2015-573, 2016-631 and 2016-99D are referred to in certain provisions of this Agreement as the “Newly Added Patent Rights” within the University's Patent Rights.

Patent No. 8,048,646 from US Application No. 12/400,715 – NELL Peptide Expression Systems And Bone Formation Activity Of Nell Peptide
Patent No. 7,807,787 from US Application No. 12/400,714 – NELL Peptide Expression Systems And Bone Formation Activity Of Nell Peptide
Application No. 09/412,297 – NELL-1 Enhanced Bone Mineralization
Application No. 11/392,294 – NELL -1 Enhanced Bone Mineralization
Application No. 11/713,366 – NELL-1 Enhanced Bone Mineralization

Licensed Product means any article, composition, apparatus, substance, chemical, or any other material whose manufacture, use or sale would constitute an infringement of any Valid Claim within University's Patent Rights, or any service, article, composition, apparatus, chemical, substance, or any other material made, used, or sold by or utilizing or practicing a Licensed Method. This definition of Licensed Product also includes a service either used by Licensee, an Affiliate, or Sublicensee or provided by Licensee, an Affiliate or Sublicensee to its customers when such service requires the use of Licensed Product or performance of Licensed Method.

Licensed Method means any process or method whose use or practice would constitute an infringement of any Valid Claim within University's Patent Rights.

Field of Use

Field of Use means use in spinal fusion by local administration, Osteoporosis, and long bones/extremities (trauma), and excludes use in cartilage and all other indications.  Osteoporosis means thinning of the bones, with reduction in bone mass, due to depletion of calcium and bone protein.

License Grant

The University hereby grants to Licensee an exclusive license under Regents' Patent Rights, in jurisdictions where Regents' Patent Rights exist, to make, have made, use, sell, offer for sale and import Licensed Products and to practice Licensed Methods in the Field of Use to the extent permitted by law. The Licensee will not make, use, sell, import, or offer for sale, Licensed Products outside the Field of Use.

License Property

The University also grants to Licensee the right to issue exclusive or nonexclusive sublicenses  to third parties to make, have made, use, sell, offer for sale or import Licensed Products and to practice Licensed Methods in any jurisdiction in which Licensee has exclusive rights under this Agreement, but Sublicenses will not include further right to sublicense on the part of the Sublicensee.

The University granted to Licensee an exclusive License  under The University’ interest in Provisional Patent Application No. 61/030,316 entitled Screening Test for Gestational Diabetes Mellitus filed 02/21/2008 (UCLA Case No. 2007-523-1) (University Patent Rights) in jurisdictions where Regents' Patent Rights exist, to make, have made, use, sell, offer for sale and import Licensed Products (as Licensed Products is defined in the ELA) and to practice Licensed Methods (as Licensed Methods is defined in the ELA) in all fields of use to the extent permitted by law.

Gestational diabetes (or gestational diabetes mellitus, GDM) is a condition in which women without previously diagnosed diabetes exhibit high blood glucose levels during pregnancy (especially during third trimester of pregnancy).

Field of Use

The Field of Use means all fields of use.

License Grant

The University grants to the Licensee a worldwide license under Licensors Patent Rights to make, have made, use, sell, and distribute Licensed Products and to practice Licensed Method.  The Licensor also grants to the Licensee the right to issue sublicenses to third parties to make, have made, use, sell, and distribute Licensed Products and to practice the Licensed Method.

License Property

The license is for certain inventions, generally characterized as a noninvasive continuous iontophoretic blood monitor/drug delivery system.  Patents relates to devices for iontophoretic non-invasive sampling of substances.

The Licensed Product is any material that is either covered by Licensor’s Patent Rights or any product manufactured using the Licensed Method, in either event to the extent the manufacture, use or sale of which in a particular country infringes an unexpired valid claim of a patent or a pending claim of a patent application under Patent Rights in that country in which such patent has issued or application is pending.

The Licensed Method is any method that is covered by the claims of Licensor’s Patent Rights in the country in which such method is used, or the use or practice of which would constitute, but for the license granted to the Licensee pursuant to this Agreement, an infringement of any unexpired, valid issued claim or pending claim under Patent Rights in that country in which the Licensed Method is used or practiced.

(a) U.S. Patent Application serial no. 150,159, filed 29 Jan 88,(abandoned) by Dr. Richard Guy, et al., and assigned to The Regents;

(b) U.S. Patent Application serial no. 299,397, filed 24 Jan 89, as a continuation-in-part application of (a), (abandoned) by Dr. Richard Guy, et al., and assigned to The Regents;

(c) U.S. Patent Application serial no. 771,483, filed 04 Oct 91, as a continuation-in-part of (b) (now allowed) by Dr. Richard Guy, et al., and assigned to The Regents;

(d) U.S. Patent No. 5,279,543, issued 18 Jan 94, which was a file wrapper continuation application of (b), by Dr. Richard Guy, et al, and assigned to The Regents; and continuing applications thereof including divisions and substitutions but including continuation-in-part applications only to the extent that the claim was supported in the original disclosure; any patents issuing on said application or continuing applications including reissues and extensions; and any corresponding foreign applications or patents.

Field of Use

This agreement pertains to drug delivery systems.  The Licensee, GlucoWatch system is designed to measure glucose frequently, automatically and non-invasively through the ease and convenience of a device worn like a wristwatch.

License Grant

The Regents grant to Licensee an exclusive License under Regents' Patent Rights, to make, have made, use, sell, offer for sale and import Licensed Products and to practice Licensed Methods in all Fields of Use to the extent permitted by law.

The Regents also grant to Licensee the right to issue exclusive or nonexclusive subLicenses to third parties.

License Property

REGENTS’ Patent Rights

U.S. Patent Application No. 10/131,384 entitled Estriol Therapy for Multiple Sclerosis and Other Autoimmune Diseases, filed April 24, 2002, which was based on Provisional Application No. 60/286,842 filed 4/25/01 (UCLA Case Nos 1998-531-1,2) by Dr. Voskuhl, and assigned to The Regents.

U.S. Patent Application No. 10/984,364 entitled The Use of Estrial and Other Estranes, Estrogen and Estrogen Receptor Active Compositions in the Treatment of Psoriasis…, filed November 8, 2004, (UCLA Case No. 2004-101-3) by Drs. Rhonda R. Voskuhl, Gerald D. Weinstein and Jenny E. Murase and assigned to The Regents.

Field of Use

Licensed Property Estriol for the treatment of autoimmune diseases & the use of estriol and other estranges, estrogens and estrogen receptor active compositions in the treatment of psoriasis & other autoimmune diseases.

License Grant

The University grants a license under Universitys Patent Rights to make, have made, use, and sell Licensed Products and to practice Licensed Method in the Territory.

License Property

The invention, patents and methosd are for Drugs that Enhance Synaptic Responses Mediated by AMPA Receptors.  The AMPA-type glutamate receptoris a complex of proteins that is involved in communication between nerve cells in the human brain.

Field of Use

AMPAKINE® technology is for the treatment of schizophrenia and depression.

Licensee is engaged in the discovery and development of innovative pharmaceuticals for the treatment of neurodegenerative diseases and other neurological and psychiatric disorders.

License Grant

The University hereby grants to Licensee an exclusive license under  Patent Rights, in jurisdictions where Patent Rights exist, to make, have made, use, sell, offer for sale and import Licensed Products and to practice Licensed Methods in the Field of Use to the extent permitted by law. The Licensee will not make, use, sell, import, or offer for sale, Licensed Products outside the Field of Use.

License Property

Whereas, a certain invention , generally characterized as Screening Test for Gestational Diabetes Mellitus (UCLA Case No. 2007-523) was made in the course of research at the University and is claimed in the University's Patent Rights as defined below; Whereas, the University wishes that the Patent Rights be developed and utilized to the fullest extent so that the benefits can be enjoyed by the general public.

Patent Application No. 61/030,316 entitled Screening Test for Gestational Diabetes Mellitus filed 02/21/2008 (UCLA Case No. 61/030,316.

Field of Use

Field of Use means all fields of use.

License Grant

The University hereby grants to Licensee an exclusive license under Regents Patent Rights, in jurisdictions where Regents Patent Rights exist, to make, have made, use, sell, offer for sale and import Licensed Products and to practice Licensed Methods in the Field of Use to the extent permitted by law.

License Property

Patent Rights means The Regents interest in any of the patent applications listed to this Agreement and assigned to The Regents (Case Nos. 1999-560, 2004-331, 2006-369, 2009-271, 2009-569, and 2011-416); any continuing applications thereof including divisions; but excluding continuations-in-part except to the extent of claims entirely supported in the specification and entitled to the priority date of the parent application; any patents issuing on these applications including reissues and reexaminations; and any corresponding foreign patents or patent applications; all of which will be automatically incorporated in and added to a part of this Agreement.

Certain invention (the Inventions), generally characterized as

1)
UCLA Case No. 1999-560: “NELL-1 Enhanced Bone Mineralization”;

2)
UCLA Case No. 2004-331: “NELL1 Expression Systems and Neuroprotective Activity of NELL2”;

3)
UCLA Case No. 2006-369: “Recombinant NELL-1 & 2 Protein Production”;

4)
UCLA Case Number: 2009-271: “Recombinant NELL Protein Production”;

5)
UCLA Case No. 2009-569: “NELL-1 Isoform”, and

6)
UCLA Case No. 2011-416: “Using NELL-1 to Inhibit Osteoclasts and to Prevent, Treat Osteoporosis”

Licensed Product means any article, composition, apparatus, substance, chemical, or any other material whose manufacture, use or sale would constitute an infringement of any Valid Claim within Regents Patent Rights, or any service, article, composition, apparatus, chemical, substance, or any other material made, used, or sold by or utilizing or practicing a Licensed Method. This definition of Licensed Product also includes a service either used by Licensee, an Affiliate, or Sublicensee or provided by Licensee, an Affiliate or Sublicensee to its customers when such service requires the use of Licensed Product or performance of Licensed Method.

Licensed Method means any process or method whose use or practice would constitute an infringement of any Valid Claim within Regents Patent Rights.

Regents Patent Rights:

1999-560-1
NELL-1 Enhanced Bone Mineralization

United States Of America

09/412,297
1999-560-2
NELL -1 Enhanced Bone Mineralization

United States Of America

11/392,294
1999-560-3
Composition for Promoting Cartilage Formation or Repair Comprising a NELL Gene Product and Method of Treating …

United States Of America

11/594,510
1999-560-3
Composition for Promoting Cartilage Formation or Repair Comprising a NELL Gene Product and Method of Treating …

European Patent Office

7871373.2
1999-560-3
Composition for Promoting Cartilage Formation or Repair Comprising a NELL Gene Product and Method of Treating …

Canada

2668375
1999-560-4
NELL-1 Enhanced Bone Mineralization

United States Of America

11/713,366
1999-560-4
NELL-1 Enhanced Bone Mineralization

Canada

2679723
1999-560-6
Composition for Promoting Cartilage Formation or Repair Comprising a NELL Gene Product and Method of Treating …

United States Of America

12/700,644
1999-560-8
NELL-1 Enhanced Bone Mineralization

United States Of America

13/011,736
2004-331-2
NELL Peptide Expression Systems And Bone Formation Activity Of Nell Peptide

United States Of America

10/544,553
2004-331-2
NELL Peptide Expression Systems and Bone Formation Activity of Nell Peptide

United Kingdom

4709500.5
2004-331-2
NELL Peptide Expression Systems and Bone Formation Activity of Nell Peptide

Spain

4709500.5
2004-331-2
NELL Peptide Expression Systems and Bone Formation Activity of NELL Peptide

Germany

4709500.5
2004-331-3
Expression System of NELL Peptide

United States Of America

11/601,529
2004-331-3
Expression System of NELL Peptide

European Patent Office

7868700.1
2004-331-7
Expression System of NELL Peptide

United States Of America

12/700,630
2006-369-2
Pharmaceutical Compositions for Treating or Preventing Bone Conditions

United States Of America

11/884,525
2006-369-3
Pharmaceutical Compositions for Treating or Preventing Bone Conditions

United States Of America

12/897,397
2009-271-2
Recombinant NELL Protein Production

United States Of America

13/121,394
2009-271-2
Recombinant NELL Protein Production

United Kingdom

9819839.3
2009-271-2
Recombinant NELL Protein Production

Spain

9819839.3
2009-271-2
Recombinant NELL Protein Production

Germany

9819839.3
2009-271-2
Recombinant NELL Protein Production

France

9819839.3
2009-569-2
Isoform NELL-1 Peptide

United States Of America

13/256,931
2009-569-2
Isoform NELL-1 Peptide

European Patent Office

10756811.5
2009-569-2
Isoform NELL-1 Peptide

Canada

2756168
2009-569-3
Isoform NELL-1 Peptide

United States Of America

15/265,680

Field of Use

This agreement pertains to the drug industry.  Field of use means use in spinal fusion by local administration, osteoporosis, and long bones/extremities (trauma), and excludes use in cartilage and all other indications.