Royalty Report: Drugs, DNA, Cancer – Collection: 209536

License Grant

Licensor grants a license under the Licensors Patent Rights to obtain phosphoramidites from a third party and to use phosphoramidites and processes claimed in such Patent Rights to make Oligonucleotides.

This agreement is relative to the supply of nucleoside phosphoramidites and the sale by Licensee to third parties of oligonucleotides made from such nucleoside phosphoramidites.

License Property

Licensor Materials means amounts of nucleoside phosphoramidites to be supplied by Licensor to Licensee and used by Licensee for manufacturing oligonucleotides.

4373071 Solid-Phase Synthesis of Polynucleotides
4401796 Sold Phase Synthesis Pol ynucleotides
4415732 Phosphoramidite Compounds and Processes
4458066 Process for Preparing Polynucleotides
4500707 Nudeosides Useful in the Preparation of Polynucleotides
4668777 Phosphoramidite Nucleoside Compounds
4973679 Process for Oligonucleotide Synthesis using
posphoramidite Intermediates
5047524 Automated System for Polynucleotide Synthesis and
Purification
5132418 Process for Preparing Polynucleotides
5153319 Process for Preparing Polynucleotides
5262530 Automated System for Polynucleotide Synthesis and
Purification

Field of Use

Licensee is in the business of discovery and development of novel genetic medicines based primarily on antisense technology.  Antisense technology involves the use of synthetic segments of DNA or oligonucleotides.

License Grant

For the Conditional Non-Exclusive License to Licensee for Instruments, Licensor grants to a nonexclusive, world-wide license under Licensors interest in the Intellectual Property to make, have made, and import, Instruments outside of the Collaboration Field.

For the Non-Exclusive License to Licensee for Instruments Developed Outside the Joint Development Program, Licensor grants a non-exclusive, world-wide license under Licensors interest in Collaboration Licensors Intellectual Property to make, have made, use, import, offer to sell, and sell instruments outside the Collaboration Field.

For the Non-Exclusive License to Licensee for Instruments,  Licensor grants to a non-exclusive world-wide license under Licensors interest in the Intellectual Property to use, offer to sell, and sell Instruments outside of the Collaboration Field.

This agreement also includes exclusive grants from Licensee to Licensor.

License Property

Licensee has certain skills, proprietary technology and know-how related to the manufacture, design and use of Assembled Arrays.

Licensor has certain skills, proprietary technology and know-how related to the development of bioanalytical instrumentation systems and associated reagents and the marketing, sales and support of products incorporating such systems.

Licensor has DNA Synthesis and Purification Patents  referred to as the Caruthers Process and Caruthers Reagents, and related patents.

Field of Use

Collaboration Field means the field of Zip Code Chemistry used in combination with Assembled Arrays.

Nucleic Acid Analysis Field means the field of characterization of a nucleic acid sample including but not limited to the determination of the relative abundance of the nucleic acid, all or part of a sequence of the nucleic acid, or variations in the sequence of the nucleic acid. The Nucleic Acid Analysis Field excludes the Collaboration Field.

The Parties are designing product based on the Array of Arrays for SNP genotyping. The first SNP genotyping assay format that Licensee intend to commercialize will be PE Biosystems' proprietary OLA ZipCode assay format. This assay format enables the creation of a universal Array of Arrays that can be used to analyze any set of SNPs.

License Grant

By this amendment, the Parties now proceed with unilateral development of OGX-011 and Products.  As of the Amendment Effective Date, the original Collaboration is terminated.

Licensor grants the Canadian Licensee a worldwide, nonexclusive license, with the right to grant sublicenses, under the Licensor Core Technology, Core Technology Patents, Manufacturing Technology and Manufacturing Patents to research, develop, make, have made, use, gain regulatory approval, commercialize, sell, offer for sale, have sold, export and import OGX-011 and Products for all uses.

For Development, Commercialization and Regulatory Responsibilities, Licensee will have sole responsibility, including without limitation sole responsibility for all funding, resourcing and decision making, for all further development and commercialization with respect to OGX-011 and Products.

License Property

Licensor is discovering and developing RNA-targeted therapeutics, and have created an efficient and broadly applicable drug discovery platform leveraging our expertise in antisense oligonucleotide therapeutics.

OGX-011 is a second generation antisense inhibitor of Clusterin.  Clusterin means the gene target, official symbol CLU, which is also referred to as Testosterone Repressed Prostatic Message -2 (TRPM-2), and Sulphated Glycoprotein2 (SGP-2).

Licensors Core Technology includes the patents and excludes the Manufacturing Technology and Product-Specific Technology.

Field of Use

Licensee is a development stage enterprise committed to the development and commercialization of new cancer therapies. The product candidates OGX-011, OGX-427 and OGX-225 focus on mechanisms of treatment resistance in cancer patients and address treatment resistance by blocking the production of specific proteins which it believes promote survival of tumor cells and are over-produced in response to a variety of cancer treatments.

License Grant

Licensor hereby grants to Licensee (i) an exclusive license, including the right to sublicense, under the Licensor Collaboration Blocking Patents, and (ii) a non-exclusive license, including the right to sublicense, under the Licensor Collaboration Technology other than the Licensor Collaboration Blocking Patents, in each case to make, use, import, sell and offer to sell Reagent Non-ASO Products, Validation Non-ASO Products, and Drug Discovery Non-ASO Products in the Territory.  Such licenses shall be royalty-bearing as expressly provided by this Agreement.

Licensor hereby grants to Licensee an option, exercisable on a Reagent Non-ASO Compound-by-Reagent Non-ASO Compound basis, to obtain a non-exclusive royalty-bearing licenses under the Licensor Blocking Patent Rights to develop, make, use, import, offer for sale and sell Reagent Non-ASO Products in the Territory; such license(s) shall include the right to grant sublicenses solely for the purpose of developing, making, using, importing, offering for sale and selling the applicable Reagent Non-ASO Product.

Licensor hereby grants to Licensee an option, exercisable on a Reagent Target-by-Reagent Target or Validation Target-by-Validation Target basis, as applicable, to obtain an exclusive, royalty-bearing license, including the right to sublicense, under the Licensor Collaboration Technology and the Licensor Technology to develop, make, use, import, offer for sale and sell Reagent ASO Products containing one or more Reagent ASO Compounds directed to such Reagent Target or Validation ASO Products containing one or more Validation ASO Compounds directed to such Validation Target, as applicable, in the Territory.

Licensor hereby grants to Licensee an exclusive option, exercisable on a Drug Discovery Target-by-Drug Discovery Target basis, to obtain an exclusive, royalty-bearing license, including the right to sublicense, under the Licensor Collaboration Technology and the Licensor Technology to develop, make, use, import, offer for sale and sell Drug Discovery ASO Products containing one or more Drug Discovery ASO Compounds directed to such Drug Discovery Target in the Territory.

License Property

U.S. Patent No. 6,114,519 – Synthesis of sulfurized oligonucleotides
U.S. Patent No. 6,069,243-  Process for oligonucleotide synthesis

Field of Use

As part of the extension, the companies agreed to add a new antisense drug to Licensee’s oncology drug discovery and development portfolio. The new drug targets Signal Transducer and Activator of Transcription 3 (STAT-3), a protein that regulates cell division and growth, and prevents cell death.

Field of use is for use in gene functionalization and target validation and as therapeutic products in the field of antisense technology, including processes and techniques relating to the design, synthesis and research of antisense oligonucleotides.

Non-ASO Field means the research, development, manufacture and sale of compounds other than ASO Compounds as therapeutic or prophylactic pharmaceutical products.

ASO Field means the development, manufacture and sale of ASO Products as therapeutic or prophylactic pharmaceutical products.

License Grant

The University Licensor grants to Licensee, an exclusive, royalty bearing license, with the right to sublicense, under the Licensed Patents to import, make, have made, use, sell, offer for sale and have sold Licensed Subject Matter in the Territory.

License Property

The licensed patents are titled Solvent for Oligonucleotide Synthesis and Methods of Use, and, Chemical Synthesis Using Solvent Microdroplets – 08/821,156.

The Invention shall mean a novel inkjet technology for the synthesis of oligonucleotides on glass or silicon surfaces that provides a proprietary solution with solvent that allows reagent delivery from the inkjet heads, referred to as Solvent and Apparatus for DNA Synthesis.

Licensed Subject Matter shall mean any subject matter, including but not limited to products and processes, covered in whole or in part by any issued, unexpired patent claim or a claim in a pending patent application contained in the Licensed Patents in the country in which said subject matter is made, used, or sold.

Field of Use

This agreement is for commercial exploitation in all fields of use.  Licensee is in the business of drug discovery process for pharmaceutical and biotechnology companies and improves agricultural products.

License Grant

Licensor grants to Licensee and its Affiliates a worldwide non-exclusive license, without the right to sublicense, under the Patent Rights to make, market, distribute, and sell Licensed Products and/or Monomer Licensed Products in the Research Field.

License Property

Licensor owns and is an exclusive licensee of proprietary technology relating to oligonucleotide N3—>P5 phosphoramidates, their manufacture, and their uses in a variety of fields, refered to as the Amidate Technology.

Monomer Licensed Product shall mean a Licensed Product which is a monomer used in the synthesis of an oligonucleotide N3->P5 phosphoramidate.

Field of Use

Licensee has expertise in nucleic acid chemistry and is in the business of manufacturing. marketing, selling, and distributing nucleic acid compounds.  This agreement is for use in the Research Field.

Research Field shall mean any use in the field of scientific or commercial research, excepting any use that involves treating humans in any way whatsoever for any condition or any use that involves diagnosis of, testing for, or detection of, a disease condition, or the predisposition or susceptibility thereto, or the clinical progress thereof.

License Grant

University hereby grants to Licensee and Licensee hereby accepts the license during the Term in the Territory for an exclusive, fee- and royalty-bearing license, including the right to enforce the Patent Rights and the right to grant sublicenses as set forth herein, under the Intellectual Property, to make, have made, sell, offer for sale, have sold, use, import and have imported Licensed Products in the Field.

License Property

Patent Rights Any and all rights in and to United States Patent No. 6,399,335, as well as all patents or applications claiming priority thereto or common priority with United States Patent No. 6,399,335, including all divisions, continuations, continuations-in-part, reissues, reexaminations, and any foreign counterparts to the foregoing patents or applications.

6,399,335 – amma.-phosphoester nucleoside triphosphates

Field of Use

Patent relates to nucleoside triphosphates that include a labeling group attached through the terminal phosphate group in the triphosphate chain.

The field of use is in the medical industry relating to nucleoside which is a compound (e.g., adenosine or cytidine) commonly found in DNA or RNA, consisting of a purine or pyrimidine base linked to a sugar. In medicine several nucleoside analogues are used as antiviral or anticancer agents.

Field All uses of gamma-labeled nucleoside n-phosphates alone or in combination with other reagents in sequencing, enzyme analysis for sequence optimization and sequence analysis, specifically excluding the field of therapeutic administration of gamma-labeled nucleoside n-phosphates to a mammal.

Licensee develops, manufactures and markets an integrated platform for genetic analysis.