Royalty Report: Drugs, Diagnostic, Drug Discovery – Collection: 211894

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 14

Description

This collection of transactions and supporting information was developed using our AI algorithm to curate similar royalty reports into a cohesive collection to support your licensing, transfer pricing or other transaction scenarios where documented royalty rates and/or deal terms are important.
Category: Technology Licenses
Created On: 2022-04-28
Record Count: 14

Primary Industries

  • Drugs
  • Diagnostic
  • Drug Discovery
  • Cancer
  • ribonucleic acid
  • Medical
  • Disease
  • Molecular
  • Research
  • Proteins
  • nucleic acid
  • Device
  • DNA

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: 211894

License Grant
The German Licensor grants the Israeli Licensee a co-exclusive, worldwide, royalty-bearing license under the Licensed Patent Rights to develop, have developed, make, have made, use, have used, import, have imported, sell and have sold Licensed Products, and to perform, have performed, sell and have sold Licensed Services, each in the Field.

In order to establish co-exclusivity, Licensor shall not grant, during the Term, more than three other co-exclusive licenses to the Licensed Patent Rights in the Field with the scope of Other Diagnostic Licenses, or the Other Diagnostic Licensees.

Licensee shall have the right to grant sublicenses.

License Property
Diagnostic kits shall be considered as Licensed Products.

The Platform Technologies shall mean any technology for qualitative and/or quantitative detection or quantification of nucleic acids and genotyping used in the performance of a Licensed Service or offered as part of a Licensed Product, including, without limitation, RNA extraction and/or PCR technologies, including, without limitation, realtime based, microarray technologies, or any current or future technology providing substantially similar results.by any means.

Patents filed are for Small expressed RNA molecules (MicroRNA molecules).

Analyte Specific Reagents or ASRs shall mean antibodies, both polyclonal and monoclonal, specific receptor proteins, ligands, nucleic acid sequences, and similar reagents which, through specific binding or chemical reaction with substances in a specimen, are intended for use in a diagnostic application for identification and quantification of an individual chemical substance or ligand in biological specimens. ASRs that otherwise fall within this definition shall not fall within this definition when they are sold to in vitro diagnostic manufacturers for the purpose of manufacturing in vitro diagnostic products, or organizations that use the reagents to make tests for purposes other than providing diagnostic information to patients and practitioners, e.g., forensic, academic, research, and other non-clinical laboratories.

Field of Use
The Field shall mean sale and use of Licensed Products, or performance and sale of Licensed Services, for Licensees internal and collaborative research and development purposes, and Diagnostic Purposes, specifically excluding any sale and use of Licensed Products, or performance and sale of Licensed Services, for Research Purposes or for Therapeutic Purposes.  This agreement is to develop and commercialize products and services for Diagnostic Purposes.

The licensed microRNAs sequences will be added to Licensee microRNA database, providing the company with additional biomarker candidates for its diagnostic development programs.  Under the terms of the agreement, Licensee will be able to use these microRNAs to advance multiple research and development programs targeting new microRNA-based diagnostic tools for a variety of diseases.

IPSCIO Record ID: 274908

License Grant
The German Licensor, a non-profit scientific research organisation, grants to Israeli Company during the Term a co-exclusive, worldwide, royalty-bearing license under the MPG Patent Rights to develop, have developed, make, have made, use, have used, import, have imported, sell and have sold Licensed Products, and to perform, have performed, sell and have sold Licensed Services, each in the Field.

In order to establish co-exclusivity, Licensor shall not grant, during the Term, more than three other co-exclusive licenses to the MPG Patent Rights in the Field with the scope as set forth (hereinafter the “Other Diagnostic Licenses”, or the 'Other Diagnostic Licensees', as applicable).

License Property
The license is to use its microRNAs, including approximately 110 biologically validated human microRNAs, for diagnostic applications.

MPG Patent Rights shall mean  (Max-Planck-Gesellschaft zur Foerderung der Wissenschaften e.V. (hereinafter “MPG“), a German non-profit scientific research organisation)

International Patent applications filed by MPG entitled 'Small expressed RNA molecules (MicroRNA molecules)'

Field of Use
Field shall mean sale and use of Licensed Products, or performance and sale of Licensed Services, for
(a) Companys internal and collaborative research and development purposes, and
(b) Diagnostic Purposes, specifically excluding any sale and use of Licensed Products, or performance and sale of Licensed Services, for Research Purposes or for Therapeutic Purposes.

IPSCIO Record ID: 362448

License Grant
German Licensor grants to Licensee during the Term a co-exclusive, worldwide, royalty-bearing license under the Licensors Institute Patent Rights to develop, have developed, make, have made, use, have used, import, have imported, offer for sale, sell and have sold Licensed Products, and to develop, perform, have performed, offer for sale, sell and have sold Licensed Services, each in the Field. Licensee shall have the right to grant sublicenses to the rights granted to it under this Agreement to Third Parties, without seeking consent from Licensor as long as they comply with the terms in the Agreement.
License Property
MPG Patent Rights relate to certain microRNA (Small expressed RNA molecules) sequences discovered by scientists of Licensor.

microRNAs are naturally occurring ribonucleic acid ('RNA') molecules that play a critical role in regulating key biological pathways. Scientific research has shown that an imbalance, or dysregulation, of microRNAs is directly linked to many diseases. Furthermore, many different infectious pathogens interact and bind to host microRNA to survive. To date, over 500 microRNAs have been identified in humans, each of which can bind to multiple messenger RNAs that control key aspects of cell biology. Since many diseases are multi-factorial, involving multiple targets and pathways, the ability to modulate multiple pathways by targeting a single microRNA provides a new therapeutic approach for treating complex diseases.

Licensors Institute Patent Rights shall mean
US Patent Application No. [10/490,955] filed [15-09-2004] (resulting from the PCT appl.)

Licensed Products shall mean any product (i) that, or the development, manufacture, use or sale of which, absent the license granted hereunder, would infringe one or more Pending Claims or Valid Claims of the Licensors Institute Patent Rights, or (ii) which is developed or manufactured by using a Licensed Process or that, when used, practices a Licensed Process. For the purpose of this Agreement, diagnostic kits shall be considered as Licensed Products, and Net Sales of diagnostic kits shall be considered as Net Sales of Licensed Products, if and to the extent such diagnostic kits contain Licensed Products as a diagnostically active product component, together with other diagnostically non-active product components (including without limitation buffers, purification components, or hardware such as tubes, plates, glassware).

Field of Use
microRNAs are recently discovered, naturally occurring ribonucleic acid, or RNA, molecules that play a critical role in regulating key biological pathways. Scientific research has shown the improper balance, or dysregulation, of microRNAs is directly linked to many diseases. We believe we have assembled the leading position in the microRNA field, including expertise in microRNA biology and oligonucleotide chemistry, a broad intellectual property estate, key opinion leaders and disciplined drug discovery and development processes.

Field shall mean sale and use of Licensed Products, or performance and sale of Licensed Services, for
(a) Licensee’s internal and collaborative research and development purposes, and
(b) Diagnostic Purposes, specifically excluding any sale and use of Licensed Products, or performance and sale of Licensed Services, for Research Purposes or for Therapeutic Purposes.

IPSCIO Record ID: 273468

License Grant
The parties grant each other certain rights and licenses on the terms set forth in this Agreement and to collaborate on a research and development relating to “Paraffin Extraction Technology”.  

RNA Amplification Technology
Licensor hereby grants to Licensee a worldwide, non-transferable (except as provided in Section 14.6), royalty-bearing, non-sublicensable, non-exclusive license under (i) the Licensor Background Technology directed to RNA Amplification and (ii) the RNA Amplification Technology, in each case, to practice and use the subject matter within the foregoing to research, develop, make, have made, import, use, offer for sale, and sell products for use in the Licensee Database Field of Use, Diagnostic Field of Use, Homebrew Field of Use, and Personal Research Field of Use.

Paraffin Extraction Technology
Licensor hereby grants to Licensee a worldwide, non-transferable (except as provided in Section 14.6), royalty-free, fully paid-up, non-sublicensable, non-exclusive license under Licensor’s Background Technology directed to Paraffin Extraction to practice and use the subject matter within the foregoing to research, develop, make, have made, import, use, offer for sale, and sell products for use in the Licensee Database Field of Use, Diagnostic Field of Use, Homebrew Field of Use, and Personal Research Field of Use.

Research License
Licensor hereby grants to Licensee a worldwide, non-transferable (except at provided in Section 14.6), royalty-free, fully paid-up, non-sublicensable, non-exclusive license under the Licensor Background Technology and the Program Technology owned by Licensor to practice and use the subject matter within the Licensor Background Technology and the Program Technology to conduct internal research.

Development License
Licensor hereby grants to Licensee a worldwide, non-sublicenseable, royalty-free, fully paid-up, non-exclusive license under the Licensor Background Technology and the Program Technology owned by Licensor to practice and use the subject matter within the Licensor Background Technology and Program Technology to conduct its activities under the Development Program.

Licensee hereby grants to Licensor a worldwide, non-sublicenseable, royalty-free, fully paid-up, non-exclusive license under the Program Technology owned by Licensee to practice and use the subject matter within the Program Technology to conduct its activities under the Development Program.

Commercialization Licenses
Licensee hereby grants to Licensor a worldwide, non-transferable (except as provided in Section 14.6), royalty-free, fully paid-up, non-sublicensable, non-exclusive license under the Paraffin Extraction Technology to research, develop, make, have made, import, use, offer for sale, and sell products for use in the Licensor Field and to conduct internal research.

Improvement
Licensee hereby grants to Licensor a worldwide, perpetual, irrevocable, fully paid up, royalty-free, non-transferable (except as provided in Section 14.6), non-exclusive license, under the Improvements Controlled by Licensee to practice and use the subject matter within such Improvements to research, develop, make, have made, import, use, offer for sale, and sell products, in each case, for use in the Licensor Field.

Licensor hereby grants to Licensee a worldwide, perpetual, irrevocable, fully paid up, royalty-free, non-transferable (except as provided in Section 14.6), non-exclusive license under the Improvements Controlled by Licensor to practice and use the subject matter within such Improvements to research, develop, make, have made, import, use, offer for sale, and sell products, in each case, for use in the Licensee Database Field of Use, Diagnostic Field of Use, Homebrew Field of Use, and Personal Research Field of Use.

License Property
Paraffin Extraction Technology shall mean all Program Technology relating to the recovery and extraction of native nucleic acids, polypeptides, peptides and/or proteins from tissues embedded in paraffin and its use in the research, development and commercialization of assays, including without limitation microarrays. Paraffin Extraction Technology excludes RNA Amplification Technology.

Paraffin Extraction shall mean the recovery and extraction of native nucleic acids, polypeptides, peptides and/or proteins from tissues embedded in paraffin.

RNA Amplification Technology shall mean all Program Technology relating to the selective amplification, labeling or conjugation of RNA segments in a close to linear fashion. RNA Amplification shall mean the selective amplification, labeling or conjugation of RNA segments in a close to linear fashion.

Products shall mean Licensee Database Products, Personalized Research Products, Homebrew Products and/or Diagnostic Products.

Diagnostic Product(s) shall mean an assay provided as a product or service performed on a human tissue or other human biological sample containing nucleic acids or proteins that are collectively intended to establish or identify an association between the presence or absence of such nucleic acids or proteins and
(a) diagnosis of the presence of, or absence of, a specific disease(s), state(s) or condition(s) in humans;
(b) predisposition to the presence of, or absence of, a specific disease(s), state(s) or condition(s) in humans;
(c) response or lack of response to disease therapy(ies) in humans or preventative strategies in humans;
(d) prediction of the disease course in humans, and or other changes in state(s) or condition(s) in humans over time;
(e) clinical traits in humans for which a medical professional should be consulted; or variation(s) in specific trait(s) and/or characteristics among individuals;
(f) variation(s) in specific trait(s) and/or characteristics among individuals; and/or
(g) predisposition to development of toxicities to disease therapies or preventative strategies in humans.

the results of which are provided to payors, providers or patients, and for which FDA approval (or comparable regulatory agency in other jurisdictions) is required. Diagnostic Products exclude Homebrew Products, Personalized Research Products and Licensee Database Products.

Homebrew Product(s) shall mean a Single Analyte Assay(s) provided as a product or a service performed by a service provider that would constitute a Diagnostic Product with the sole exception that it is provided prior to receipt of approval by the FDA or comparable regulatory agency in any jurisdiction outside of the United States. Homebrew Products exclude Diagnostic Products, Personalized Research Products and Licensee Database Products. For purposes of the foregoing, “Single-Analyte Assays” shall mean a assay designed for testing or measuring only a single analyte.

Personal Research Products shall mean shall mean a Multi-Analyte Assay(s) provided as a product or a service containing nucleic acids or proteins that are collectively intended to establish or identify an association between the presence or absence of such nucleic acids or proteins and
(a) diagnosis of the presence of, or absence of, a specific disease(s), state(s) or condition(s) in humans;
(b) predisposition to the presence of, or absence of, a specific disease(s), state(s) or condition(s) in humans;
(c) response or lack of response to disease therapy(ies) in humans or preventative strategies in humans;
(d) prediction of the disease course in humans, and or other changes in state(s) or condition(s) in humans over time;
(e) clinical traits in humans for which a medical professional should be consulted;
(f) variation(s) in specific trait(s) and/or characteristics among individuals; and/or
(g) predisposition to development of toxicities to disease therapies or preventative strategies in humans.

Such an assay will be considered a “Personalized Research Product” only where the results are provided directly to the tested individual and/or to the tested individual’s health care provider, and where the approval by the FDA or comparable regulatory agency in any jurisdiction outside of the United States is not required. “Personalized Research Products” exclude Homebrew Products, Diagnostic Products and Licensee Database Products. For purposes of the foregoing, “Multi-Analyte Assay(s)” shall mean an assay designed for testing or measuring more than a single analyte.

Licensee Database Products shall mean a collection of information derived from or by testing a person or persons in the Diagnostic Field of Use, Homebrew Field of Use or the Personalized Research Field of Use. Licensee Database Products exclude Diagnostic Products, Homebrew Products, and Personalized Research Products.

Licensor Background Technology shall mean the Intellectual Property that Licensor Controls as of the Effective Date and during the Development Program which is necessary for the conduct of the Development Program and the exploitation of the Program Technology and/or the Improvements,  and which is directed to (a) the recovery and extraction of native nucleic acids, polypeptides, peptides and/or proteins from tissues embedded in paraffin for use in the research, development and commercialization of assays, including without limitation microarrays (“Paraffin Extraction”); or (b) the selective amplification, labeling or conjugation of RNA segments in a close to linear fashion (“RNA Amplification”). Licensor Background Technology shall exclude those patents licensed to Licensee under the Patent License Agreement.

Program Technology shall mean all Intellectual Property created by Licensor or Licnesee after the Effective Date and during the Development Period (i) in the course of performing the Development Program, or (ii) using Confidential Information provided by the other Party to the inventing Party in connection with the Development Program.

Intellectual Property shall mean trade secrets, Patents, copyrights, Know-How, and similar rights of any type under the laws of any governmental authority, domestic or foreign, including all applications and registrations relating to any of the foregoing.

Field of Use
Diagnostic Field of Use shall mean the research, development, manufacture, importation, use and/or sale of Diagnostic Product(s). The Diagnostic Field of Use excludes the Personalized Research Field of Use, the Licensor Field of Use and the Homebrew Field of Use.

Homebrew Field of Use shall mean the research, development, manufacture, importation, use and/or sale of Homebrew Product(s). The Homebrew Field of Use excludes the Diagnostic Field of Use, the Internal Research Field of Use and the Personalized Research Field of Use.

Personal Research Field of Use shall mean the research, development, manufacture, importation, use and/or sale of Personalized Research Product(s). The Personalized Research Field of Use excludes the Diagnostic Field of Use, the Homebrew Field of Use, and the Licensor Field of Use.

Licensee Database Field of Use shall mean the research, development, manufacture, importation, use and/or sale of Licensee Database Product(s) to end users.

Licensor Field shall mean all internal research and development applications of Paraffin Extraction Technology or Improvements, including the use of such technology to develop therapeutic products and the use of such technology in connection with the commercialization of research tools, such as databases, use of a biochemical test for detecting and/or quantifying a specific nucleic acid target sequence within a nucleic acid mixture which is designed and intended “For Research Use Only” or “For Investigational Use Only” or as a general purpose laboratory reagent. For the avoidance of doubt, the Licensor Field shall exclude any, Diagnostic Field of Use, Homebrew Field of Use, and Personal Research Field of Use.

The Collaborative Agreement pertains to certain of Licensor’s patent rights and know-how regarding cloning, DNA sequencing, and data analysis technologies.
Under the Patent License Agreement, Licensee licenses various classes of patents from Licensor pertaining to the manipulation of genes, the detection of pathological conditions, comparative gene analysis, methods for fabricating tests of biological samples and the use proteins as markers for cancers.

IPSCIO Record ID: 203324

License Grant
The German Licensor grants the Israeli Licensee a worldwide non-exclusive license under the Patent Rights of a German non-profit research organization who has authorized the Licensor as its technology transfer agent, to make, have made, use, import, sell, have sold and offer for sale Licensed Products and Licensed Services.
License Property
The patents and licensed products are relating to microRNA sequences and Small expressed RNA molecules.

MicroRNAs (miRNAs) are recently discovered, naturally occurring small RNAs that act as protein regulators and have the potential to form the basis for a new class of diagnostics and therapeutics. Since many diseases are caused by the abnormal activity of proteins, the ability to selectively regulate protein activity through microRNAs could provide the means to treat a wide range of human diseases. In addition, microRNAs have been shown to have different expression levels in certain diseased versus normal tissues. As a result, these differences potentially provide for a novel diagnostic strategy for many diseases. MicroRNAs are thought to play a key role in the differentiation of cells into specific cell types performing various functions in the body.

Field of Use
The term Field Of Use means the sale and use of Licensed Products as research products for research purposes, including use of such products in the provision of research services to third parties. Specifically excluded from the Field of Use is any use for diagnostic or therapeutic purposes, whether said use is in vivo or in vitro, and any use in humans, for whatever purpose.

IPSCIO Record ID: 324837

License Grant
University grants an exclusive license to make, have made, use and sell Licensed Products in the Licensed Field in the Licensed Territory under Licensed Patents, Licensed Know-how and University Confidential Technology, with the right to sublicense third parties.
License Property
University has developed and is continuing to develop technology relating to Totally Synthetic Affinity Reagents; hereinafter TSAR Technology.

The patents are Totally Synthetic Affinity Reagents Fowlkes/Kay and Totally Synthetic Affinity Reagents Fowlkes/Kay-CON.

TSAR Technology, based on or resulting from data developed in the laboratories of Dr. Dana Fowlkes and Dr. Brian Kay, shall also mean and collectively include the identification, production, manufacture and/or utilization of (a) TSARs which includes any proteins, polypeptides and/or peptides, having specific binding affinity for any of a wide variety of ligands or portions thereof, said ligands, including but not limited to a chemical group, an ion, a metal, a synthetic organic compound, a bioorganic compound, an inorganic compound, a protein or peptide, a nucleic acid, a carbohydrate, a lipid, a fatty acid, a viral particle, a membrane vesicle, a cell wall component, or any portion of any of the above, identified by a process encompassing screening a library of vectors expressing a plurality of semi-random or random oligonucleotide sequences to identify those encoding a protein, polypeptide or peptide having specificity for a ligand of choice; (b) nucleotide sequences encoding TSARs; (c) vectors and/or libraries of vectors containing nucleotide sequences encoding TSARs; and (d) transformed cells containing the vectors encoding TSARs. The TSARs shall include both (a) unifunctional proteins, polypeptides and/or peptides having a binding domain with affinity for a ligand; and (b) heterofunctional proteins, polypeptides and/or peptides having a binding domain with affinity for a ligand and one or more biologically or chemically active effector domains, in which the binding domain and the effector domain can optionally be joined by a linker domain which is either stable or susceptible to cleavage.

Field of Use
Licensee believes its TSARs/SynGenes technology may represent a significant advance over monoclonal antibody delivery systems for certain applications.  TSARs/SynGenes can be chemically synthesized, making their production simpler and less expensive than the production of monoclonal antibodies, which are biologically produced and then chemically modified.

Research on TSARs/SynGenes to date has focused on (i) product development in the oncology area in conjunction with Licensee's future product development programs and (ii) additional areas of basic research which, if successful, may become the foundation for products outside of oncology and for out-licensing opportunities based on this technology.

Licensed Field shall mean all purposes of Licensed Products including, without limitation, therapeutic and diagnostic uses .

Licensee has exercised its right under the aforementioned Option Agreement to acquire an exclusive license to commercialize the TSAR Technology for the ultimate benefit of the public.

IPSCIO Record ID: 372489

License Grant
For the Grant of Licensee Product License by Licensor of the United Kingdom, in the event Licensor notifies Licensee that a Nominated Target has passed the Licensor Gatekeeping Procedure, then, Licensor grants a non-exclusive license, with the right to sublicense, under the Licensor Antibody Phage Display Patents and Licensor Know-How to Exploit Products against such Nominated Target in the Territory.

For Other Products, Licensor grants with effect from  January 3, 2003 to Licensee a non-exclusive license in the Territory, with the right to sublicense, under the Licensor Antibody Phage Display Patents and the Licensor Know-How for any purpose not already covered by the provisions of this Agreement, Other Purposes, including to Exploit any product, other than a Therapeutic Antibody Product, Diagnostic Antibody Product or Research Product, whose development, manufacture, use or sale would, absent the license hereunder, infringe Valid Claims of the Licensor Antibody Phage Display Patents or utilize the Licensor Know-How.

License Property
Licensor is the owner or exclusive licensee of the Licensor Antibody Phage Display Patents.

Antibody means a molecule or a gene encoding such a molecule comprising or containing one or more immunoglobulin variable domains or parts of such domains or any existing or future fragments, variants, modifications or derivatives thereof.

Catalytic Antibodies means solely those Antibodies which bind to and catalyze the chemical transformation of a substrate and in which an Antibody binding region is involved in said catalysis.

D2E7 means any Antibody directed against the Target TNF alpha.

Licensor Licensable Antibody means any Antibody, including a Bi-Specific Antibody or a PolySpecific Antibody, to a Target where such Antibody has been identified, generated, developed, produced or derived by Licensee or a Licensee Sublicensee.

Product means a Diagnostic Antibody Product or a Therapeutic Antibody Product.

Single Domain Antibodies means an Antibody containing only a single domain, heavy or light.

Target shall mean
— a polynucleotide sequence corresponding to a sequence identified in a publicly available curated database such as GenBank® by means of an accession number or similar sequence information that uniquely identifies that sequence;
— a non-proteinaceous antigen that is uniquely identifiable in a routine manner using publicly available curated databases and/or such other suitable written material as is available.

Antibody Phage Display Patents include Single domain ligands, receptors comprising said ligands, methods for their production and use of said ligands and receptors, and, Cloning immunoglobulin variable domain sequences.

Know-how includes
Licensor mammalian expression lgG vectors
— pEU1.2 (hwnangamma-1 heavy chain)
— pEU3.2 (human kappa light chain)
— pEU4.2 (human lambda light chain)
— pEU8.2 (human gamma-4 heavy chain)

Antibody phage display is a versatile, in vitro selection technology that can be utilized to discover high affinity antibodies specific to a wide variety of antigens (94).

Field of Use
The Field of Use means research and development of human or non-human therapeutics and human or nonhuman in vitro diagnostic or research reagent uses only and not any in vivo diagnostics, purifications or separations, or other industrial purposes.

IPSCIO Record ID: 237263

License Grant
Licensor grants a non-exclusive, non-transferable license, without the right to sublicense, to Licensed Patents and Licensed Know-How to use the Instrument solely for the internal research and development activities.

Licensor grants a world-wide, non-exclusive, nontransferable license, without the right to sublicense, to make, use, sell, off er for sale and import Licensed Products for genotyping HAPâ„¢ Markers in all fields other than human and animal infectious diseases. Excluded from this grant is the right to make, sell, offer for sale or import the Licensors ProbeTecâ„¢ ET.

License Property
Licensed Know-How shall mean Licensors know-how related to Licensed Patents, the ProbeTecâ„¢ ET, and custom software for the ProbeTecâ„¢ ET. Licensed KnowHow shall also include, upon written request from Licensee, Licensors know-how necessary in the design and development of assays that utilize ProbeTecâ„¢ ET.

The patents include, but are not limited to, Nucleic Acid Target Generation,  Oligonucleotides for amplification and detection of hemochromatosis, and, Methods for detecting nucleic acid sequence variations.

Licensed Products shall mean any device, instrument, service, kit, composition of matter, material, product or component thereof that utilizes Licensed Know-How.

Instrument shall mean the Licensors ProbeTecâ„¢ ET installed in Licensees HAPâ„¢ Typing facility in New Haven, CT.

HAPâ„¢ Marker shall mean a polymorphism or any ordered combination of two or more polymorphisms present at a locus on a single chromosome that is contained in the Licensee HAPâ„¢ Database during the term of this Agreement or that is discovered from any gene where such discovery was made solely by employees of Licensee or others acting on behalf of Licensee, or, jointly by employees of Licensees or others acting on its behalf and employees of a HAPâ„¢ Partner or others acting on its behalf or for which a HAPâ„¢ Partner requests Licensee to develop genotyping assays or provide genotype data.

Licensor ProbeTecâ„¢ ET shall mean the clinical platform for infectious disease testing owned by Licensor using Strand Displacement Amplification Technology or SDA Technology and real time detection means.

LICENSED PATENTS

1. US Patent No. 5,270,184, entitled 'Nucleic Acid Target Generation'

2. US Patent No. 5,422,252, entitled 'Simultaneous Amplification of Multiple Targets'

3. US Patent No. 5,455,166, entitled 'Strand Displacement Amplification'

4. US Patent No. 5,536,649, entitled 'Decontamination of Nucleic Acid Amplification Reactions'

5. US Patent No. 5,547,861, entitled 'Detection of nucleic acid amplification'

6. US Patent No. 5,648,211, entitled 'Strand Displacement Amplifcation Using Thermophilic Enzymes'

7. US Patent No. 5,624,825, entitled 'Simultaneous Amplification of Multiple Targets'

8. US Patent No. 5,691,145, entitled 'Detection of nucleic acids using G-quartets'

9. US Patent No. 5,712,124, entitled 'Strand Displacement Amplification'

10. US Patent No. 5,736,365 entitled 'Multiplex nucleic acid amplification'

11. US Patent No. 5,744,311 entitled 'Strand displacement amplification using thermophilic enzymes'

12. US Patent No. 5,840,487, entitled 'Internal controls for isothermal nucleic acid amplification reactions'

13. US Patent No. 5,863,736, entitled 'Method, apparatus and computer program products for determining quantities of nucleic acid sequences in samples'

14. US Patent No. 5,888,739, entitled 'Detection of nucleic acids using G-quartets and Itetraplexes'

15. US Patent No. 5,916,779, entitled 'Strand displacement amplification of RNA
targets'

16. US Patent No. 5,919,630, entitled 'Detection of nucleic acids by fluorescence quenching'

17. US Patent No. 5,928,869, entitled 'Detection of nucleic acids by fluorescence quenching'

18. US Patent No. 5,935,791, entitled 'Detection of nucleic acids by fluorescence quenching'

Field of Use
Licensee creates personalized medicines through the integration of pharmacogenomics into drug development and marketing.  The fields of human and animal infectious diseases are excluded from this license.

IPSCIO Record ID: 263910

License Grant
The University grants the Israeli Licensor a co-exclusive, world-wide license to make, have made, use, have used, import, sell, have sold, and offer for sale Licensed Products in the Field of Use during the Term.
License Property
The technology relates to microRNA sequences.  The patents are for Anti Micro-RNA Oligonucleotide Molecules;  Pancreatic Islet MicroRNAs and Methods for Inhibiting Same;   DNA Virus MicroRNAs and Methods for Inhibiting Same; and,  Human MicroRNAs and Methods for Inhibiting Same.
Field of Use
The term Field of Use means human and animal therapeutics.

MicroRNAs have been shown to hold tremendous potential as a new class of prospective drug targets with significant therapeutic opportunity.

MicroRNAs (miRNAs) are a recently discovered, naturally occurring form of RNAi. These small RNAs act as protein regulators and have the potential to form the basis for a new class of diagnostics and therapeutics. Since many diseases are caused by the abnormal activity of proteins, the ability to selectively regulate protein activity through microRNAs could provide the means to treat a wide range of human diseases. In addition, microRNA expression levels have been shown to be correlated with various disease states and to hold great potential as diagnostics and prognostic markers

Licensee's lead therapeutic development program for liver cancer (hepatocellular carcinoma or HCC) has so far identified four microRNAs that when inhibited in vitro lead to a decrease in liver cancer cell proliferation.

IPSCIO Record ID: 291130

License Grant
Licensor hereby grants to Licensee, and Licensee hereby accepts from Licensor, a royalty-bearing, non exclusive, personal, non-transferable license under the Licensed Technology solely to perform Licensed Services within the Territory.

Licensor hereby grants to Licensee the right and Licensee accepts and agrees to credit Licensor as the source of its Licensed Technology rights in Licensees promotional materials and any other materials intended for distribution to Third Parties as follows

License Property
Licensor owns and has the right to grant licenses to practice under certain United States Patents describing and claiming, inter alia, nucleic acid amplification processes known as polymerase chain reaction ('PCR'), homogeneous PCR, and RT-PCR ('reverse transcription PCR').

Licensed Technology shall mean, subject to the following limitations, the Valid Claims of the United States patents listed in Agreement and any reissue or reexamination patents thereof. No rights under any kit claims of such patents are included in this definition or licensed under this Agreement. With the exception of the reaction mixture claims of United States Patents Nos. 5,804,375, 5,693,517, 5,476,774 and 6,127,155, the plasmid claims of the 5,476,774 patent, the primer claims of United States Patent No. 5,573,906, and the probe claims of United States Patent No. 5,110,920, no rights under any apparatus, device, composition of matter, reagent or substance claims of such patents are included in this definition or licensed under this Agreement.
4,683,195 – Process for amplifying, detecting, and/or-cloning nucleic acid sequences
4,683,202 – Process for amplifying nucleic acid sequences
4,965,188 – Process for amplifying, detecting, and/or cloning nucleic acid sequences using a thermostable enzyme

Diagnostic Product shall mean an assemblage of reagents, including but not limited to reagents packaged in the form of a kit, useful in performing a Licensed Service.

Licensed Service(s) shall mean the performance by Licensee of an in vitro procedure within the Licensed Field which utilizes the Licensed Technology. Licensed Services include, but are not limited to, any combination of the steps of collecting a sample for analysis, isolating nucleic acid sequences from the sample, amplifying one or more desired sequences, analyzing the amplified material, including sequence analysis, and reporting the results.

Field of Use
Licensed technology includes specified nucleic acid amplification processes, to perform certain polymerase chain reaction-based human in vitro clinical laboratory services.

Licensed Field shall mean the field of clinical laboratory services that detect the presence, absence and/or quantity of a nucleic acid sequence for the detection, diagnosis, confirmation, prognosis, management and/or treatment of a human disease or condition, including, but not limited to, such services to identify predisposition to disease, disease susceptibility, confirm disease, predict therapeutic effectiveness or monitor disease progress; used in the course of human clinical trials; for Parentage Determination; and for tissue transplant typing, including testing performed on animal tissue intended for use in xenotransplantation. Licensed Field shall specifically exclude any services performed for the screening of blood and/or blood products.

IPSCIO Record ID: 233461

License Grant
The Swiss Licensor grants a non-exclusive license under the Licensed Patents as follows
– to make, have made, import, use, offer to Sell and Sell Licensed Products in the In Vitro Human Diagnostics Field in the Territory, and authorize End-Users to perform Diagnostic Services using such Licensed Products in processes covered by the Licensed Patents in accordance with the label license provided with the purchase of such Licensed Products.
– to grant a limited, non-transferable, royalty free sublicense under the Licensed Patents to Research Collaborators of Licensee and/or its Affiliates to practice PCR under their respective contracts with Licensee and/or its Affiliates, in accordance with the terms and conditions of this Agreement, solely for purposes of doing applied research and development for Licensee and/or its Affiliates of Licensed Products to be Sold in the In Vitro Human Diagnostics Field in accordance with the other terms and conditions of this Agreement; and
– to use PCR technology for the research, development, improvement and quality control and quality assurance of Licensed Products, in each case by Licensee and its Affiliates, internally, for Sale in the In Vitro Human Diagnostics Field.

For Label Licenses on Licensed Products Sold in the In Vitro Human Diagnostics
– Licensees right to sublicense is limited to the right to convey use rights pursuant to a Label License under process claims and composition of matter claims,not apparatus, device or system claims, only to End-User customers, and only through the Sale of Licensed Products.
– Licensee agrees that it shall mark conspicuously all Complete Diagnostic Kits made by or for it,
– Licensee agrees that it shall mark conspicuously all Component Systems for amplification made by or for it
– Licensee agrees that it shall mark conspicuously all Component Systems for detection made by or for it
– Licensee agrees that it shall mark conspicuously all Component Systems for amplification and detection made by or for it
– Licensee agrees that it shall mark conspicuously all Royalty Products other than Complete Diagnostic Kits, Component Systems for amplification, Component Systems for detection and Component Systems for amplification and detection made by or for it and Sold in the In Vitro Human Diagnostics Field.

License Property
The Complete Diagnostic Kit means a product dedicated for use in connection with the practice of PCR in the In Vitro Human Diagnostics Field, it being understood that a product shall be deemed to be so dedicated if it is either  a product having a package insert indicating its use primarily in connection with the practice of PCR; or a product which by virtue of its design, operation or construction has no other substantial practical utility, and which product is comprised of, at a minimum, the essential active reagents for amplification and detection of a target nucleic acid in the In Vitro Human Diagnostics Field. For purposes of this Agreement, Licensee shall only convey the necessary rights for End-Users to perform PCR in the In Vitro Human Diagnostics Field with the Sale of a Complete Diagnostic Kit.

Licensed Product means a product for use in the In Vitro Human Diagnostics Field, the manufacture, importation, use, offer for Sale or Sale of which would infringe a Valid Claim of Licensed Patents, made by or specifically for Licensee or any of its Affiliates only pursuant to Licensees or its Affiliates specifications, which is any of the following or a combination of any of the following
(a) Complete Diagnostic Kit;
(b) A reagent, accessory, device or system which is used or Sold to be used by End-Users in connection with the practice of PCR, including the steps of sample preparation, amplification and detection;
(c) A Component System; and/or
(d) Reagents Sold to be used by End-Users as replacement components in regard to a Component System.

PCR means the polymerase chain reaction process and technology.

Patents relate to Process for Amplifying, Detecting, and/or Cloning Nucleic Acid Sequences.

Field of Use
This agreement is for the purpose of developing and commercializing PCR based in vitro human diagnostic products for use in clinical diagnostic testing;

The Human Identity Field means the field of use comprising products and processes utilizing PCR for the sole purpose of determining human identity or distinguishing among human beings, whether living or dead. The Term Human Identity Field shall included parentage testing to determine if two or more human beings are biologically related as parent and child and forensic testing for use in, or in preparation for, death investigations or other legal proceedings, but such term shall specifically exclude testing for tissue typing.

In Vitro Human Diagnostics Field means the field of use comprising products and processes utilizing PCR for the measurement, observation or determination of attributes, characteristics, diseases, traits or other conditions of a human being for the medical management of that human being, including without limitation
(a) genetic testing, including determinations of genetic predisposition;
(b) oncology and cancer predisposition testing;
(c) testing for tissue typing (excluding the Human Identity Field);
(d) infectious disease detection, screening, confirmation and monitoring; and
(e) therapeutic drug monitoring.

For purposes of this Agreement, the term 'In Vitro Human Diagnostics Field' shall not include the Human Identity Field.

“PCR” means the polymerase chain reaction process and technology involving the amplification of a nucleic acid sequence and the complement of that sequence by repeated cycles of oligonucleotide mediated, template directed synthesis involving the extension of a component primer oligonucleotide by incorporation of monomeric nucleotide triphosphates whereby the sequence, its complement and subsequent synthetic copies thereof are repeatedly separated and used as templates for further cycles of synthesis.

IPSCIO Record ID: 273391

License Grant
Licensor hereby grants to Licensee, subject to all the terms and conditions of this Agreement, a worldwide, nonexclusive right and license (without the right to grant sublicenses) under the Patent Rights to (a) use, offer to sell, sell and practice Diagnostic Services in the Field; (b) make, have made, use, offer to sell, sell and import Licensed Reagents in the Field; and (c) make, have made, use, offer to sell, sell and import Kits in the Field. Notwithstanding the foregoing, Licensor hereby grants to Licensee the worldwide, non-exclusive right to convey to the end-user (purchaser) of FDA (U.S. Food and Drug Administration) Approved Kits manufactured by Licensee the right to perform Diagnostic Services solely in conjunction with the use of FDA Approved Kits manufactured by or on behalf of Licensee (without the right to grant sublicenses).
License Property
Patent Rights shall mean collectively the Gene Patent Rights and the Methodology Patent Rights.

Diagnostic Service(s) shall mean the performance of laboratory-based assays covered in whole or in part by a Valid Claim of the Patent Rights.

Gene Patent Rights shall mean the United States and foreign patents and patent applications relating to the APC (Adenomamus polyposis coli) gene and/or the p53 gene and licensed (with the right to grant sublicenses) to Licensor pursuant to the JHU (Johns Hopkins University) License Agreement together with patents arising therefrom and any extensions, registrations, confirmations, reissues, divisions, continuations or continuations-in-part, re-examinations or renewals thereof, including without limitation the patents and patent applications listed hereto (which may be updated from time to time to include such additional patents and patent application that may arise therefrom); provided, however, that Gene Patent Rights expressly excludes any claims of such patents and patent applications that fall outside of the Field, including, without limitation, claims to antibodies, to the treatment, prevention or remedying of a gene deficiency, to purified proteins, or to DNA (Deoxyribonucleic acid) sequences other than those sequences that correspond to the p53 gene and the APC (Adenomatous polyposis coli) gene; provided further that DNA sequences which are (i) immediately adjacent to the p53 or APC genes and (ii) necessary to the use of the p53 or APC genes, respectively, in the Field shall be considered within the Gene Patent Rights.

US Patent No.  5,352,775 – APC gene and nucleic acid probes derived therefrom
US Patent No.  5,527,676 – Detection of loss of the wild-type P53 gene and kits therefor

Methodology Patent Rights shall mean the United States and foreign patents and patent applications relating to methods of detecting mammalian nucleic acids isolated from stool specimens and reagents therefor and licensed (with the right to grant sublicenses) to Licensor pursuant to the JHU (Johns Hopkins University) License Agreement together with patents resulting therefrom and any extensions, registrations, confirmations, reissues, divisions, continuations or continuations-in-part, re-examinations or renewals thereof, including without limitation the patents and patent application listed hereto (which may be updated from time to time to include such additional patents and patent applications that may arise therefrom).

US Patent Application No. W093/20235 and 08/861,910 (detecting mammalian nucleic acids from stool)

Licensed Reagent shall mean any Reagent covered in whole or in part by a Valid Claim of the Patent Rights.

Kit shall mean a collection of one or more Reagents, including at least one Licensed Reagent, packaged in the form of a kit (including an FDA Approved kit).

Field of Use
Field shall mean (a) stool-based detection of any disease or condition (including pre-cancers, staging and monitoring of the foregoing, and therapeutic response) for research and development, Clinical Laboratory Improvement Amendments (CLIA) testing services (and their foreign equivalents), and FDA Approved Kits; and (b) a screening assay (regardless of other uses to which such assay is put) for colorectal cancer in any type of patient samples, excluding tests solely for staging and/or monitoring of colorectal cancer which do not obsolete or adversely impact such screening assay.

IPSCIO Record ID: 362503

License Grant
University grants to Israeli Licensee and its Affiliates a nonexclusive, world-wide license to make, have made, use, import, sell, have sold and offer for sale Licensed Products in the Field of Use during the Term. Licensee has no right to sublicense except as set forth. University grants no other rights or licenses.
License Property
Intellectual property owned by the University relates to microRNA sequences.

University Patent Rights means all patent rights represented by or issuing from (a) the United States patent applications; (b) any continuation, divisional and re-issue applications of (a); and (c) any foreign counterparts and extensions of (a) or (b).

microRNAs have the potential to form the basis of a novel class of diagnostic tests and therapies for many serious illnesses, including cancer and infectious diseases.

Field of Use
Field Of Use means the sale and use of research products including use of such products in the provision of services to third parties. Specifically excluded from the Field of Use is any use for diagnostic or therapeutic purposes, whether said use is in vivo or in vitro.

Field of use relates to microRNA. MicroRNAs are known as genes and naturally expressed, or produced, using instructions encoded in DNA and are believed to play an important role in regulating protein production. Proteins control most biological processes and thus we believe that microRNAs as their regulators have the potential to form the basis of a novel class of diagnostic tests and therapies for many serious illnesses. We have a four-part business model (each of which is referred to herein as a “Line of Business”) designed to capitalize on a number of different approaches to the development and commercialization of microRNA-based therapies and diagnostics.

IPSCIO Record ID: 289237

License Grant
Licensor hereby grants to Licensee under the Licensed Patents a non-exclusive license, without the right to grant sublicenses, to research and develop, to make, have made (with prior notification to Orchid), sell, offer for sale or otherwise dispose of Licensed Products in the Territory solely for use in the Licensed Field.

Under this license, Licensee may use the Licensed Product only to the extent necessary to perform research and development on Licensed Products for sale hereunder and/or quality control functions on lots of the Licensed Products, but under no circumstances may Licensee use the Licensed Products for Research Purposes or for any other purpose within or outside the Licensed Field.

Licensor additionally grants to Licensee, under the Licensed Patents, a non-exclusive license, without the right to grant sublicenses, to research and develop, to make, have made (with prior notification to Licensor), sell, offer for sale or otherwise dispose of Kits in the Territory to a Third Party Licensee for use in the Licensed Field or otherwise consistent with such Third Party Licensees license from Licensor.

License Property
Licensed Product means a Kit and an End User License.

Kit means a product designed for performing Primer Extension comprising one or more Reagents, the sale or offer for sale of which, without the licenses granted herein, would infringe or contribute to the infringement of at least one claim of a Licensed Patent.

Licensed Patents means US Patent No. 5,888,819 and 6,004,744 and any divisionals, continuations, reissues, and foreign counterparts thereof.  To date foreign patents include the Australian Patent No. 660,173.
5,888,819 – Method for determining nucleotide identity through primer extension
6,004,744 – Method for determining nucleotide identity through extension of immobilized primer

Genotype means the detection or quantification of an individual SNP within a single sample.

'SNP' means single nucleotide polymorphism.

Reagent means an enzyme, buffer, primer extension chain-terminating compound or other composition useful for Primer Extension.

Field of Use
This agreement pertains to methods for determining nucleotide identity.

Average nucleotide identity (ANI) is a comparative measurement between the similarity of two genomes sequences. Here we present a tutorial on R that allows the user to identify and visualize groups of genomic species using the output of different ANI algorithms.

Licensed Field means the use of a Licensed Product on an Approved Instrument for Research Purposes only.

Disclaimer: The information gathered from RoyaltySource® database was sourced from the U.S. Securities and Exchange Commission EDGAR Filings and other public records. While we believe the sources to be reliable, this does not guarantee the accuracy or completeness of the information provided. Further, the information is supplied as general guidance and is not intended to represent or be a substitute for a detailed analysis or professional judgment. This information is for private use only and may not be resold or reproduced without permission.