Royalty Report: Diagnostic, Cancer, Medical – Collection: 223141

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 20

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: 20

Primary Industries

  • Diagnostic
  • Cancer
  • Medical
  • Disease
  • Drugs
  • Assay
  • Test/Monitoring
  • Genome
  • Proteins
  • Biotechnology
  • Diagnostic Substances
  • Therapeutic
  • Research
  • nucleic acid
  • Food
  • Device

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: 223141

License Grant
The German Licensor hereby grants to Licensee an exclusive license (including the right to grant sublicenses) under the Licensed Patent Rights to conduct research and to develop, make, use, offer for sale, sell and import Licensed Products and to provide Services in the Territory.
License Property
Licensed Patent Rights shall mean (a) those certain patent applications and patents listed hereto; (b) all patents that have issued or in the future issue from such foregoing patent applications, including utility, model and design patents and certificates of invention; (c) all patents that have issued or in the future issue from any patent application that claims priority from, or common priority with, any of the foregoing patent applications, including utility, model and design patents and certificates of invention; and (d) all divisionals, continuations, continuations-in-part, reissues, renewals, extensions or additions to any such foregoing patent
applications and patents.

W003023057 (PCT /EP02/05489) – Method and Diagnosis Kit for Selection and/or for Qualitative and/or Quantitative Detection of Cells

Licensed Products shall mean in-vitro diagnostic assays to isolate, detect, identify, quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of prostate cancer and/or bladder cancer, for the purpose of research, diagnosis or medical care, the  manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the AdnaGen Patent Rights.

Field of Use
This agreement pertains to the medical industry relating to certain technology concerning the qualitative and quantitative detection of cells which may be useful in connection with nucleic acid diagnostic assays. The diagnostic indicators are used for the presence of prostate cancer and/or bladder cancer, for the purpose of research, diagnosis or medical care.

'Group 1 Additional Products' shall mean in-vitro diagnostic assays to isolate, detect, identify or quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of kidney cancer, cervical cancer, and/or ovarian cancer, for the purpose of research, diagnosis or medical care, the manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the Licensed Patent Rights.

'Group 2 Additional Products' shall mean in-vitro diagnostic assays to isolate, detect, identify or quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of lung cancer, colon cancer, and/or breast cancer, for the purpose of research, diagnosis or medical care, the manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the Licensed Patent Rights.

IPSCIO Record ID: 324667

License Grant
German Licensor grants to Licensee and its Affiliates a worldwide, non-exclusive license (without the right to sublicense) under the Licensed Patents (i) to make, to have made, to use, to have used, to import, to have imported, to offer to sell, to have offered to sell, and to sell and to have sold Licensed Products and to pass on to direct and indirect purchasers of Licensed Products the right to use such purchased Licensed Products and (ii) to perform Licensed Services.
License Property
The term Licensed Patent(s) shall mean those patents and patent applications which are listed below as well as any reexamination certificate, reissue, substitution, renewal, extension, addition, utility model or other patent right, U.S. or foreign, which has now issued or in the future may issue from any continuation, continuation in part or divisional application of such patents and patent applications.
US Patent #5,185,243 – Method for detection of specific nucleic acid sequences
US Patent #5,516,641 – Method for detection of specific nucleic acid sequences

The term Licensed Product(s) shall mean any human vitro diagnostic testing product and any other product whose manufacture, use, or sale would, but for the license granted under this Agreement, infringe any claim of a Licensed Patent which claim has not been held unpatentable, invalid or unenforceable by a decision of a  competent tribunal from which no appeal has or can be taken or which claim has not been admitted by the patentee to be invalid or unenforceable.

The term Licensed Services shall mean any services performed by using Licensed Products and any services the performance of which would in the absence of the license granted herein infringe any claim of a Licensed Patent which claim has not been held unpatentable, invalid or unenforceable by a decision of a competent tribunal from which no appeal has or can be taken, or which claim has not been admitted by the patentee to be invalid or unenforceable.

Licensor is a leading manufacturer and distributor of in vitro diagnostics, or IVD, products worldwide with a strong market position in each of the core product markets, which include chemistry/immunochemistry, hemostasis, microbiology and infectious disease diagnostics.

Field of Use
Field of Use is for human vitro diagnostic testing.

In Vitro diagnostics (IVDs) are diagnostic tests that that can detect diseases, conditions, or infections. In vitro diagnostics test a sample of tissue or bodily fluids, as opposed to testing inside the body

Licensee develops products for applications in the life sciences, oncology, reproductive health and other segments.

IPSCIO Record ID: 383585

License Grant
Licensor of Germany grants to the Licensee of Belgium an exclusive worldwide license, with the right to grant sublicenses, under the Licensed IP and Licensor Technology in the Field to develop, have developed, make, have made, use, have used, sell, have sold, import, to have imported, offer for sale and have offered for sale Licensed Products in the Territory.

Licensor grants a non-exclusive worldwide license, with the right to grant sublicenses, under the Licensed IP and Licensor Technology in the Field to develop, have developed, make, have made, use, have used, sell, have sold, import, co have imported, offer for sale and have offered for sale Licensed Products in the Territory. This will secure Licensees non-exclusive access to Licensors Collect technology.

Licensor grants the right to extend the right to use such Licensed Product to their customers of the Licensed Product on which the royalty is paid, label license.

License Property
Licensor owns or controls, on a worldwide basis, the rights, titles and interests in certain patent rights, relating to circulating tumor cells technology.

Licensed Products encompass the components Collect, Select and Detect.

NAT is nucleic acid amplification technology.

Platforms shall mean technologies employed in Licensed Products as well as competitive products based on the same or essentially similar technologies (employing the same scientific or technical principles), used in LIPA, 4•MAT and Luminex systems or certain, identified Real Time PCR technology.

Patents include
Colon cancer Method and Kit for the diagnosis of therapy of colon cancer
Breast cancer Method and Kit for the diagnosis of therapy of breast cancer
Core patent Method and diagnosis kit for selection and/or quantitative detection of cells
Reagency and method for preventing time-dependent RNA -expression in biological cells

Field of Use
The field shall mean circulating tumor cell isolation and detection using existing and future Licensor Technology for breast, colon, lung and upon availability, prostate cancer.

IPSCIO Record ID: 203343

License Grant
The parties previously entered a Clinical Diagnostics Agreement and Blood Screening Agreement.

Pursuant to the settlement, the parties hereby irrevocably stipulate the Licensor Licensed Patents in the Territory are valid and enforceable; and, the making, use, offer for sale, sale, or importation of any Licensee Product in the Territory, where a Licensor Licensed Patent has issued and prior to the expiration of such Licensor Licensed Patent, would, in the absence of the licenses granted in the Agreements, as applicable, constitute infringement of one or more claims of such Licensor Licensed Patent.

Per the original agreement, the Parties entered a nonexclusive license in the Territory, without the right to sublicense, under the Licensor Licensed Patents to make, import, use, offer for sale and sell Licensor Licensed Products for use in Blood Screening solely for sale to or use by or on behalf of Existing Customers under the Existing Agreements and Existing Offers.

License Property
The Licensee Products means all assays sold by Licensee for the detection, quantitation, genotyping or other analyses of nucleic acid sequences Directed to HIV for use in in vitro diagnostics and/or Blood Screening, including without limitation the following products of Licensee Amplicor HIV-1 test, v. 1.0; Amplicor HIV-1 Monitor test, v. 1.0; Amplicor HIV-1 Monitor test, v. 1.5; COBAS Amplicor HIV-1 Monitor test, v. 1.5; Ampliscreen HIV-1 test, v. 1.5; and COBAS Ampliscreen HIV-1 test, v. 1.5; and all versions and successors and substitutes therefor.

Blood Screening means the commercial use of products that detect nucleic acid sequence(s) for the screening of blood, plasma or blood components intended for transfusion or for use in blood products (e.g., without limitation, immunoglobulins); or confirmatory or supplemental testing of the same samples otherwise screened for purposes described.

Directed to HIV means that the claim or technology in question is directed to methods, compositions, reagents or kits specifically for use in nucleic acid-based diagnostic assays for the detection of HIV nucleic acid sequence(s), or specifically for use in the manufacture of any compositions or reagents for use in, or manufacture of nucleic acid-based diagnostic assays for detection of HIV nucleic acid sequence(s) (excluding, for example, polymerase chain reaction claims and technology and other methods for detection of nucleic acid sequence(s) generally which involve nucleic acid amplification).

HIV means any viral isolate of the human immunodeficiency virus classified as HIV by the International Committee on the Taxonomy of Viruses (or any body that replaces such Committee) or any subtype of such isolate and further includes any isolate that is at least forty percent (40%) homologous to any such isolate and of the same genomic type and substantially the same genomic organization, any isolate that has a genome that either hybridizes to or is substantially identical to any such isolate or its compliment, and any defective or modified form of any of the above isolates.

''Patent' means U.S. Patent No. 6,531,276 Bl

Field of Use
This agreement is for the HIV Qualitative Assay field.

IPSCIO Record ID: 6345

License Grant
The Company grants an exclusive, worldwide, royalty-bearing License, with the right to subLicense, to make, have made, use, sell and import Licensed Products, which includes finished products used for the detection of the Company’s proprietary prostate cancer biomarkers in both urine and biopsied prostate tissue for differentiating clinically significant prostate cancer from other prostate conditions, and to use Patent Rights and Know-How covering the prostate cancer biomarkers.
License Property
Licensed Product(s) shall mean finished products consisting of one or more nucleic acid detection reagents for the assay of one or more Prostate Marker(s) for use in the Field, the manufacture, use, sale or importation of which, but for the rights granted herein, would infringe a Valid Claim within Patent Rights.

U.S.
7,117,188
Method of Identifying Patterns in Biological Systems and Uses Thereof

U.S.
12/025,724
Biomarkers Upregulated in Prostate Cancer

U.S.
12/242,264
Biomarkers Overexpressed in Prostate Cancer

U.S.
12/327,823
Methods for Screening, Predicting and Monitoring Prostate Cancer

U.S.
12/349,437
Methods for Screening, Predicting and Monitoring Prostate Cancer

Field of Use
Field shall mean the use of a molecular diagnostic assay using the Licensed Prostate Markers in in vitro diagnostics relating to prostate cancer, including the detection of the presence or risk of prostate cancer, or the selection of therapy, or in a Research Application related to prostate cancer.

IPSCIO Record ID: 28150

License Grant
The Company engages the Consultant to continue the research and development of the ebaf assay.  The Consultant agrees to devote his full time good faith efforts to continue the research and development and validation of the uses of the ebaf assay and such other duties and tasks as may be assigned by the Company from time to time.
Field of Use
The ebaf assay can be used for the following purposes; (a) diagnostic screening test for colon cancer; (b) diagnostic screening test for ovarian cancer; (c) diagnostic screening test for bladder cancer; (d) Method for inducing growth and enhancing survival of nervous tissue; (e) Inhibition of TGF-Beta and Uses Thereof [US09/679,971]; and (f) Method for Promoting Hair Growth.

IPSCIO Record ID: 329692

License Grant
Prior to the Effective Date of this Agreement, the Parties have been involved in collaborative efforts to jointly develop assays for the ANAIS Instrumentation.

By this agreement, the Parties shall cooperate in the Development Transition and in the transfer of any information and Know-How necessary for Licensee to assume the development of the ANAIS Products.

Licensor grants a non-exclusive, non-transferable, worldwide license in the ANAIS Field to use the Licensor Technology to develop, make and have made, use, sell, offer for sale, have sold, and import the ANAIS Products, solely and exclusively for use on the ANAIS Instrumentation.

License Property
The ANAIS Instrument shall be an automated laboratory instrument for performing nucleic acid assays utilizing High Density DNA Probe Arrays.
Key BioChemistry Components include
– All enzymes used in transcription-based amplification for use in ANAIS Assays.
– All biochemical components used for amplification of amplicon of target with TMA, which is Licensors patents and technology relating to Nucleic Acid Sequence Amplification Methods.
– All probes, primers, and oligonucleotides used in ANAIS Assays.
– Nucleic acids used for ,positive and negative controls, standards, calibrators, and for quality control of ANAIS Assay components.

ANAIS products shall mean the following Probe Assays, in each case made, used, or sold under the license granted by Licensor and solely and exclusively for use on ANAIS Instrumentation
– Probe Assays for the detection, identification, quantification, and/or susceptibility testing for panels of microorganisms or agents (but specifically excluding single organisms) in specimens taken from humans, solely for the purpose of diagnosis and medical care of the persons from whom the tested samples were taken. A panel shall test for 10 or more distinct species of organisms or agents in the following groups of microorganisms
or agents  Bacteria; Viruses; Yeast/Fungi; or, Parasites.The panels shall be medically relevant.

– Probe Assays for the detection, identification, quantification, and/or susceptibility testing for an individual organism, drawn only from the groups or families listed below, in specimens taken from humans, solely for the purpose of diagnosis and medical care of the persons from whom the tested samples were taken Hepatitis virus; HIV virus; Herpes virus; Human papilloma virus; HTLV Virus; Yeast; Fungus; Parasite; and, Bacterium other than Neisseria gonorrhoeae or Chlamydia trachomatis.

– Probe Assays for testing of sequences encoding human leukocyte antigens in specimens taken from humans and/or

– Probe Assays to detect and /or precisely identify microorganisms or agents including bacteria, yeast, viruses and parasites for use in quality control processes of water, food products, and/or previously developed pharmaceutical or cosmetic products, and/or identify foods coming or derived from plants and/or/ animals for the purpose of confirming anticipated source(s) of the food.

Assay shall mean a diagnostic process or procedure applied to a sample, or a portion of a sample, whereby a particular chemical compound, or a collection of compounds, or a portion of a chemical compound, is detected and optionally quantified.

Field of Use
The ANAIS Field shall mean
– the detection, identification, quantification, and/or susceptibility testing of organisms or agents causing human clinical infectious diseases, as present in the human body, solely for the purpose of diagnosis and medical care of the persons from whom the tested samples were taken;
– testing for sequences encoding human leukocyte antigens;
– testing for microorganisms or agents, including bacteria, yeast, viruses and parasites in quality control processes of water, food products, and/or previously developed pharmaceutical or cosmetic products; and/or
– testing for the purposes of identifying genetically-modified foodstuffs or identifying animal species in foodstuffs.

The ANAIS Field specifically does not include testing for infectious agents in blood and blood products intended for transfusion, or the testing for infectious agents in blood in connection with organ transplants, or the testing of specimens from non-human animals or environmental sources except as specifically provided above, even if such testing is for the purpose of detecting or identifying organisms which are associated with infectious diseases in man.

IPSCIO Record ID: 233447

License Grant
The parties are entering this agreement to manufacture and commercialize in-vitro diagnostic tests.

Licensor grants a non-exclusive, non-transferable, worldwide, right and license to make, use, and sell the Licensed Products and to practice the Licensed Method for the Field of Use for the term of this  Agreement.

License Property
The patents are for Methods and Compositions for Detecting Human Tumors, and, Determination of Status In Neoplastic Disease.

Licensed Product, as used herein, shall mean any kit, composition of matter, or material either covered by the Patent Rights or produced by the Licensed Method, the use of which would constitute, but for the license granted to Licensee pursuant to this Agreement, an infringement of any pending or issued claim within the Patent Rights.

Licensed Method, as used herein, shall mean any process or method that is covered by the Patent Rights, the use of which would constitute, but for the license granted to Licensee pursuant to this Agreement, an infringement of any claim within the Patent Rights.

Field of Use
Field of Use shall mean for use as nucleic acid probe, protein or antibodies, or a combination thereof for research or diagnostic purposes.

IPSCIO Record ID: 237259

License Grant
Licensor grants the Japanese Licensee, a non-exclusive, non-transferable license in the Territory under the Licensor Patent Rights to develop, make, have made, use, offer for sale, sell and have sold, Licensed Products in the Field, Future Licensed Products and to practice Licensed Methods in the Field.
License Property
The patents include Method for Detecting, Identifying and quantitating organisms and viruses, and, a Method for Determining  the sensitivity of Microorganisms, and, a Nucleic Acid Probe, and, Method for releasing RNA and DNA from Cells, and, Accelerated Nucleic Acid re-association method, and, Nucleic Acid Probes for Detection of non-viral organisms.

Licensor has developed proprietary technology relative to the performance of diagnostic assays based on genetic probe technology for the detection of agents causing infectious diseases, including viruses, and for the detection of cancer.

Licensor Patent Rights shall mean the Japanese patents, patent applications and international applications, to the extent they enter the national stage in Japan; all patents that have been issued or in the future issue, that are derived from or are related to, all patents to this Agreement, including without limitation utility model and design patents and certificates of invention.  

Licensed Product shall mean any already developed product or product in development as of the effective date of this agreement.  The products relate to DNA Probe – HBV Quantitative HBV, Infectious Disease , and Cancer.

Licensed Method shall mean any method, the use or practice of which would constitute, but for the license granted herein, an infringement of any issued Valid Claim within the Licensor Patent Rights.

Field of Use
Field shall mean the field of diagnostics, including but not limited to human, animal and environmental diagnostics and food testing and of investigational use only (IUO) applications.

The Field specifically does not include nucleic acid probe based testing of human blood, plasma or other blood products intended for direct transfusion or administration to humans. The Field also does not include nucleic acid probe based testing for infectious agents in blood in connection with organ transplants.  Excluded Assay Targets are Hepatitis Viruses, Herpes Viruses, HIV-1, HIV-2, HTLV-I, HTLV-11, MSRV,  and, HMMT-like Virus.

IPSCIO Record ID: 329696

License Grant
Licensor of the United Kingdom grants a world-wide, exclusive sublicense under the University Patent Rights and a world-wide, exclusive license under the Licensor Patent Rights and Licensor Confidential Information to develop, use, manufacture, have manufactured, market and sell Licensed Products, and to practice the processes and procedures of such Patent Rights and Confidential Information.  The amendment further defines the licensed product.

Licensor shall disclose to Licensee all existing Chemiluminescence Technology which is necessary or in any way useful to enable Licensee to develop, use, manufacture, have manufactured, market and sell Licensed Products.  The Parties shall continue to negotiate in good faith a Development Agreement whereby Licensor shall assist Licensee in the development of Licensed Products.

License Property
Licensor has acquired the exclusive right and license to develop, manufacture, market and sell, either by itself or with such other parties as University and Licensor shall determine, clinical diagnosis kits and/or components thereof, and/or other related products, incorporating the University Technology covered by the University Patent Rights, with the right to grant sublicenses.

The licensed University technology consists of certain compounds, materials, processes, and procedures relating to the use of stable derivatives of aryl acridinium esters as labeling agents in chemiluminescent assays such that assay reagents may be labeled with such derivatives to very high densities, and such labeled assay reagents, following the triggering of a light emitting reaction, may be quantified or detected with high sensitivity by measuring or sensing the emitted light through simple photon counters.

Chemiluminescence Technology shall mean that body of knowledge inclusive of the Licensor Confidential Information and any and all knowledge now or hereafter disclosed in the University Patent Rights or Licensor Patent Rights.

Licensed Products shall mean products for the diagnosis, detection, prognosis or monitoring of infectious disease agents and the diagnosis, detection, prognosis or monitoring of oncogenes or various forms of cancer, which incorporate Licensor Confidential Information and/or subject matter within the scope of any valid claims of any patent in the University Patent Rights or the Licensor Patent Rights and utilize nucleic acid hybridization technology in such diagnosis, detection, prognosis or monitoring.

The patents relate to Luminescent Protein Labelling, Homogeneous Assay, Acridinium Label, and, Mass Photon Immunoassay.

The May 1989 amendment updates the Licensed Products to mean products for the diagnosis, detection, prognosis or monitoring of infectious disease agents, for the diagnosis, detection, prognosis or monitoring of oncogenes or various forms of cancer and for the detection or monitoring of levels of all bacteria as a screen for corrosion-causing microorganisms, through the use of probes to conserved sequences, in oilfield produced water and other specimens associated with the petroleum industry and use of petroleum products and for the detection or monitoring of two types of corrosion-causing microorganisms which have been isolated by British Petroleum (one of which is believed to be a member of the genus Desulfovibrio and the other of which is believed to be a member of the genus Desulfotomaculum, which incorporate Bioanalysis Confidential Information and/or subject matter within the scope of any valid claims of any patent in the University Patents Rights or the Licensor Patent Rights and utilize nucleic acid hybridization technology in such diagnosis, detection, prognosis or monitoring.

Field of Use
The field of use is nucleic acid hybridization technology, initially in the fields of infectious disease and oncogenes/cancer.

IPSCIO Record ID: 204348

License Grant
The English Licensor grants to the Licensee an exclusive license with the right to sub-license under the Licensed Technology to develop, manufacture, use, sell, offer for sale and/or import Licensed Product(s) and any improvement thereto, or have done any of these on its behalf and otherwise exploit the Licensed Technology, but only in the Licensed Field in the Territory.
License Property
The licensed technology means Resulting Intellectual Property and Licensed Patents.   The resulting intellectual property, identified in the research agreement, is any Intellectual Property which is conceived, created, discovered, developed, identified or first reduced to practice in the course of the Project, derived directly from the use of Surface Enhanced Laser Desorption/Ionization, SELDI, or from the use of SELDI together with any other technology(ies) and any patents and patent applications, including any continuations, continuations in part, extensions, reissues or divisions thereof and any patents, supplementary protection certificates and similar rights that are based on or derive priority from the foregoing.

The licensed products are any and all processes, products and services practiced, sold or otherwise supplied by the Licensee or a Group Company of Licensee or its sub-licensee, and which Licensed Products or the use of such Licensed Products are within any Valid Claim of the Licensed Patents in the jurisdiction in which such Licensed Products are sold. A Licensed Product may include, without limitation a Diagnostic Test Kit, a Diagnostic Test, a Medical Implement or a Therapeutic.

Surface-enhanced laser desorption/ionization (SELDI) is a soft ionization method in mass spectrometry (MS) used for the analysis of protein mixtures.

Field of Use
The research, development and commercialization of Licensed Products for Diagnostics and Therapeutics for cancer.  The Licensee is in the Laboratory analytical instrument industry.

IPSCIO Record ID: 65273

License Grant
The Licensor grants grants the Licensee an exclusive, royalty-bearing, non-transferable , sublicensable license under the Licensed Patents and Technical Information,  relating to molecular diagnostics for lung cancer, solely to make, have made, use, sell, offer for sale, and import the Licensed Products in the Licensed Field in the Territory during the Term.
License Property
62/163,766 Methods and Compositions for Diagnosing or Detecting Lung Cancers – Patent rights and technical information and know-how relating to molecular diagnostics for lung cancer, including, but not limited to confirmatory, companion and recurrence diagnostics for any type of lung cancer with detection through whole blood, fractionated blood, plasma, serum and/or other biological samples.
Field of Use
The Licensee  will obtain a license under such patent rights, technical information and know-how to develop and commercialize products for the non invasive cancer diagnostic testing including for lung cancer.

IPSCIO Record ID: 362520

License Grant
Israeli Licensor on behalf of itself and its Affiliates hereby grants to Licensee and Licensee’s Affiliates, a Limited Exclusive, sublicensable, royalty-bearing license under the Licensed Patents to Exploit the Licensed Products in the Field in the Licensee Territory during the Term through any and all means and channels of distribution now known or hereinafter discovered.

Licensor hereby grants to Licensee and Licensee’s Affiliates, a Limited Exclusive, sublicensable, royalty-bearing license under Licensor’s intellectual property rights in the Product Technical Information to Exploit the Licensed Products in the Field in the Licensee Territory during the Term through any and all means and channels of distribution now known or hereinafter discovered.

License Property
Licensed Product shall mean any Diagnostic Test (a) the Exploitation of which, or of any process, method, material, composition or assay used therein or for the performance thereof, would infringe a Valid Claim but for the licenses granted herein, (b) which was developed or manufactured using a Licensed Process, or (c) which incorporates or is developed using Royalty-Bearing Technical Information.

Product Patent(s) shall mean all Patents in the Licensee Territory now or in the future owned or Controlled by Licensor and/or its Affiliates that are necessary or useful for any of the Diagnostic Tests and are specifically directed to one or more elements of any of the Diagnostic Tests that are unique to such Diagnostic Test (as contrasted to methods of performance in general of tests based on microRNAs or composition of matter claims that are relevant to multiple indications), including but not limited to (a) the Patents listed as may be amended from time to time by the Parties; and (b) all Patents in the Licensee Territory (i) to which any of the Patents set forth claim priority or (ii) for which any of the Patents listed a basis for priority, including any divisionals, continuations, substitutions, continuations-in-part, extensions, renewals, re-examinations or reissues of such Patents listed, provided that Product Patents(s) shall not include the Excluded Acquisition Patents or the Platform Patents. For the avoidance of doubt, (e), the Product Patents include all methods of use claims directed to the use of microRNAs for the indications that are the targets of the Diagnostic Tests, but exclude all composition of matter claims directed to microRNAs.

Platform Patent(s) shall mean all Patents in the Licensee Territory now or in the future owned or Controlled by Licensor and/or its Affiliates that are necessary or useful for the Exploitation of a Licensed Product and cover one or more compositions of matter or technologies which can be used across two or more products, including but not limited to (a) the Patents listed as may be amended from time to time by the Parties; and (b) all Patents in the Licensee Territory (i) to which any of the Patents set forth claim priority or (ii) for which any of the Patents listed a basis for priority, including any divisionals, continuations, substitutions, continuations-in-part, extensions, renewals, re-examinations or reissues of such Patents listed, provided that Platform Patents(s) shall not include the Excluded Acquisition Patents.  For the avoidance of doubt, the Platform Patents include all composition of matter claims directed to microRNAs within the Licensed Patents.

Licensed Patents shall mean the Platform Patents and the Product Patents.

Product Technical Information shall mean any Technical Information which is necessary or useful to Exploit the Licensed Products in the Licensee Territory and owned or otherwise Controlled by Licensor or any of its Affiliates as of the Effective Date or during the Term, including Licensor Improvements incorporated into the Licensed Products, if any, but excluding any Excluded Acquisition Technical Information and any Technical Information that is claimed or disclosed in the Licensed Patents.

Mets Software shall mean the source code and object code forms of a certain software application which contains, among other things, an algorithm created by or on behalf of Licensor for the purpose of processing the results of the Mets Test, in the forms that such software exists as of the Effective Date, and any updates and Improvements adopted by Licensor for the Mets Test and distributed by Licensor to Licensee during the Term.

Licensed Intellectual Property shall mean the Licensed Patents, the Product Technical Information and the Mets Software.

Field of Use
Field shall mean the diagnosis of any disease or any human condition. For the purposes of this definition, diagnosis shall mean use (a) where the medical management of a human  is involved, for (i) the measurement, observation or determination of (x) the presence of a human disease, (y) the stage, progression or severity of a human disease, (z) the risk of contracting a human disease, and/or (ii) the selection of patients for a particular treatment with respect to a disease; and/or (b) in a clinical laboratory for tracking, testing or quality controlling of human body fluids or tissue samples; and/or (c) designated and regulated by the FDA as a diagnostic test or analyte specific reagent, to the extent used according to (a) and/or (b) above.

Licensee has the exclusive right to develop and commercialize miRviewâ„¢ mets, miRviewâ„¢ meso and miRviewâ„¢ squamous tests in the United States.

Licensor has initiated microRNA-based diagnostic programs for various cancers
1.      miRviewTM mets For identification of  the origin of the primary tumor of metastases;
2.      miRviewTM squamous For differentiating squamous from non squamous non-small cell lung cancer; and
3.      miRviewTM meso For differentiating mesothelioma from other carcinomas in the lung and pleura.

IPSCIO Record ID: 249745

License Grant
Licensor grants a non-exclusive license under the Licensed Patents in the Field in the Territory during the License Term, to make, have made, use, offer to sell, sell and import Licensed Services.  Licensee shall have the right to sublicense.
License Property
The patents and technology relate to Colorectal Cancer Assay, meaning any colorectal cancer diagnostic or monitoring test including but not limited to screening, diagnosis, staging, monitoring and pharmacogenetic testing.
Field of Use
The field shall mean colorectal cancer assays used for specialty testing.

IPSCIO Record ID: 383582

License Grant
In the original agreement, Licensor granted
— For the Layton and Stanford Patent Rights a nonexclusive, non-transferrable, limited sub-licensable, world-wide license under the Layton Patent Rights and the Stanford Patent Rights to practice and use the subject matter within the Layton Patent Rights and the Stanford Patent Rights in the Licensee Database Field of Use, Diagnostic Field of Use, the Homebrew Field of Use and the Personalized Research Field of Use.
— For the Montefiore Patent Rights, a non-transferrable, limited sub-licensable, world-wide license under the Montefiore Patent Rights to practice and use the subject matter within the Montefiore Patent Rights in the Licensee Database Field of Use, the Diagnostic Field of Use, the Homebrew Field of Use and the Personalized Research Field of Use.
— For the Cancer Marker Patent Rights, Licensor grants a non-transferrable, limited sub-licensable, world-wide license under the Cancer Marker Patent Rights to practice and use the subject matter within the Cancer Marker Patent Rights in the Licensee Database Field of Use, the Diagnostic Field of Use, the Homebrew Field of Use and the Personalized Research Field of Use, only with respect to cancer.
— For the Database Patent Rights and Seilhamer/Scott Patent Rights, Licensor grants a nonexclusive, non-transferable, non-sublicensable , world-wide license under the Database Patent Rights and Seilhamer/Scott Patent Rights to practice and use the subject matter within the Database Patent Rights and the Seilhamer/Scott Patent Rights in the Licensee Database Field of Use, the Diagnostic Field of Use, the Homebrew Field of Use, and the Personalized Research Field of Use.
— For the Sublicenses, Licensee shall have the right to grant sublicenses to third parties under such Patent Rights on a Product-by-Product basis to make, use, import, sell, and offer for sale Products developed by Licensee or its Affiliates.
— For the Co-Exclusive Licenses in the Homebrew and Diagnostic Fields of Use, Co-Exclusive shall mean that each Party has the right to exercise all of the rights under the Patent Rights in question in the field of use for which the parties have co-exclusive rights, without obligation to the other except to the extent provided in this Agreement, and neither Party alone has the right to grant sublicenses to third parties under such Patent Rights without express written consent of the other Party.
License Property
Cancer Marker Patent Rights shall mean all Valid Claims listed in any of the following patents and patent applications, to the extent that they are owned by Licensor with the right to license under this Agreement, and to the extent that they claim the composition of matter or use of any nucleic acids or proteins as markers or diagnostics for cancer.

The patents include
— Processes for Genetic Manipulations Using Promoters;
— Method for Detecting Pathological Conditions;
— Comparative Gene Transcript Analysis; and,
— Methods for Fabricating Micro Arrays of Biological Samples.

Field of Use
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 of proteins as markers for cancers.

IPSCIO Record ID: 26038

License Grant
The Licensor grants to Licensee a non-exclusive right and license, without the right to sublicense, under the Licensed Patent Rights as licensed to Licensor pursuant to the Original Agreement, to make, have made, use, sell, offer for sale and import Licensed Products and to practice the Licensed Methods in the Field in the Territory to the extent permitted by law.
License Property
The Licensor is involved in the discovery, development and commercialization of medical tests that diagnose, treat and improve outcomes for patients with gynecologic cancers and related diseases. Field shall mean in-vitro diagnostics for screening, diagnosing and monitoring for Ovarian Cancer in humans in the form of OVA1 tests.
Field of Use
The Licensee is a provider of clinical laboratory services.

Field” shall mean in vitro diagnostics for screening, diagnosing and monitoring for Ovarian Cancer in humans in the form of OVA1 tests.

IPSCIO Record ID: 257479

License Grant
This agreement is for the diagnostic rights to the BRCA2 Gene.  The Licensors, one of the United Kingdom and one of the United States grant Licensee
—  an exclusive, worldwide license under the BRCA2 Patent Applications and BRCA2 Patents to provide Diagnostic Services; and make, have made, use, offer for sale, and sell Diagnostic Products;
—  an exclusive, worldwide license under the BRCA2 Patent Applications and BRCA2 Patents to make, have made, use, offer for sale, and sell Research Products;
—  a non-exclusive, worldwide license under the BRCA2 Patent Applications, BRCA2 Patent and BRCA2 Information to undertake research on the BRCA2 Gene and BRCA2 Protein Product for the purposes of providing a Diagnostic Service or Diagnostic Product and/or Research Product; and,
—  a non-exclusive, worldwide license under BRCA2 Information for the purposes of providing a Diagnostic Service and/or making a Diagnostic Product and/or making a Research Product to the extent that Licensee can demonstrate to the UK Licensors reasonable satisfaction that the BRCA2 Information in question is necessary to carry out the service or make the product.
License Property
The technology is DNA sequence encoding a gene known as BRCA2 which is associated with inherited susceptibility to breast cancer.

Diagnostic Service a service for diagnosing susceptibility to breast cancer through determining
—  the nucleotide sequence of the BRCA2 Gene in a sample of DNA from a test recipient and identifying any Mutations therein; and/or
—  determining the presence or absence of BRCA2 Protein Product, either in whole or in part, from a sample from a test recipient.

Diagnostic Product a product, kit, instrument, toot reagent or material which has received regulatory approval in the country of use or sale, and/ or which is being used or sold by Licensee, its Sub-licensees or Affiliates or their customers for the clinical analysis of the BRCA2 Gene or BRCA2 Protein Product for the purposes of determining any Mutations therein.

The patent is Materials and Methods Relating to the Identification and Sequencing of the BRCA2 Cancer Susceptibility Gene and Uses Thereof.

Field of Use
The field of use is genetic testing for the field of breast cancer.

IPSCIO Record ID: 26501

License Grant
The Canadian Licensor hereby grants to Licensee a worldwide, exclusive license and sublicense (including the right to grant sublicenses) in the Field under the Licensed IP Rights to research, develop, make, have made, use, offer for sale, sell and import Licensed Products, and practice Licensed Methods, in each case for the detection and/or measurement of PCA3(DD3) as a marker for the diagnosis monitoring, prognosis, or drug susceptibility of prostate cancer.
License Property
The Licensor owns or has intellectual property rights with respect to the PCA3(DD3) gene (as defined below) and certain related technology.

APTIMA(R) Technology shall mean all technology reasonably necessary to make or use Licensee's APTIMA generation of amplified nucleic acid assays, including Target Capture (TC), Transcription-Mediated Amplification (TMA), Hybridization Protection Assay (HPA) and Dual Kinetic Assay (DKA) technologies, each to the extent in each case that Licensee has a right to license or sublicense.

The technology is a diagnostic technology (genetic) for the early warning of prostate cancer.

The licensor's (Quebec, Canada) urine test (PCA3) to detect the genetic marker of prostate cancer is now being developed by the licensee based in San Diego, and after more clinical trials a new version will hit the market by year end (2005).

Field of Use
Field shall mean the detection and/or measurement of PCA3(DD3) as (a) a marker for the diagnosis, monitoring, prognosis, or drug susceptibility of prostate cancer; and/or (b) a marker for cancer (without limitation).  The Field shall not include the use of any assay in drug discovery.

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: 260378

License Grant
Licensor grants a non-exclusive license, without the right to grant or authorize sublicenses, under the Licensed Patent Rights to develop and perform the Services solely at the Facilities, and to use, and offer for sale and sell the Services to Third Parties solely in the Territory.
License Property
Licensed Patent Rights shall mean, collectively, Licensors rights in all patent applications, including provisional patent applications, heretofore or hereafter filed in the Territory;  all patents that have issued or in the future issue in the Territory from any of such patent applications, including without limitation utility models, design patents and certificates of invention; and,  all divisionals, continuations, continuations-in-part, substitutions, reissues, renewals, extensions, restorations or additions to any such patent applications and patents, in each case that claim, and only to the extent they claim, compositions, uses, methods, equipment, devices and other technology for the use of cell-free fetal nucleic acids from biological samples, including plasma, serum, whole blood and urine, obtained from pregnant women for prenatal diagnostic testing by whole genome massively parallel sequencing, used in the performance of the MaterniT21 PLUS Test by Licensors Laboratories as of the Effective Date, or any improvements to such test; provided, however, that the Licensed Patent Rights shall exclude any of the foregoing licensed by a University to Licensor under another agreement.

MatemiT21 PLUS Test shall mean the laboratory-developed test for the non-invasive testing of a plasma sample from a pregnant woman for the detection and diagnosis of prenatal aneuploidy and/or fetal abnormalities by use of cell-free fetal nucleic acids, currently known as the MatemiT21 PLUS test, as performed by Licensors Laboratories.

Field of Use
The Field shall mean the non-invasive detection and diagnosis of prenatal aneuploidy and fetal abnormalities by use of cell-free fetal nucleic acids from biological samples, including plasma, serum, whole blood and urine, obtained from pregnant women.
The MaterniT® 21 PLUS test analyzes genetic information that enters your bloodstream from the placenta.  It analyzes the amount of chromosome 21 in fetal DNA picked up from the maternal blood sample. It can detect an increased amount of chromosome 21 material which is associated with trisomy 21 (Down syndrome). It is completely non-invasive as it only involves a blood sample from the mother.
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.