Created On: 2020-07-15
Record Count: 9
- Scientific & Technical Instruments
- nucleic acid
- Drug Discovery
- Diagnostic Substances
- ribonucleic acid
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: 227281
Cartridge Production: Licensor grants Licensee a nonexclusive, worldwide right and license, under Collaboration Licensor Intellectual Property and Background Licensor Intellectual Property, to make, and have made, import, offer to sell, sell, and use Cartridges solely in the NASBA Field of Use.
Instrument Distribution: Licensor appoints Licensee as its exclusive, worldwide distributor of Instruments (including the HTS) solely in the NASBA Field of Use. Licensee may appoint sub-distributors to distribute the Instruments on its behalf.
Cartridge Distribution: Licensor appoints Licensee as its exclusive, worldwide distributor of Cartridges solely in the NASBA Field of Use. Licensee may appoint sub-distributors to distribute the Cartridges on its behalf.
Development License: Licensee grants Licensor a nonexclusive, fully paid-up, worldwide right and license to: (i) practice NASBA methods for research use only; and (ii) practice the Background Licensee Intellectual Property and Collaboration Licensee Intellectual Property, to develop Instruments, Cartridges, Software, Tests, and the High Throughput System in accordance with the Work Plan.
Manufacturing License: Licensee grants Licensor a nonexclusive, fully paid-up, worldwide right and license to manufacture for Licensee Instruments, HTS and Cartridges under all Licensee Intellectual Property Rights.
Collaboration Licensee Intellectual Property: Licensee grants Licensor an option to acquire a nonexclusive, royalty bearing, worldwide right and license to the Collaboration Licensee Intellectual Property to make, have made, import, offer to sell, sell, and use Instruments, Cartridges, Software, Tests and the High Throughput System solely in the Non-NASBA Field of Use upon terms and conditions to be agreed upon.
Collaboration Licensor and Collaboration Joint Intellectual Property: Licensee grants Licensor an exclusive, fully paid-up, worldwide right and license to make, have made, import, offer to sell, sell, and use the Collaboration Licensor and Collaboration Joint Intellectual Property solely in the Non-NASBA Field of Use.
Software means the Licensor software and firmware that is used to operate an Instrument to perform nucleic acid based analysis, and any necessary interfaces with the hardware and software of the end-user.
Instruments mean Licensors instruments, including Software, capable of carrying out a nucleic acid based analysis in the NASBA or Non-NASBA Fields of Use, in or with the use of a Cartridge or reaction tube, including Licensorâ€™s GeneXpert and SmartCycler products, and the HTS, or any modified or improved version thereof.
Cartridge means a closed or substantially closed device, which may include a cartridge or reaction tube for performing Tests that contains, among other things, pelletized, dried or other type of reagents intended for single or multiple use sample preparation and nucleic acid analysis (including use in either the NASBA or Non-NASBA Fields of Use) and that is intended and suitable for insertion into, or use as a part of, or is a part or component of, or an attachment to, an instrument designed to hold such device and/or facilitate or enable its use, which instrument Licensor manufactures or has manufactured, including Licensorâ€™s currently existing Instruments, or that can be used alone or with other instruments or devices, including the HTS, for such purpose. For purposes of clarification, other ancillary disposables purchased by Licensee from Licensor for use with the Cartridges in performing a Test, but not contained in the Cartridge, such as buffer solutions, reagents, cuvettes, wash solutions, and so on (â€œAncillary Disposablesâ€), shall not be deemed to be included in the definition of Cartridge.
NASBA means Licenseeâ€™s proprietary isothermal, transcription-based nucleic acid amplification process, , involving the use of reverse transcriptase (â€œRTâ€), RNase H and RNA polymerase, substantially as described in U.S. Patent Nos. 5,130,238; 5,409,818; 5,654,142 and 6,312,298; EP Patents No. 0 368 906; 0 623 683 and 0373 960 and
5,130,238 – Enhanced nucleic acid amplification process
5,409,818 – Nucleic acid amplification process
5,654,142 – Method for nucleic acid amplification using inosine triphosphates to partially replace guanosine triphosphates in the synthesis of multiple RNA copies
6,312,298 – Electromotive drive system for a ship
Patents mean (i) all patents and patent applications, (ii) any substitutions, divisions, continuations, continuations-in-part, reissues, renewals, registrations, confirmations, re-examinations, extensions, supplementary protection certificates and the like, and any provisional applications, of any such patents or patent application, and (iii) any foreign or international equivalent of any of the foregoing.
Collaboration Licensor Intellectual Property means all Intellectual Property Rights arising out of work performed under or in furtherance of this Agreement during the term of this Agreement that are invented (as determined by applicable US law with respect to patentable inventions), or otherwise conceived solely by one or more employees or agents of Licensor or its Affiliates, or solely by one or more employees or agents of Licensor or its Affiliates and one or more employees or agents of a Third Party.
Background Licensor Intellectual Property means all Intellectual Property Rights that are owned by, either partially or wholly, Licensor, or are licensed to, or otherwise controlled by, Licensor, excluding only Collaboration Licensor Intellectual Property and Collaboration Joint Intellectual Property.
Background Licensee Intellectual Property means all Intellectual Property Rights that are owned by, either partially or wholly, Licensee, or are licensed to, or otherwise controlled by, Licensee, excluding only Collaboration Licensee Intellectual Property, and Collaboration Joint Intellectual Property.
Collaboration Licensee Intellectual Property means all Intellectual Property Rights arising out of work performed under this Agreement or in furtherance of this Agreement during the term of this Agreement that are invented (as determined by applicable US law with respect to patentable inventions), or otherwise conceived solely by one or more employees or agents of Licensee or its Affiliates, or solely by one or more employees or agents of Licensee or its Affiliates and one or more employees or agents of a Third Party.
The strategic commercial agreement relates to developing DNA testing products using Licensor's proprietary Nucleic Acid Sequence-Based Amplification technology to be run on systems employing our GeneXpert and SmartCycler systems.
IPSCIO Record ID: 227280
Sublicenses: Licensee may only sublicense the license rights granted by Licensor to Licensee to its Affiliates as expressly set forth in this agreement and in accordance with the terms and conditions hereof.
GeneXpert Cartridge means a closed or substantially closed device that contains, among other things, pelletized or dried reagents intended for single or multiple use sample preparation and nucleic acid analysis and that is suitable for insertion into, or use as a part of, a GeneXpert Instrument.
Licensor Intellectual Property means all Intellectual Property Rights that are owned, either partially or wholly, by Licensor, or are licensed to and sub-licensable by, or otherwise controlled by, Licensor and which is related to Target Assays and Licensor Materials.
Licensee Sourced Products means Target Assays that are designed, developed, manufactured and sold by Licensee pursuant to the license from Licensor set forth in this agreement that but for such license grant from Licensor would infringe valid claims of Licensorâ€™s Intellectual Property Rights.
Licensor Materials means Licensor produced probes, primers, for the Target Assays, and related components that Licensor may supply to Licensee pursuant to this Agreement.
Target Assays means the assays for identified infectious disease targets and more fully set forth below. Target Assays include Licensee Sourced Products.
Organism or Syndrome
Group B Streptococci
MRSA (Methicillin Resistant
VRE (Vancomycin Resistant
Licensee Intellectual Property means all Intellectual Property Rights that are owned, either partially or wholly, by Licensee, or are licensed to and sub-licensable by, or otherwise controlled by, Licensee, and which are related to GeneXpert Instrument, GeneXpert Cartridge, Smart Cycler Instruments and disposables.
IPSCIO Record ID: 243464
For the Non-Exclusive License to Licensee for Instruments Developed Outside the Joint Development Program, Licensor grants a non-exclusive, world-wide license under Licensors interest in Collaboration Licensors Intellectual Property to make, have made, use, import, offer to sell, and sell instruments outside the Collaboration Field.
For the Non-Exclusive License to Licensee for Instruments, Licensor grants to a non-exclusive world-wide license under Licensors interest in the Intellectual Property to use, offer to sell, and sell Instruments outside of the Collaboration Field.
This agreement also includes exclusive grants from Licensee to Licensor.
Licensor has certain skills, proprietary technology and know-how related to the development of bioanalytical instrumentation systems and associated reagents and the marketing, sales and support of products incorporating such systems.
Licensor has DNA Synthesis and Purification Patents referred to as the Caruthers Process and Caruthers Reagents, and related patents.
Nucleic Acid Analysis Field means the field of characterization of a nucleic acid sample including but not limited to the determination of the relative abundance of the nucleic acid, all or part of a sequence of the nucleic acid, or variations in the sequence of the nucleic acid. The Nucleic Acid Analysis Field excludes the Collaboration Field.
The Parties are designing product based on the Array of Arrays for SNP genotyping. The first SNP genotyping assay format that Licensee intend to commercialize will be PE Biosystems' proprietary OLA ZipCode assay format. This assay format enables the creation of a universal Array of Arrays that can be used to analyze any set of SNPs.
IPSCIO Record ID: 237263
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.
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.
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
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'
IPSCIO Record ID: 253973
The French Licensor grants to Licensee a personal, non-transferable, irrevocable, non-exclusive, worldwide sublicense under the Patents, for the sole purpose of developing, manufacturing, having manufactured, using, selling, offering for sale, importing and/or having sold Products under Licensees own and sole label in the Field for the duration of this Agreement.
The Licensee Platforms are the GeneXpertÂ® and the SmartCyclerÂ® platforms of Licensee, including any improvements brought by Licensee during the term hereof that do not substantially modify the technical features and characteristics of these platforms.
The Platforms are of two types: those with automated sample preparation, as in the Licensees GeneXpertÂ® instrument, and those without automated sample preparation, as in the Licensees SmartCylerÂ® instrument. Each of these platforms is a thermal cycler.
The Platforms are primarily intended for use in the automated performance of the polymerase chain reaction (PCR) process.
IPSCIO Record ID: 222544
Licensor owns patent(s) that describe and claim automated thermal cycling apparatus capable of performing and detecting nucleic acid amplification in real time. Licensor owns patent(s) describing and claiming automated apparatus suitable for performing the PCR process, and apparatus claims in corresponding counterpart patents and patent applications in other countries; describing and claiming an amplification system comprising PCR reagents and a thermal cycler programmed to carry out a PCR protocol; and, automated performance of the PCR process using certain programmed thermal cyclers.
Licensed Product shall mean a Licensed Real-Time Thermal Cycler, including any components, replacement parts, upgrades, computer software or hardware for or in the foregoing, the Exploitation of which would, but for the rights granted under this Agreement, infringe at least one Valid Claim of the Real-Time Apparatus Patent Rights.
License refers to patents for nucleic acid sequencing and real time PCR thermalcycling in diagnostics market.
appropriate regulatory authority in each jurisdiction where the instrument is used or sold; and in the U.S., may also be used for Licensee provided Analyte Specific Reagents.
Applied Markets shall mean quality assurance and quality control, including, without limitation, conformance with specifications, purity and batch to batch consistency; testing and monitoring of environmental and food samples; identity testing (including, without limitation, for humans, animals, plants, organisms, microbes or their remains); epidemiology; and biosecurity.
IPSCIO Record ID: 233461
– 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.
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.
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.
â€œPCRâ€ 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: 1042
The term Accusphere Technology means a proprietary processing method which conveys thermal protective characteristics to enzymes and other biologically active molecules when stored at temperatures above 00C and as set out in more detail in Annex A.
The term Licensed Products shall mean any in vitro diagnostic test, assay, method or kit, the development, manufacture, use, or sale of which make use of the NASBA Technology and/or are covered by one or more claims of the Patent Rights and/or which make use of the Accusphere Technology and includes services for providing test results or other services which utilize such product(s).
The Company has begun development of products for rapid detection of biological contaminants in environment related locations (drinking water and air), as well as in food and certain samples used to identify the causative agent of certain human diseases. All of the Companyâ€™s planned environmental and clinical diagnostic products for detection of viral or bacterial pathogens are based on the Licenseeâ€™s NASBA technology.
The Company has licensed the NASBA technology from the Licensee for certain specific applications and expects to reach agreement with other unaffiliated parties to expand the scope of LSIâ€™s NASBA related activities.
The NASBA method employs all of the Companyâ€™s internally produced enzyme products in conjunction with other substrates to cause rapid replication (amplification) of specific segments of nucleic acids. Confirmation of the presence of large numbers of a single segment of RNA or DNA after the amplification reaction is the basis for determination of the identity of contaminating viruses or bacteria.
IPSCIO Record ID: 291119
performance of the PCR process for research and certain other fields that include, inter alia, an up-front fee component based on the capacity of thermal cyclers used to perform the process.
Licensor grants to the Thermal Cycler Supplier the following personal, non-transferable, non-exclusive rights in the Territory under the Amplification Patent Rights:
— Thermal Cycler Supplier is hereby authorized to sell and distribute to end users under Thermal Cycler Suppliers name and trademarks the specific thermal cyclers and temperature cycling instruments, i.e. the Smart Cycler(R) System, Smart Cycler(R) XC System and GeneXpert(TM) Prototype, in the configurations described) and any thermal cycler or temperature cycling instrument containing one or more I-CORE(TM) modules manufactured by Thermal Cycler Supplier, but not otherwise to sell or distribute to thermal cycler suppliers, with a label conveying to end users, including Thermal Cycler Supplier itself, in the Fields the up-front rights of PCR process licenses under the Amplification Patent Rights, that is, with an Authorized Thermal Cycler label; and
— Thermal Cycler Supplier may advertise and promote such thermal cyclers and temperature cycling instruments and so labeled as Authorized Thermal Cyclers for PCR.
Licensor grants to Thermal Cycler Supplier a personal, non-transferable, non-exclusive right under the Amplification System Patent Rights to convey to end-user customers, including Thermal Cycler
Supplier itself, of Thermal Cycler Suppliers Authorized Thermal Cyclers a non-exclusive license to use the same in the Fields in the Territory.
— describing and claiming gene amplification processes including, among others, a process known as the polymerase chain reaction (PCR) process, which are owned by Roche Molecular Systems, Inc., and amplification process claims in corresponding counterpart patents and patent applications in other countries, and,
— automated apparatus suitable for performing the PCR process, and apparatus claims in corresponding counterpart patents and patent applications, and,
— improvements in thermal cycling apparatus for- PCR, including a pressing heated cover, and corresponding counterpart patents and patent applications in other countries,and,
— describing and claiming an amplification system comprising PCR reagents and a thermal cycler programmed to carry out a PCR protocol,and,
— claim automated performance of the PCR process using certain programmed thermal cyclers.