Royalty Report: DNA, Medical, Medical Info – Collection: 230804

License Grant

Licensor grants a perpetual, exclusive, even as to Licensor, worldwide license or sublicense, with the right to grant sublicenses, under Licensor’s interest in the Core Technology, any Licensor Process Improvements and any Licensor Third Party Process Improvements to make, have made, use, sell, have sold, import, and have imported Instruments, Reagents and Software and to provide Sequencing Services, in any case solely within the Licensee Field and to otherwise exploit the Core Technology, Licensor Process Improvements and such Licensor Third Party Process Improvements, in each case for all purposes solely within the Licensee Field.

License Property

The patents and technology are for Novel Sequencing Methods and Pyrophosphate Sequencing.

Instrument means any device, equipment or instrument covered by a claim under the Core Patent Rights which is used to conduct DNA sequencing and/or analyze the results of such DNA sequencing, including, without limitation, the correlation of gene sequence expression and variation with disease, drug response or prognosis.

Royalty Bearing Services means the provision by Licensee to any Third Party of any service using instruments, including without limitation Sequencing Services.

Sequencing Services means the use of Instruments to characterize DNA sequences, measure RNA expression levels and/or karotype samples.

Reagents means any chemical compound or mixture of chemical compounds covered by a claim under the Core Patent Rights developed for use in an Instrument.

Software means any computer programs and software covered by a claim under the Core Patent Rights developed for use on an Instrument, including any upgrades, modifications and enhancements made for such programs and software. For purposes of this Agreement the term Software shall not indicate Licensor Proprietary Software.

Field of Use

The Licensee field is the design, development, manufacture, production, testing and sale of instruments, Reagents and Software for DNA sequencing and DNA-based analyses, and the aggregation of data obtained from third parties through the use of such instrumentation, to create either an internet portal or database for the sole purpose of generating sales of additional Instruments and sales of Reagents and Software for DNA-based analysis, and, the providing of sequencing services for any and all uses outside of the Licensor field and inside the Licensor field with prior Licensor approval.

License Grant

English Licensor hereby grants to Licensee and Licensee accepts, a non-exclusive, royalty-bearing, worldwide sub-license under the Licensor Patent Rights to manufacture, have manufactured and use Nucleic Acid Arrays for internal purposes only, to create and contribute to the creation of Licensee Ratio-based Databases, and to Supply and offer for Supply Royalty-Bearing Services, in each case in all fields other than the Excluded Fields.

License Property

Nucleic Acid Array means an array of nucleic acids attached to a solid support.

Licensee Ratio-Based Database means a Database containing relative levels of expressed genes within or between cells wherein such Database may be built from data where measurements from one RNA sample are compared with those from another RNA sample; provided, however, a Licensee Ratio-based Database shall in no event include an Incyte Expression Database.

Resolver Software means Licensees software package with features.

Instrument means readers, fluids stations, hybridization devices, sample logging, handling and processing systems, detection and measurement equipment, computer work stations (and associated software) and other instruments or systems used in the preparation or use of Nucleic Acid Arrays or the extraction or processing of data from Nucleic Acid Arrays.

Patent Rights means U.S Patents #5,700,637 and 5,436,327 and International Application No. PCT/GB/89/00460 and PCT/GB/89/01114 and all continuations, continuations-in-part, divisionals, re-examinations and reissues, and any patents issuing therefrom or claiming common priority thereto, together with any other patents which issue to Licensor, or which otherwise come into the ownership or under the control of Licensor during the Term and which Licensor has the right to license, and which relate, but only to the extent that they relate, to the general use of Nucleic Acid Arrays, including methods for making or analyzing Nucleic Acid Arrays and for creating Licensee Ratio-based Databases, but excluding therefrom any such patents that relate but only to the extent that they relate to instrumentation for the reading of Nucleic Acid Arrays, the design of probes for use on Nucleic Acid Arrays, particular sequences used on Nucleic Acid Arrays, software used in instrumentation for reading Nucleic Acid Arrays or in probe design, microfluidics or the control or assurance of the quality of Nucleic Acid Arrays.
5,700,637 – Apparatus and method for analyzing polynucleotide sequences and method of generating oligonucleotide arrays
5,436,327 – Support-bound oligonucleotides

Licensed Product means a Nucleic Acid Array and any component thereof, an Instrument, kit, reagent, computer software or other product, apparatus or composition of matter of whatever nature which is Covered by a Valid Claim, but not including a Database or other information (other than a Database or information which is an integral part of a product).

In-Situ Inkjet Synthesis means a method for the fabrication of Nucleic Acid Arrays on a solid support by synthesizing by chemical means individual nucleic acids directly on such solid support at specific locations on the Nucleic Acid Array using an inkjet printing device to deliver to defined locations on the surface of the solid support precursors for or reagents which allow mononucleotide additions.

Incyte Expression Database means a Database consisting entirely or substantially of gene expression data and containing at least five hundred data points, where a single data point is data relating to the level of expression of one gene in one sample.

Database means a collection of information derived from one or more Nucleic Acid Arrays, which is licensed for value to multiple third parties, but does not include a database for internal use exclusively by an Entity.

Field of Use

This agreement pertain to the drug industry in all fields other than the Excluded Fields.

Excluded Fields means any of the following activities
            (a)   the use of a Nucleic Acid Array for or in connection with any activity other than gene expression profiling or non-commercial genotyping;
            (b)   the exercise of any of the rights licensed under this Agreement for the purposes of the manufacture, having manufactured, use, Supply, creation or contribution to the creation of Incyte Expression Databases; and
            (c)  [the manufacture or having manufactured of Nucleic Acid Arrays by a method other than In-Situ Inkjet Synthesis.

Licensee is  a leader in the emerging field of informational genomics. Informational genomics involves acquiring, storing, and analyzing gene expression information gathered from throughout a cell to identify a majority of the medically important drug targets and gene functions. Licensee combines the power of informatics and genomics to create a proprietary platform that accelerates and enhances the drug discovery process for pharmaceutical and biotechnology companies and improves agricultural products.

License Grant

This Agreement is to allow the Licensee to exclusively develop and market products based on the Licensed Technology within the Exclusive Field.

Licensor hereby grants to Licensee a Semi-Exclusive, royalty-bearing license, including the right to grant sublicenses, under the Licensed Patent Rights and under all of Licensor’s right, title and interest in and to the Licensed Technology and Improvements, to make, have made, use, have used, sell, offer for sale, have sold, import, and have imported Licensed Products and to perform and have performed Licensed Services in the Territory.

Semi-Exclusive shall mean that the license granted herein to Licensee shall be exclusive, even as pertaining to Licensor, within the Field, provided, however, that Licensor hereby retains the right to perform activities within the Co-Exclusive Field without the right to grant further licenses or sublicenses within the Co-Exclusive Field.

License Property

The Licensed Technology shall mean and include all Technology, whether or not patentable, that is useful for the performance of Sequencing by Synthesis (SBS) within the Field and that is Controlled by Licensor as of the Effective Date. Licensed Technology specifically does not include any biomarkers (content) Licensor has identified utilizing SBS and other technologies for generation of sequence information, when not used in association with SBS, such as capillary electrophoresis, mass spectrometry and sequencing by hybridization.

Sequencing by Synthesis or SBS shall mean Licensors proprietary process for determining the sequence of genetic material by synthesizing from a template derived from such material.

Licensors Kit shall mean all reagents, equipment, components, kits and instructions for preparation and operation that are necessary and sufficient for Licensee to sequence a sample.

Hardware Products shall mean Licensed Products that consist of hardware or instruments used in SBS, but excluding any such hardware or instruments that are used for Sample Preparation or instruments used for assemblies or analysis of sequence information, for example computer processing units.

Licensed Product shall mean any product, the manufacture, use, sale of which would, absent the license granted to Licensee hereunder, infringe any Valid Claim included in the Licensed Patent Rights.

Licensed Services shall mean any service performed by Licensee for a Third Party, the performance of which would, absent the license granted to Licensee hereunder, infringe any Valid Claim included in the Licensed Patent Rights.

Reagent Products shall mean Licensed Products that consist of reagents that are used to perform SBS excluding any kits, reagents or components that are used for Sample Preparation and excluding any hardware or instruments.

Field of Use

Co-exclusive field shall mean sequencing applications performing between 10,000 to 50,000 different DNA sequencing reactions in one process cycle, including but not limited to, with respect to any or all organisms and for whatever purpose or purposes, a) sequencing all or essentially all, of a genome, genomic region, or chromosome based on sequencing, b) expression profiling based on cDNA/mRNA sequencing, c) repetitive sequencing of genomic regions or specific cDNA, and, d) performing SNP analyses of whole genomes or between 10000 to 50000 where the license is non-exclusive under this agreement.

Exclusive Field shall mean sequencing applications performing between 10000 to 50000 different DNA sequencing in one  process cycle, including but not limited to, with respect to any or all organisms and for whatever purpose or purposes, a) sequencing all or essentially all, of a genome, genomic region, or chromosome based on sequencing, b) expression profiling based on cDNA/mRNA sequencing, c) repetitive sequencing of genomic regions or specific cDNA, and, d) performing SNP analyses of whole genomes or more than 50000 in one process cycle.

Field shall mean sequencing applications performing more than 10000 different DNA sequencing in one  process cycle, including but not limited to, with respect to any or all organisms and for whatever purpose or purposes, a) sequencing all or essentially all, of a genome, genomic region, or chromosome based on sequencing, b) expression profiling based on cDNA/mRNA sequencing, c) repetitive sequencing of genomic regions or specific cDNA, and, d) performing SNP analyses of whole genomes or more than 10000 in one process cycle.

License Grant

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

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

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

This agreement also includes exclusive grants from Licensee to Licensor.

License Property

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

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

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

Field of Use

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

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

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