Royalty Report: Drugs, Vaccine, HIV / AIDs – Collection: 237242

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 16

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: 16

Primary Industries

  • Drugs
  • Vaccine
  • HIV / AIDs
  • Disease
  • Therapeutic
  • Cancer
  • Immune
  • Genome
  • Viral Infection
  • cardiac
  • Delivery

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: 237242

License Grant
Each of the Parties agree to perform the work designated in the Work Plan and Budget to be performed by it, respectively, in the course of the Research and Development Program substantially within the time frames designated in the Work Plan and Budget.  Licensee will act as the primary Vaccine Developer under the Work Plan and Budget. Licensor and Licensee will be entitled to involve one or more subcontractors in the performance of such work, provided that each such subcontractor is approved in writing for such purpose by all parties to this Agreement, which approval shall not be unreasonably withheld or delayed. Licensor acknowledges that later steps and phases of work in the Research and Development Program, and the time frames therefor, will depend in part upon the results achieved in earlier steps and phases. The responsibility of Licensor and Licensee hereunder shall be satisfied by their devotion to the Research and Development Program of the efforts called for from them, respectively, in the Work Plan and Budget; neither of Licensor nor Licensee warrants or commits that it will achieve successful or timely results in the conduct of the Research and Development Program.
License Property
Program Inventions shall mean inventions, discoveries, and improvements, patentable or unpatentable, first conceived or reduced to practice by Licensor, Licensee, Licensor, or the subcontractors of any of them during and in the course of work under the Research and Development Program, inclusive of any cell lines or other materials first developed in the course of such work under the Research and Development Program.

Licensee-Controlled Inventions shall mean the inventions disclosed in the United States patents and foreign equivalents and United States and foreign patent applications listed and all divisions, continuations, continuations in part, reissues, or extensions thereof, any periods of marketing exclusivity relating thereto, and any letters patent that issue thereon. It is understood that certain of the Licensee-Controlled Inventions (the Licensed Licensor Rights) are owned by Licensor and are covered by one or more exclusive licenses or sublicenses to Licensee, directly or indirectly.

US 5,858,775 – Adeno-associated virus materials and methods
US 5,786,211 – Adeno-associated virus materials and methods
US 5,658,785 – Adeno-associated virus materials and methods
US 5,139,941 – AAV transduction vectors

Program Vaccines shall mean any AAV (adeno-associated virus) particle-based vector that contains an HIV-1 gene in the recombinant vector genome and that can act as a prophylactic vaccine against HIV-1.

Proprietary Technology shall mean any Background Technology to the extent it has not previously been disclosed in an issued patent or a published patent application. Background Technology shall mean (i) the rights to make, use, sell, offer for sale, and import the Licensee-Controlled Inventions; (ii) all inventions (whether or not patented or patentable), know-how, techniques, cell lines, data, studies and results of studies and other proprietary information in the possession or control of Licensor at the Effective Date and at any time thereafter during the period in which Licensor remains a direct participant in the Research and Development Program, to the extent bearing upon the Program Vaccines, the Licensee-Controlled Inventions, the Program Inventions, or any of them within the Program Field (as and to the extent the Program Field exists during the period of such direct participation by Licensor); and (iii) know-how and other proprietary information in the possession or control of Licensee at the Effective Date and at any time thereafter during the period in which Licensee remains a direct participant in the Research and Development Program, to the extent useful for the practice of the Licensee-Controlled Inventions within the Program Field (as and to the extent the Program Field exists during the period of such direct participation by Licensee).

Work Plan and Budget shall mean the set of tasks, procedures, protocols, standards, budgets, and target time frames set forth, as such may be amended or supplemented by mutual written agreement of the parties from time to time.

Field of Use
This agreement pertains to the drug industry primarily relating to vaccine development.

Program Field shall mean the manufacture of one or more of the Program Vaccines through the use of the particular combination of Program Inventions and Background Technology as implemented by Licensor and Licensee under this Agreement during and in the course of the Research and Development Program (as the same may be supplemented or improved by or for Licensor with other inventions or technology from sources other than Licensor or Licensee), solely for distribution in the Public Sector, and the use, sale, offer for sale, and import of such Program Vaccines so manufactured in and to the Public Sector. I

The collaboration agreement is to develop a vaccine to prevent AIDS. The vaccine will utilize Targeted Genetics’ Adeno-Associated  Viral Vectors (AAV ) to deliver HIV genes as a novel form of genetic immunization.

IPSCIO Record ID: 275977

License Grant
The Licensor and Licensee of Denmark are working and cooperating with each other to conduct a joint program for the discovery and development of a vaccine.

The Research and Development Program will involve the systematic design and development of the Program Vaccine for use in the Field. The scope and goals of the Research and Development Program are subject to modification.

Licensor grants the Licensee of Denmark a worldwide, nonexclusive, non sublicensable and nontransferable license during the Research Term to practice the Licensor Background Technology, the Licensor Patent Rights and the Joint Patent Rights, solely in connection with activities to be performed by Licensor under the Research and Development Program.

Licensor grants a worldwide, non-exclusive and nontransferable license, with rights to sublicense, under the Licensor Background Technology, the Licensor. Patent Rights and the Joint Patent Rights, to make, have made, use, sell, offer for sale and import Licensee-Combined Vaccines or the Program Vaccines.

License Property
The licensed property includes proprietary Modified Vaccinia Ankara MVA technology to design vaccines.  Also developed vaccine products including those based on viral vectors, and T-cell epitope.
Field of Use
The Field shall mean any use of a vaccine product for the treatment or prevention of HIV in humans.

IPSCIO Record ID: 204321

License Grant
Licensor grants an exclusive, sublicensable right and license under the Intellectual Property Controlled by Licensor which is reasonably necessary or useful to make, have made, use, sell, offer for sale and import any Licensee Vaccine funded and developed under the Development Program for the Developing World. For the avoidance of doubt, the foregoing license shall permit Licensee to Manufacture Licensee Vaccine outside the Developing World but solely to the extent such Licensee Vaccine is used, distributed and sold within the Developing World.
License Property
Licensor possesses certain skills and owns or has rights to certain patents, patent applications, other valuable technology and know how relating to vector design, production, and purification of AAV vectors which can aid Licensee in its objectives, and may develop or acquire additional such rights.

AAV means an adeno-associated virus composed of a viral capsid comprising three proteins known as VP1, VP2, and VP3, wherein the genome is a single strand DNA molecule of approximately 4.5kb in size, flanked by inverted terminal repeats (ITRs) of approximately 145bp designated ITRs.

AAV Vector means a recombinant AAV where the approximately 4.5kb genome has been replaced by HIV sequences of interest under the control of appropriate regulatory sequences.

Licensor Licensed Patent Rights means all Patent Rights to the extent of the subject matter of such rights which claim AAV Vector compositions, methods of making AAV Vector compositions, or use of AAV Vector compositions, to the extent Controlled (but not owned) by Licensor as a result of being licensed to Licensor by a Third Party Licensor under one or more Third Party Agreements, and all improvements.

Licensor Patent Rights means all Patent Rights Controlled by Licensor to the extent of the subject matter of such rights which claim AAV Vector compositions, methods of making AAV Vector compositions, or use of AAV Vector compositions solely to the extent that such rights are owned, but not in-licensed, solely or jointly by Licensor as of the Initial Agreement Date, or claim priority to any such Patent Rights, or claim any invention conceived during the Development Period which conception arose, at least in part, from activities funded by Licensee under the Initial Agreement or this Agreement, and all improvements.

Field of Use
Licensee has, as one of its principal objectives, the acceleration of development of vaccines against HIV for use and distribution in the Developing World.

IPSCIO Record ID: 273437

License Grant
The Licensor of Denmark and the Licensee are working and cooperating with each other to conduct a joint program for the discovery and development of a vaccine.

The Research and Development Program will involve the systematic design and development of the Program Vaccine for use in the Field. The scope and goals of the Research and Development Program are subject to modification.

Licensor grants a worldwide, nonexclusive, nonsublicensable and nontransferable license during the Research Term to practice the Licensor Background Technology, the Licensor Patent Rights and the Joint Patent Rights, solely in connection with activities to be performed by Licensee under the Research and Development Program.

Subject to the exercise by Licensee of the Combination Option or Option, Licensor grants to a worldwide, non-exclusive and non-transferable license, with rights to sublicense, under the Licensor Background Technology, the Licensor Patent Rights and the Joint Patent Rights, to use, sell, offer for sale and import Combined Vaccine or the Program Vaccine during the Term.

License Property
The licensed property includes proprietary Modified Vaccinia Ankara MVA technology to design vaccines.  Also developed vaccine products including those based on viral vectors, and T-cell epitope.
Field of Use
The Field shall mean any use of a vaccine product for the treatment or prevention of HIV in humans.

IPSCIO Record ID: 223152

License Grant
Licensor grants a non-exclusive, sublicensable right and license under the Licensor Know How and Licensor Patent Rights which are reasonably necessary or useful to make, have made, use, sell, offer for sale and import any AAV product, including without limitation Licensee Vaccines worldwide; provided, however, Licensor retains an exclusive right and license to Develop, Manufacture and Commercialize any Licensor Vaccine for the Developing World.
License Property
Licensor Know How means all unpatented Know How which is Controlled by Licensor and has been developed, solely or with a Third Party, by Licensor either under the Development Program or outside of the Development Program but during the Development Period through the use of Program Materials; and which, in each case, is reasonably necessary or useful for the Development, Manufacture and/or Commercialization of an AAV product; provided, however, that, in any event, Licensor Know How shall exclude any Joint Know How and Patent Rights.

Licensor Patent Rights means Patent Rights Controlled by Licensor to the extent of the subject matter of such rights that claim any invention which was conceived of during the Development Period which conception arose, at least in part, from activities conducted as part of the Development Program or through the use of Program Materials; and,  which is reasonably necessary or useful for the Development, Manufacture and/or Commercialization of an AAV product.

AAV means an adeno-associated virus composed of a viral capsid comprising three proteins known as VP1, VP2, and VP3, wherein the genome is a single strand DNA molecule of approximately 4.5kb in size, flanked by inverted terminal repeats (ITRs) of approximately 145bp designated ITRs.

Field of Use
The field of this agreement is the development of vaccines against HIV for use and distribution in the Developing World.

IPSCIO Record ID: 244658

License Grant
The Parties have an acquisition agreement.  Upon consummation of the Acquisition, the Parties desire to establish a new cooperative development program intended to discover, develop, and certify for use in humans one or more new pharmaceutical products.

Licensor grants an exclusive, worldwide license under the Ad Interferon-beta Product Licensor Patents and the Ad Interferon-beta Product Technology to develop, research, make, have made, use, have used, sell, offer for sale, import and have sold the Ad Interferon-beta Product in the Cancer Field and the Beta Interferon Field .

For the Manufacturing License,  Licensor will provide a transferable, limited license or subiicense as the case may be under the Licensor Technology and the Licensor Patents to manufacture such Clinical Vectors and Commercial Vectors to the extent necessary to enable Licensee to manufacture quantities of the Clinical Vectors and Commercial Vectors that otherwise would have been supplied by Licensor to Licensee under this Agreement, solely for use and application by Licensee for the uses and applications in the Territory that would be permitted under this Agreement with respect to such Clinical Vectors and Commercial Vectors purchased from Licensor.

Licensor grants a license, with right to grant sublicenses, under the Licensor Technology and the Licensor Patents to research, develop, manufacture, have manufactured, use, import, export, offer to sell or sell Products in the Territory.

Licensor grants  a nonexclusive, worldwide license, with right to sublicense to Contractors permitted under this Agreement,  to the Licensed Technology, other than the Applied Licensor Technology, as designated in the applicable Project Plan and Budget, and under any Licensor Patents, other than the Exhausted Licensed Patents and the Exempted Licensed Patents, as designated in the applicable Project Plan and Budget, which would, but for this license grant, be infringed by Licensees performance of its Development Tasks solely as necessary for performance of Licensees Development Tasks during and in the course of any approved Development Project.

In addition to the other rights granted under this Agreement, Licensor hereby grants an option to acquire a license, with the right to grant sublicenses, to Licensor Technology, that is not otherwise designated as Applied Licensor Technology in the applicable Project Plan and Budget, and under any and all Targeted Patents, that are not designated as Exhausted Licensor Patents or as Exempted Licensor Patents in the applicable Project Plan and Budget.

License Property
The patents include Adenovirus Vectors for Gene Therapy, and, .Method of Reducing an Immune Response to a Recombinant Adenovirus.

AAV Interferon-beta Product means a Product incorporating the Beta Interferon Gene and any AAV Vector as the delivery platform.

AAV Vector means an adeno-associated viral vector useful or potentially useful for the delivery of Genes to human cells.

Ad Interferon-beta Product means the Product incorporating the Beta Interferon Gene and an Ad Vector that is the subject of the Ad Interferon-beta Project.

Ad Vector means an adenoviral vector useful or potentially useful for the delivery of Genes to human cells.

Field of Use
Beta Interferon Field means the treatment or prevention in humans of one or more diseases through the use or application of one or more gene therapy vectors to deliver Genes; such Genes being defined herein as the Beta Interferon Genes.

Cancer Field means the treatment or prevention in humans of one or more cancers through the use or application of AAV Vectors or Ad Vectors.

IPSCIO Record ID: 329709

License Grant
Licensor hereby grants to French Licensee a right and license, with the right to grant sublicenses, under the Technology to research, have researched, make, have made, use, sell, distribute, import and export Licensed Products in the Territory, which right and license shall be exclusive even as to Licensor; provided that Licensor shall retain the right to research, have researched, make, have made and use Licensed Products for all purposes unrelated to the commercialization of Licensed Products.
License Property
Dengue Vaccine shall mean a vaccine either therapeutically or prophylactically active against dengue viruses that makes use of, or is based upon, the Technology.  It is a genetically-engineered live, attenuated vaccine derived from an infectious clone of yellow fever 17D virus into which the prM-E genes of dengue types 1.2.3 or 4 have been inserted, or constructs containing the prM and NH3 terminal part of one dengue type and the carboxy-terminal part of a second dengue type.

Patent Application U.S. Serial No. 09/007,664, 98/03894, 09,121,587

Inventions shall mean any inventions, ideas, discoveries which are first  conceived, discovered or actually reduced to practice before, during and after the performance of the Development Work under the Research and Development Program and are related to the Dengue Vaccine.

Improvements shall mean any improvements to the Dengue Vaccine which are first conceived, discovered or actually reduced to practice during and after the performance of the Development Work under the Research and Development Program.

Field of Use
Field of Use shall mean the development and commercialization of Dengue Vaccines that is therapeutically or prophvlacticallv active against dengue viruses.

Dengue is an acute febrile disease caused by the mosquito-borne dengue viruses.

IPSCIO Record ID: 257492

License Grant
Pursuant to the Agreement, Licensee obtained an exclusive license under Licensor patent rights and know-how to develop, make, have made, use and sell Licensed Products in the Territory.

With this amendment the parties wish to amend the Agreement to provide for the reversion of rights to Licensor under the Licensor patent rights and know-how for Influenza vaccine, HPV vaccine and HSV vaccine.

As of the Amendment Effective Date, the license granted to Licensee, and the rights and obligations of Licensee and Licensor arising therefrom, shall no longer apply to Influenza vaccine, HPV Vaccine and HSV Vaccine, and these vaccines shall no longer be deemed to be Licensed Products under the Agreement.

Hereby amended Licensor grants to Licensee an exclusive license, even as to Licensor, under Licensor know-how and patent rights to develop, make, have made, use and sell Licensed products in the Territory with the right to grant sub licenses to Affiliates of Licensee and those persons or entities through whom Licensee, in the normal course of its business collaborates in the manufacture and sale of its products; provided however, that nothing in this Agreement shall prohibit Licensor from utilizing the Licensor know-how and/or patent rights, exclusive of Licensee know-how, to develop, make, have made, use and sell, either by itself or with one or more third parties, products for the treatment of infectious diseases provided, further, notwithstanding the preceding proviso, that Licensor shall not have any right to develop, make, have made, use, or sell, either by itself or with one or more third parties, Treatment Vaccines.

Licensor grants an option to obtain a license under theLicensor patent rights and know-how to make, have made, use, sell, offer to sell and import Cancer Vaccines in the Territory for up to three (3) Cancer targets. Such Cancer target license shall be exclusive, even as to Licensor, for each Cancer Target so licensed, and shall be sublicenseable by Licensee pursuant to the terms applicable to Licensed Products.

License Property
This amendment includes Amended Definitions Relating to Cancer targets, and, Licensed Product means a bulk or finished AIDS Vaccine, or other vaccine for the prevention of human infectious disease if licensed hereunder, which utilizes the Technology or technology which is developed by Licensor during and as a result of the research collaboration program; and upon the exercise of an Option for a Cancer vaccine, such bulk or finished Cancer vaccine for the prevention of Cancer Indications, provided, however, that if any vaccine is also capable of being used for treatment of the same human infectious disease or Cancer indication, then such therapeutic use of such vaccine shall also be considered a Licensed Product for purposes of the license being granted by Licensor to Licensee under this Agreement; and Treatment vaccines.

Treatment vaccines means a bulk or finished vaccine.

Field of Use
The field of use is for the treatment of Human Immunodeficiency Virus (HIV-1) and/or diseases caused by infection with HIV-1 in humans;  Hepatitis Virus (HBV) and or diseases caused by infection with HBV in humans; and Cancer vaccines for the treatment, but not prevention or prevention and treatment, of Cancer Indications.

IPSCIO Record ID: 273729

License Grant
The parties agree that upon the Joint Patent Filing, the 03-111 Technology shall become part of the Patent Rights as defined in the 03-24 License Agreement. Licensee agrees that the inclusion of the 03-111 Technology into the 03-24 License Agreement shall occur without further compensation to University or Licensee, except as specified in this Agreement, and at no additional cost to Licensor.  Licensee shall also grant Licensor a non-exclusive, royalty-bearing license to any additional technologies outside of the 03-24 Technology and the 03-111 Technology that are owned or licensed to Licensee (including those acquired by Licensee pursuant to its right of first refusal under the University Subcontract) and that result from work done by University under the University Subcontract for a DNA-based HIV vaccine with protein boost and that are necessary or advantageous to Licensor for the development or commercialization of the HIV Vaccine, with the amount of the royalty to be established in the Definitive Collaborative Agreement and to be negotiated in good faith by the parties. University shall grant Licensor a right of first negotiation to obtain a royalty-bearing license to University exclusive or non-exclusive rights to any additional technology outside of the 03-24 Technology and 03-111  technology that are owned by University and have not been acquired or licensed to Licensor pursuant to its right of first refusal under the University Subcontract and that result from work done under the University Subcontract and that are necessary or advantageous to Licensor for the development or commercialization of the HIV Vaccine. Licensee shall represent that it does not currently own or have any other rights to any other technology that would be infringed by the development or commercialization of the HIV Vaccine.
License Property
The '03-24 Technology – U.S. Patent Application Serial Number 60/430,732 (the '03-24 Patent Filing') with the United States Patent and Trademark Office covering a foundational HIV vaccine technology invention referred to by University as UMMC 03-24.

The '03-111 Technology – U. S. Patent Application Serial Number 60/503,907 (the '03-111 Patent Filing') covering an HIV protein boost technology invention referred to by University and Licensee as UMMC 03-111.

Field of Use
The HIV vaccine technology that Licensee have licensed is based upon a unique mixture of human HIV-1 primary isolates from several genetic subtypes of HIV. This polyvalent naked DNA (isolated, purified DNA) vaccine approach has the potential advantages of maintaining efficacy despite the high mutation rate of HIV, a broader immune response against divergent HIV-1 glycoproteins and the possible ability to neutralize a wide spectrum of HIV-1 viruses.

IPSCIO Record ID: 273253

License Grant
Medical School and Licensor each hereby grants to Company and its Affiliates an exclusive, worldwide, royalty-bearing license (with the right to sublicense) under their respective commercial rights in the Patent Rights and Biological Materials to develop, make, have made, use, and sell Licensed Products in the Field.
                                                                    
Medical School hereby grants to Company and its Affiliates a non-exclusive, royalty-bearing license (with the right to sublicense) under its commercial rights in the Related Technology to develop, make, have made, use, and sell Licensed Products in the Field and Licensor hereby consents to such grant by Medical School.

Licensor hereby grants to Company and its Affiliates the right to acquire a non-exclusive, worldwide, royalty-bearing license (with the right to sublicense) to any Licensor Related Technologies. Licensor shall promptly disclose in writing to Company each of the Licensor Related Technologies at the time such technologies are acquired or licensed by Licensor. Licensor and Company shall negotiate in good faith the terms of the Licensor Related Technologies License.

License Property
United States Provisional Patent Application filed December 3, 2002 serial number 60/430,732 entitled ' Polyvalent, Primary HIV-1 Envelope Glycoprotein DNA Vaccine.

United States Provisional Patent Application filed in September 2003, serial number 60/503/907 entitled 'Polyvalent DNA and Protein Vaccines.'

United States Utility Patent Application filed December 3, 2003 and its foreign counterparts referred to by the parties as the Joint Patent Filing.

Licensed Product means the HIV Vaccine and any product that cannot be developed, manufactured, used, or sold without (a) infringing one or more claims under the Patent Rights, (b) using or incorporating some portion of one or more Biological Materials, or (c) using some portion of the Related Technology.

Biological Materials means certain tangible biological materials that are necessary for the effective exercise of the Patent Rights, which materials are described, as well as tangible materials that are routinely produced through use of the original materials, including, for example, any progeny derived from a cell line, monoclonal antibodies produced by hybridoma cells, DNA or RNA replicated from isolated DNA or RNA,  recombinant proteins produced through use of isolated DNA or RNA, and substances routinely purified from a source material included in the original materials (such as recombinant proteins isolated from a cell extract or supernatant by non-proprietary affinity purification methods). These Biological Materials shall be listed on this agreement, which will be periodically amended to include any additional Biological Materials that Medical School may furnish to Company.

Licensor Related Technologies means any additional technologies outside of the 03-24 Technology and the 03-111 Technology that satisfies all of the following (i) are now or subsequently owned or licensed to Licensor, including any technologies that may be acquired by Licensor pursuant to its option for an exclusive license of the Medical School Subcontract, (ii) result from work done by Medical School under the Medical School Subcontract for a DNA-based HIV vaccine with protein boost, and (iii) are deemed necessary or advantageous by Company for the development or commercialization of the HIV Vaccine.

The '03-111 Technology – U. S. Patent Application Serial Number 60/503,907 (the '03-111 Patent Filing') covering an HIV protein boost technology invention referred to by Medical School and Licensor as UMMC 03-111.

The '03-24 Technology – UMMC 03-24 entitled Primary and Polyvalent HIV-1 Envelope Glycoprotein DNA Vaccines

Field of Use
Field means therapeutics and prophylactics limited to the generation of DNA-based HIV-1 vaccines.

IPSCIO Record ID: 328343

License Grant
Licensor grants to Licensee an exclusive license under Licensor know-how and Licensor Patent Rights to develop, make, have made, use and sell Licensed Products in the territory with the right to grant sublicenses to affiliates of Licensee and those persons or entities through whom Licensee,  in the normal course of its business collaborates in the manufacture and sale of its products; provided, however, that nothing in this Agreement shall prohibit Licensor from utilizing the Licensor know-how and/or Licensor Patent Rights, exclusive of Licensee Know-how, to develop, make, have made, use and sell, either by itself or with one or more third  parties, products for the treatment of human infectious diseases.
License Property
Technology pertaining to the intramuscular delivery of vaccines for the prevention of human infectious disease that consist of DNA and/or RNA gene sequences derived from the genome of the infectious agent which would prevent clinical disease from an infection.

AIDS Vaccine means a vaccine which would prevent an infection by Human Immunodeficiency Virus (HIV-1) and/or clinical diseases caused by infection with HIV-1 in humans.

Influenza Vaccine means a vaccine which would prevent an infection and/or significant clinical diseases caused by any influenza virus in humans.

Licensed Product means a bulk or finished AIDS Vaccine or Influenza Vaccine, or other vaccine for the prevention of human infectious disease if licensed hereunder, which utilizes the Technology or technology which is developed by Licensor during and as a result of the Research Collaboration Program; provided, however, that if any such vaccine is also capable of being used for treatment of the same human infectious disease, then such therapeutic use of such vaccine shall also be considered a Licensed Product for purposes of the license being granted by Licensor to Licensee under this Agreement.

Field of Use
Field of Use is for the prevention of human infectious disease.

IPSCIO Record ID: 257474

License Grant
The original agreement is an exclusive license under Licensor patent rights and know-how to develop, make, have made, use and sell Licensed products in the Territory.
License Property
With this amendment, Licensed products shall also mean Treatment vaccines.  Treatment vaccines shall mean a bulk or finished vaccine.

The parties wish to further amend the Agreement to provide that Merck shall have rights to vaccine products for the treatment of patients infected with Human Immunodeficiency Virus and Hepatitis B Virus.

Field of Use
The field of use is for the treatment of Human Immunodeficiency Virus (HIV-1) and/or diseases caused by infection with HIV-I in humans and Hepatitis B Virus (HBV) and/or diseases caused by infection with HBV in humans, which utilizes the Technology or technology which is developed by Licensor during and as a result of the Research Collaboration Program.

IPSCIO Record ID: 192627

License Grant
Licensor, government organization, hereby grants and Licensee of the Netherlands accepts a nonexclusive license under the Licensed Patent Rights in the Licensed Territory to make and have made, to use and have used, to sell and have sold, to offer to sell, and to import any Licensed Products or New Products in the Licensed Fields of Use, to practice and have practiced any Licensed Processes in the Licensed Fields of Use, to make, have made, to use and have used but not to sell any Supplied Materials.  As used in this Agreement, “have made” and “have used” means that Licensee shall have the limited right to use a third party contract manufacturer to make and use only (but not to sell) Supplied Materials, Licensed Products or New Products.  Licensee acknowledges and agrees that any such third party contract manufacturer shall be bound to the terms and obligations of this Agreement.
License Property
Licensed Patent Rights shall mean
(a)  Patent applications (including provisional patent applications and PCT patent applications) or patents listed, all divisions and continuations of these applications, all patents issuing from these applications, divisions, and continuations, and any reissues, reexaminations, and extensions of all these patents;
(b)  to the extent that the following contain one or more claims directed to the invention or inventions disclosed in 2.6(a)
     (i)    continuations-in-part of 2.6(a);
     (ii)   all divisions and continuations of these continuations-in-part;
     (iii)  all patents issuing from these continuations-in-part, divisions, and continuations;
     (iv)  priority patent application(s) of 2.6(a); and
     (v)   any reissues, reexaminations, and extensions of all these patents;
(c) to the extent that the following contain one or more claims directed to the invention or inventions disclosed in 2.6(a) all counterpart foreign and U.S. patent applications and patents to 2.6(a) and 2.6(b), including those listed in Appendix A; and
(d) Licensed Patent Rights shall not include 2.6(b) or 2.6(c) to the extent that they contain one or more claims directed to new matter which is not the subject matter disclosed in 2.6(a).

U.S. Patent Application(s) or Patent(s)
(a)  U.S. Patent Application Serial No. 09/986,618, filed November 9, 2001, now abandoned, entitled “Production of Adeno-Associated Virus in Insect Cells” [HHS Ref. No. E-325-2001/0-US-01];
(b)  U.S. Patent No. 6,723,551, issued April 20, 2004, entitled “Production of Adeno-Associated Virus in Insect Cells” [HHS Ref. No. E-325-2001/1-US-01]; and
(c)  U.S. Patent Application Serial No. 10/415,834, filed May 2, 2003, entitled “Production of Adeno-Associated Virus in Insect Cells” [HHS Ref. No. E-325-2001/2-US-02].

Licensed Products means (a) Supplied Materials and (b) tangible materials, which in the course of manufacture, use, sale, or importation, would be within the scope of one or more claims of the Licensed Patent Rights that have not been held unpatentable, invalid or unenforceable by an unappealed or unappealable judgment of a court of competent jurisdiction.

New Product means a product made using a Licensed Process but excluding Licensed Products.

Licensed Processes means processes, which in the course of being practiced, would be within the scope of one or more claims of the Licensed Patent Rights that have not been held unpatentable, invalid or unenforceable by an unappealed or unappealable judgment of a court of competent jurisdiction.

The Disease Lipoprotein Lipase Deficiency
Genetic lipoprotein lipase (LPL) deficiency results in profound hypertriglyceridemia, which is associated with intense chronic abdominal pain, hepatosplenomegaly, eruptive xanthomas, lipemia retinalis, dyspnea, mono- or polyparesthesias, and memory loss. Prolonged elevations in plasma triglycerides (TG) also induce recurrent episodes of often lethal pancreatitis, chronic pancreatic insufficiency, and diabetes mellitus. Currently, no effective treatment for this disease exists. Patients must follow a strict low-fat diet. However, TG levels often remain above the critical threshold. Genetic LPL deficiency type I is a rare, autosomal recessive trait. Prevalence varies between 1 in 1,000,000 in the general population to 1 in 5,000 in French Quebec (a ‘founder effect’).

Acute intermittent porphyria (AlP) is an autosomal dominant inherited condition caused by mutations in the porphobilinogen deaminase (PBGD) gene. The PBGD gene is located on chromosome 11 q24.1 -24.2 and spread over fifteen exons. The protein encoded by this gene is a rate-limiting enzyme, the PBGD enzyme, in the haem synthetic pathway.

Parkinson’s disease (PD) is a progressive neurodegenerative disease, resulting in tremors, stiffness, slowness of movement, and lack of coordination. Patients are faced with a severely debilitating disease and a serious loss in quality of life. PD is caused by degeneration and death of nerve cells in a specific part of the brain known as the substantia nigra. These cells produce dopamine, a substance necessary for communication between nerve cells involved in the coordination of movement.

Field of Use
This agreement pertains to the drug industry relating to the use of the Licensed Patent Rights for the commercial development of AAV related products within the scope of the Agreement.

Licensee is building gene therapies using adeno-associated viral (AAV)-based vectors.

IPSCIO Record ID: 203266

License Grant
Licensor grants, during the Term, an exclusive license, under the Technology to Licensee Products in the Field.
License Property
This technology includes, without limitation, MYDICAR® (AAV1/SERCA2a).

Mydicar is a genetically targeted enzyme replacement therapy being studied for use in patients with severe heart failure.  It is designed to increase the level of SERCA2a, a sarcoplasmic endoplasmic reticulum calcium (Ca2+) ATPase found in the membrane of the sarcoplasmic reticulum (SR). The SERCA2a gene is delivered to the heart via an adeno-associated viral vector.

Field of Use
The field is human therapeutics and prophylactics.

IPSCIO Record ID: 192629

License Grant
Licensor, government organization, hereby grants and Licensee of the Netherlands accepts an exclusive license and non-exclusive license, as specified, under the Licensed Patent Rights in the Licensed Territory to make and have made, to use and have used, to sell and have sold, to offer to sell, and to import any Licensed Products in the Licensed Fields of Use and to practice and have practiced any Licensed Processes in the Licensed Fields of Use.
License Property
Licensed Patent Rights shall mean
(a) Patent applications (including provisional patent applications and PCT patent applications) or patents listed, all divisions and continuations of these applications, all patents issuing from these applications, divisions, and continuations, and any reissues, reexaminations, and extensions of these patents;
(b) to the extent that the following contain one or more claims directed to the invention or inventions disclosed in 2.8(a)
    (i)     continuations-in-part of 2.8(a);
    (ii)    all divisions and continuations of these continuations-in-part;
    (iii)   all patents issuing from these continuations-in-part, divisions, and continuations;
    (iv)   priority patent application(s) of 2.8(a); and
    (v)    any reissues, reexaminations, and extensions of these patents;
    (c)    to the extent that the following contain one or more claims directed to the invention or inventions disclosed in 2.8(a) all counterpart foreign and U.S. patent applications and patents to 2.8(a) and 2.8(b), including those listed; and
    (d)    Licensed Patent Rights shall not include 2.8(b) or 2.8(c) to the extent that they contain one or more claims directed to new matter which is not the subject matter disclosed in 2.8(a).

Patent(s) or Patent Application(s)
1. U. S. Patent 6,984,517, issued January 10, 2006, entitled “AAV5 Vector and Uses Thereof; U.S. Patent 7,479,554, issued January 20, 2009, entitled “AA V5 Nucleic Acids”as well as all issued and pending foreign counterparts [HHS Ref. No. E-127-1998/0];

2. U. S. Patent 6,855,314, issued February 15, 2005, entitled “AAV5 Vector for Transducing Brain Cells and Lung Cells” [HHS Ref. No. E-072-2000/0].

Licensed Products means tangible materials which, in the course of manufacture, use, sale, or importation, would be within the scope of one or more claims of the Licensed Patent Rights that have not been held unpatentable, invalid or unenforceable by an unappealed or unappealable judgment of a court of competent jurisdiction.

Adeno-associated virus (AAV) is a small virus which infects humans and some other primate species.

Field of Use
This agreement pertains to the drug industry.

Exclusive Licensed Field of Use (i) Use of the Licensed Patent Rights for the development and sale of AAV5 based therapeutic products to be delivered to the brain or liver for treatment of human diseases originating in the brain or liver; (ii) Note that arthritis related diseases are expressly excluded.

Non-Exclusive Licensed Field of Use Use of the Licensed Patent Rights for the development and sale of AAV5 based therapeutic products to treat human diseases other than the ones covered under (a)(i).

IPSCIO Record ID: 273254

License Grant
The parties agree that upon the Joint Patent Filing, the 03-111 Technology shall become part of the Patent Rights as defined in the 03-24 License Agreement. Licensor agrees that the inclusion of the 03-111 Technology into the 03-24 License Agreement shall occur without further compensation to University or Licensor, except as specified in this Agreement, and at no additional cost to Licensee.  Licensor shall also grant Licensee a non-exclusive, royalty-bearing license to any additional technologies outside of the 03-24 Technology and the 03-111 Technology that are owned or licensed to Licensor (including those acquired by Licensor pursuant to its right of first refusal under the University Subcontract) and that result from work done by University under the University Subcontract for a DNA-based HIV vaccine with protein boost and that are necessary or advantageous to Licensee for the development or commercialization of the HIV Vaccine, with the amount of the royalty to be established in the Definitive Collaborative Agreement and to be negotiated in good faith by the parties. University shall grant Licensee a right of first negotiation to obtain a royalty-bearing license to University exclusive or non-exclusive rights to any additional technology outside of the 03-24 Technology and 03-111  technology that are owned by University and have not been acquired or licensed to Licensee pursuant to its right of first refusal under the University Subcontract and that result from work done under the University Subcontract and that are necessary or advantageous to Licensee for the development or commercialization of the HIV Vaccine. Licensor shall represent that it does not currently own or have any other rights to any other technology that would be infringed by the development or commercialization of the HIV Vaccine.
License Property
The '03-24 Technology – U.S. Patent Application Serial Number 60/430,732 (the '03-24 Patent Filing') with the United States Patent and Trademark Office covering a foundational HIV vaccine technology invention referred to by University as UMMC 03-24.

The '03-111 Technology – U. S. Patent Application Serial Number 60/503,907 (the '03-111 Patent Filing') covering an HIV protein boost technology invention referred to by University and Licensor as UMMC 03-111.

Field of Use
This agreement pertains to HIV vaccine.
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