Royalty Report: Drugs, Pain, Therapeutic – Collection: 240632

License Grant

Licensor grants to Licensee a worldwide, exclusive, even to Licensor,  license, with the right to grant sublicenses, to use the Technology and Developments, to practice wider the Patent Rights, and to make, have made, use, have used, develop, have developed, offer for sale, sell, have sold, market, have marketed, import and have imported, Licensed Products, and to use or practice the Licensed Processes, in the Field of Use.  Under the agreement Licensee has exclusive worldwide rights to develop and commercialize Latranal for the treatment of acute and chronic muscle and tendon related pain.

License Property

The U.S. Patent Application is No. 3742-901-2-IPROV and related filings.

The license includes the active ingredients in Latranal, a drug for treating pain associated with muscle and tendon injury, from Licensor, which discovered that a topical formulation of two generically available compounds was effective for pain relief.

Field of Use

The Field of Use shall mean the management or treatment of any type of pain or muscular or skeletal discomfort arising from any cause, including without limitation trauma, diseases such as diabetes, herpes zoster, arthritis, osteoporosis, cancer chemotherapy or chemical injury.

License Grant

University hereby grants the License to the Licensee and its Affiliates  (i) an exclusive, worldwide right and license under the Patent Rights and (ii) a non-exclusive, worldwide right and license to the University Know-How to (a) make, have made, use, research, develop, have developed, lease, market, offer to sell, sell, have sold, distribute, improve, import and export Licensed Products and Licensed Processes in the Field; and (b) otherwise practice the Invention in the Field.

License Property

US Patent #6,248,744 – Method for the treatment of pain, including chronic and female specific pain.

Invention means University#98-14 Sex Related Deference in Pain Relief from Spinal Compound (RJR 2403)

VCU Patents  S Patent #5,914,337 – Compounds and pharmaceutical compositions thereof for eliciting analgesic effects

Field of Use

Field of use is for the treatment of pain relief.

TC-2696 for the treatment of chronic or female-specific pain.  TC-2696 is a novel small molecule that we are developing as an oral treatment for acute post-operative pain.

License Grant

Licensor grants a sole and exclusive license, including the right to sublicense, to all of the Intellectual Property Rights including the rights to develop,  use, market, promote, and sell the Product in the Territory.

For the Option for additional Territories of Canada and Mexico, Licensor grants an option to extend this Agreement to cover a sole and exclusive, license, on royalty terms that are substantially similar to those set forth in this Agreement, with the right to sublicense, to the Intellectual Property Rights including the right to develop, use, market, promote, and sell Product in Canada and Mexico.

For the Trademark License Grant, Licensor grants an exclusive right and license, to use the Trademark in connection with the marketing, promotion, advertising, and sale or other distribution of the Product in the Territory.

For the Submission Package, Licensor grants an option for a sole and exclusive license, with the right to sublicense, to the Intellectual Property Rights including the right to develop, use, market, promote, and sell a topical formulation of lidocaine in a gel formulation (Development Product), whether sold over-the-counter or by prescription, for human use which falls within the claims of the Licensed Patents.

If Licensee exercises its option, the parties agree to license such Intellectual Property Rights on terms to be mutually agreed to by the parties.based substantially on the terms of this Agreement.

License Property

Licensor is the owner of certain patents, know-how and trademarks for the topical treatment of post-herpetic neuralgia, other forms of neuralgia and neuropathy and has the right to grant licenses to said patents, know-how, and trademarks.

The Patents are titled Method for Treating Nerve Injury Pain Associated with Shingles;  Method for Treating Nerve Injury Pain Associated with Shingles Herpes-Zoster and Post-Herpetic Neuralgia) by Topical Application Of Lidocaine;  Method for Treating Pain Associated with Herpes Zoster and Post-Herpetic Neuralgia;  and,  Method for Treating Nerve Injury Pain Associated with Shingles (Herpes-zoster and Post Herpetic Neuralgia) by Topical Application of Lidocaine.

Product means any topical formulation of lidocaine in a bandage and/or transdermal (Patch) formulation, whether sold over-the counter or by prescription, for human use which falls within the claims of the Licensed Patents.

Trademark shall mean the trademarks LIDODERM or TAKON that may be used to market the Product in the Territory.

Lidocaine patches are used to relieve the pain of post-herpetic neuralgia (PHN; the burning, stabbing pains, or aches that may last for months or years after a shingles infection). Lidocaine is in a class of medications called local anesthetics. It works by stopping nerves from sending pain signals.

Field of Use

This agreement is for the topical treatment of post-herpetic neuralgia, other forms of neuralgia and neuropathy in the United States.

Lidoderm(R) (Lidocaine Patch 5%) is a transdermal pharmaceutical patch product for the treatment of post-herpetic neuralgia.

Postherpetic neuralgia is the most common complication of shingles. The condition affects nerve fibers and skin, causing burning pain that lasts long after the rash and blisters of shingles disappear. The chickenpox (herpes zoster) virus causes shingles.

Licensee is a pharmaceutical company engaged in research, development, and marketing of various products, including pain management products.