Royalty Report: Diagnostic, DNA, Assay – Collection: 243466

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 8

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: 8

Primary Industries

  • Diagnostic
  • DNA
  • Assay
  • Medical
  • Drugs
  • Disease
  • nucleic acid
  • Test/Monitoring
  • Device
  • Genome

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: 243466

License Grant
With this amendment, the Original Agreement is amended by providing for the development and commercialization of Tag Sequence technology.
License Property
Tag Sequence means a set of oligonucleotide probes, developed pursuant to the Original Agreement or this First Amendment, which act independently of any target-sequence-specific analytical chemical reactions to allow the physical addressing of the products of a chemical reaction to locations on a solid support, such as the addressable array-specific portion of the oligonucleotide probes and their complements described in International Patent Application No. W097/312S6, and that are designed for use in the Collaboration Product.
Field of Use
Tag Sequences will be used in the Collaboration Field by the Parties and purchasers of Collaboration Product.

IPSCIO Record ID: 291157

License Grant
Licensor shall (A) grant to Licensee a non-exclusive, non-transferable, royalty-free license to exploit such TAG Improvement for Licensees internal use, and (B) shall include internal use rights to use such TAG Improvement within the licenses granted to Product customers.

The purpose of the Collaboration is to develop, manufacture, market and sell (i) Products, and (ii) software applications for Approved Instruments all as set forth in this agreement. The purpose of the Collaboration may be modified and/or extended upon mutual agreement of the Parties in writing. If Licensee is the Party proposing the development of a new Generic Kit or Standard Kit, and Licensor does not, within sixty (60) days after receipt of such New Kit Notice expressly agree to co-develop the new Generic Kit or Standard Kit described therein, then Licensee may pursue development of the new Generic Kit or Standard Kit independently of Licensor and the result is a combination kit then a royalty will be paid.

License Property
TAG Array means a tag array GeneChip probe array. Each set of probes consists of four probes with the following relationship to a defined target sequence — a perfect match to target sequence, a single base mismatch to target sequence, a perfect match to the complement of target sequence, and, a single base mismatch to the complement of target sequence. For the avoidance of doubt, TAG Arrays include no license (express or implied) authorizing use for any purpose except genotyping with GBA.

TAG Assay means any assays for hybridization to a TAG Array.

TAG improvement is any improvements to TAG Assays.

Product means any of a Standard Kit, a Custom Kit and/or a Generic Kit.

Combination Kit means any Custom Kit that contains Primers more than 50% of which are identical to Primers contained in any part of any Standard Kits existing at the time of launch of such Custom Kit, or any combination of Standard Kits existing at the time of launch of such Custom Kit.

Custom Kit means a kit consisting of certain Reagents, certain Primers that have been customized by Licensee or Licensees subcontractors for use in the Field of Use and an End User License, and shall not include use of or refer to any use of TAG Arrays other than for genotyping with GBA.

Standard Kit means a kit consisting of Reagents, CMC Approved Primers for use in the Field of Use and an End User License.

Generic Kit means a kit consisting of Reagents and an End User License.

Primer means GBA primers (a synthetic oligonucleotide of a sequence known to be complementary with the oligonucleotide sequence immediately adjacent, 5, to a SNP) or either PCR primers or information to generate PCR primers.

Reagent means buffers, enzymes and terminators (but not Primers) useful in GBA.

GBA means Genetic Bit Analysis, or single nucleotide primer extension methods designed to detect the identity of a single nucleotide at a predetermined location in the DNA of a sample.

SNP means Single Nucleotide Polymorphism.

Technology means and includes all inventions, discoveries, improvements, trade secrets and proprietary methods and materials, whether or not patentable, including but not limited to, samples of, methods of production or use of, and structural and functional information pertaining to, chemical compounds, proteins or other biological substances; other data; formulations; techniques; and know-how; including any negative results.

TAG Array means a tag array GeneChip probe array. Each set of probes consists of four probes with the following relationship to a defined target sequence — a perfect match to target sequence, a single base mismatch to target sequence, a perfect match to the complement of target sequence, and, a single base mismatch to the complement of target sequence. For the avoidance of doubt, TAG Arrays include no license (express or implied) authorizing use for any purpose except genotyping with GBA.

TAG Assay means any assays for hybridization to a TAG Array.

Field of Use
The first products to be commercialized by the alliance will include reagent kits for use with Licensor's new universal array designed to perform thousands of user-defined SNP analyses. The companies expect to follow this product launch with additional genotyping products that incorporate additional universal arrays and GBA reagents. Licensee will develop and manufacture GBA primer extension reagent kits that are directed to defined sets of SNPs and that can be customized by the end user. Licensor will develop and manufacture the universal GeneChip arrays.

Field of Use means the use of Product to practice GBA in Tag Array format in Approved Instruments for Research Purposes and clinical reference laboratories where work is performed under the Clinical Laboratory Improvements Act and explicitly excludes Products that have received marketing approval from the FDA.

IPSCIO Record ID: 291929

License Grant
Licensor hereby grants Licensee a, worldwide, non-transferable, non-exclusive license under Licensor Licensed Technology, to, (1) develop Generic Kits and Standard Kits as authorized in this Agreement, (2) make, have made, and use (which use includes the right to modify) Licensor OEM Kits and (3) distribute, market and sell such Licensor OEM Kits (OEM License) pursuant to the license granted to Licensee as set forth in this Agreement. Licensee agrees to forbear from the use and exercise of the OEM License otherwise a royalty payment will be due.  If Licensee grants any Third Party a license to exploit the TAG Improvements, Licensee shall pay Licensor a royalty.

The purpose of the Collaboration is to develop, manufacture, market and sell (i) Products, and (ii) software applications for Approved Instruments all as set forth in this agreement. The purpose of the Collaboration may be modified and/or extended upon mutual agreement of the Parties in writing.

License Property
Licensor Licensed Technology means Technology Controlled by Licensor and its Affiliates as of the Effective Date that is useful in the Field of Use, as listed or described hereto. Licensor represents and warrants that the items listed hereto comprise all of the Licensor Licensed Technology as of the Effective Date of this agreement. As of the Effective Date the Licensor Licensed Technology does not require payment of royalties to third parties. Licensor and its Affiliates will amend this from time to time to keep it current. Licensor and its Affiliates warrant that all Controlled Technology for carrying out the marketing, sale, and other disposition of Products will be included in the Licensor Licensed Technology.

US Patent 5,888,819 – Method for determining nucleotide identity through primer extension

Product means any of a Standard Kit, a Custom Kit and/or a Generic Kit.

Combination Kit means any Custom Kit that contains Primers more than 50% of which are identical to Primers contained in any part of any Standard Kits existing at the time of launch of such Custom Kit, or any combination of Standard Kits existing at the time of launch of such Custom Kit.

Custom Kit means a kit consisting of certain Reagents, certain Primers that have been customized by Licensor or Licensors subcontractors for use in the Field of Use and an End User License, and shall not include use of or refer to any use of TAG Arrays other than for genotyping with GBA.

Standard Kit means a kit consisting of Reagents, CMC Approved Primers for use in the Field of Use and an End User License.

Generic Kit means a kit consisting of Reagents and an End User License.

Primer means GBA primers (a synthetic oligonucleotide of a sequence known to be complementary with the oligonucleotide sequence immediately adjacent, 5, to a SNP) or either PCR primers or information to generate PCR primers.

Reagent means buffers, enzymes and terminators (but not Primers) useful in GBA.

GBA means Genetic Bit Analysis, or single nucleotide primer extension methods designed to detect the identity of a single nucleotide at a predetermined location in the DNA of a sample.

SNP means Single Nucleotide Polymorphism.

Technology means and includes all inventions, discoveries, improvements, trade secrets and proprietary methods and materials, whether or not patentable, including but not limited to, samples of, methods of production or use of, and structural and functional information pertaining to, chemical compounds, proteins or other biological substances; other data; formulations; techniques; and know-how; including any negative results.

TAG Array means a tag array GeneChip probe array. Each set of probes consists of four probes with the following relationship to a defined target sequence — a perfect match to target sequence, a single base mismatch to target sequence, a perfect match to the complement of target sequence, and, a single base mismatch to the complement of target sequence. For the avoidance of doubt, TAG Arrays include no license (express or implied) authorizing use for any purpose except genotyping with GBA.

TAG Assay means any assays for hybridization to a TAG Array.

TAG improvement is any improvements to TAG Assays.

Field of Use
These new assays will allow researchers to customize high density SNP analyses solely by designing GBA primers for use on a standard GeneChip array.

The first products to be commercialized by the alliance will include reagent kits for use with Licensee's new universal array designed to perform thousands of user-defined SNP analyses.  Licensee has developed and intends to establish its GeneChip® system as the platform of choice for acquiring, analyzing and managing complex genetic information in order to improve the diagnosis, monitoring and treatment of disease.

Field of Use means the use of Product to practice GBA in Tag Array format in Approved Instruments for Research Purposes and clinical reference laboratories where work is performed under the Clinical Laboratory Improvements Act and explicitly excludes Products that have received marketing approval from the FDA.

GeneChip system is a commercial microarray platform that allows whole genome gene expression analysis for a wide variety of experimental organisms.

IPSCIO Record ID: 204343

License Grant
With this amendment, the Exclusive License shall now read,  As of the Effective Date, Licensor grants a world-wide, exclusive license under Licensed Patents, Related Patents,  Intermediates Manufacturing Know-How, Modified Base Know-How, and Licensed Know-How to make, have made, use, offer to sell, sell and import Licensed Products in the Exclusive Licensed Field (but not the right to sell Modified Bases or Intermediates that are not incorporated into oligonucleotides ).

With this amendment, for the Non-Exclusive Licenses
(a) MGB Probe Non-Exclusive License – As of the Effective Date, Licensor grants to a world-wide, non-exclusive license under Licensed Patents, Related Patents, Intermediates Manufacturing Know-How, Modified Base Know-How and Licensed Know-How to make, have made, use, offer to sell, sell and import Licensed Products in the Non-Exclusive Licensed Field (but not the right to sell Modified Bases or Intermediates that are not incorporated into oligonucleotides).

Licensor shall grant to Licensees customers a nonexclusive, world-wide, royalty-bearing license to use Licensed Products purchased from Licensee in the HIVD Field.

License Property
Pursuant to the original agreement, the Licensor has certain know-how relating to the synthesis of MGB Oligonucleotides, including MGB Oligonucleotides containing modified bases, and the design of sequence-specific probes comprising such oligonucleotides.  MGB Oligonucleotide means Licensed Product comprising an oligonucleotide having a minor-groove binding moiety covalently attached.

The licensed know-how includes chemical structures, manufacturing methods and Algorithms, object code, source code and any other embodiments of methods or processes useful for predicting the melting temperature of MGB Oligonucleotides, whether patented, copyrighted, or not.

Licensor is currently developing gene expression and single nucleotide polymorphism (SNP) assays that employ its proprietary technologies, including the Minor Groove Binder (MGB), modified bases, Eclipse(TM) Quencher, and novel fluorescent dyes. Licensor's Eclipse(TM) probe assays, scheduled for release this summer, will allow affordable, reproducible and sensitive measurement of gene expression and detection of genetic polymorphisms for academic, biotech, diagnostic and pharmaceutical researchers. The Eclipse(TM) probes will be the first proprietary product that Licensor will introduce to the commercial marketplace.

“Licensed Patents” means (1) U.S. Patent No. 5,801,155 titled Covalently Linked Oligonucleotide Minor Groove Binder Conjugates, issued September 1, 1998; (2) U.S. Patent No. 6,084,102 titled Covalently Linked Oligonucleotide Minor Groove Binder Conjugates.

Field of Use
Pursuant to the original agreement, the Exclusive Licensed Field means the 5’-Nuclease Assay Field.  The 5’-Nuclease Assay Field means the detection of a nucleic acid sequence based on the cleavage of a nucleic acid probe that is hybridized to the nucleic acid sequence by a 5’ to 3’ nuclease activity of a polymerase enzyme.

“Non-Exclusive Licensed Field” means all fields outside of the 5’-Nuclease Assay Field and outside of the Human In Vitro Diagnostics Field including, without limitation, the following (1) use of MGB Oligonuclotides as ligation probes in an oligonuclotide ligation assay, generally as described in U.S. Patent No. 4,883,750; (2) use of MGB Oligonuclotides in an assay employing a [***]; (3) use of MGB Oligonuclotides as primers in a primer extension reaction, including but not limited to a PCR reaction or a DNA sequencing reaction; and (4) use of MGB Oligonuclotides in the Real-Time Nucleic Acid Monitoring Field, to the extent that (1), (2), (3) and (4) are practiced outside of the Exclusive Licensed Field.

IPSCIO Record ID: 237224

License Grant
For the Exclusive License, Licensor grants a world-wide exclusive license under Licensed Patents and Licensed Know-How to make, use, offer to sell, sell and import Licensed Products in the Exclusive Licensed Field.

For the Non-Exclusive License, Licensor grants a world-wide non-exclusive license under Licensed Patents and Licensed Know-How to make, use, offer to sell, sell and import Licensed Products in the Non-Exclusive Licensed Field.

License Property
The licensed know-how is certain know-how relating to the synthesis of MGB Oligonucleotides, and the design of sequence-specific probes comprising such oligonucleotides.

The Licensed Patent is titled Covalently Linked Oligonucleotide Minor Groove Binder Conjugates.

MGB Oligonucleotide means Licensed Product comprising an oligonucleotide having a minor-groove binding moiety covalently attached thereto, and, at Perkin-Elmers option, further comprising a fluorescent label and/or a fluorescence quencher. A Purified MGB Oligonucleotide means an MGB Oligonucleotide that is at least 90% pure based on the HPLC assay.

Field of Use
Exclusive Licensed Field means  the  5-Nuclease Assay Field.

Non-Exclusive Licensed Field means use of MGB Oligonucleotides as ligation probes in an oligonucleotide ligation assay, generally as described in U.S. Patent No. 4,883,750; use of MGB Oligonucleotides in an assay employing a sequence-specific hybridization pull-out step subsequent to a ligation and/or primer extension reaction;  use of MGB Oligonucleotides as primers in a primer extension reaction, including but limited to a PCR reaction or a DNA sequencing reaction, and use of MGB Oligonucleotides in the Real-Time Nucleic Acid Monitoring Field.

Human In Vitro Diagnostics Field (HIVD Field) means products and processes for the measurement of attributes, characteristics, diseases, traits or other conditions of a human being for the medical management of that human being.

IPSCIO Record ID: 204355

License Grant
This amendment clarifies certain definitions and modifies the royalty rates.

In the original restated license, Licensor grants a world-wide exclusive license under Licensed Patents and Licensed Know-How, to make, use, offer to sell, sell and import Licensed Products in the Exclusive Licensed Field.

License Property
Licensor has certain know-how relating to the synthesis of MGB Oligonucleotides, including MGB Oligonucleotides containing modified bases, and the design of sequence-specific probes comprising such oligonucleotides.  MGB Oligonucleotide means Licensed Product comprising an oligonucleotide having a minor-groove binding moiety covalently attached.

The licensed know-how includes chemical structures, manufacturing methods and Algorithms, object code, source code and any other embodiments of methods or processes useful for predicting the melting temperature of MGB Oligonucleotides, whether patented, copyrighted, or not.

Field of Use
The Exclusive Licensed Field means the 5’-Nuclease Assay Field.  The 5’-Nuclease Assay Field means the detection of a nucleic acid sequence based on the cleavage of a nucleic acid probe that is hybridized to the nucleic acid sequence by a 5’ to 3’ nuclease activity of a polymerase enzyme.

IPSCIO Record ID: 243464

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.

IPSCIO Record ID: 203553

License Grant
Licensor grants a worldwide, non-exclusive, non-transferable, license under Licensed Patents and Licensed Know-How, to make (not including have made), import, export, use, offer to sell, and sell Licensed Products in the Licensed Field.
License Property
The licensed patents relate to Hybridization assay using self-quenching fluorescence probe.

'Licensed Patents' means U.S. Patent Nos. 6,030,787; 5,723,591; and 5,876,930, including any Related Patent

'Licensed Product' means any product for use in the Licensed Field, (A) that does not comprise a nucleic acid probe that is susceptible to the 5'-nuclease activity of a polymerase and, (B) (a) which, but for the license granted herein, manufacture, use or sale thereof would infringe at least one Valid Claim of a Licensed Patent, and/or (b) which otherwise uses, incorporates or was developed or manufactured using Licensed Know-How.

Licensed Know-How means any Confidential Information transferred by Licensor to Licensee in connection with activities performed pursuant to the Collaboration Agreement.

'Authorized Oligonucleotide Synthesizer' means an Instrument whose use for automated oligonucleotide synthesis is covered by the up-front fee component of a license under the Process Patents. That up-front fee component may be obtained through the purchase of Instruments bearing a valid label conveying that up-front component, such Instruments being available from Licensor (all Licensor's synthesizers are Authorized) or from other suppliers who have contracted with Licensor to pay that up-front fee component on behalf of their customers. Alternatively, that up-front fee component may be purchased from Licensor.

'Cleavage Assay' means an assay in which the detection of a nucleic acid sequence includes the cleavage of a nucleic acid probe, including, but not limited to, the TaqMan assay.

Field of Use
The Licensed Field means nucleic acid analysis techniques that do not comprise a Cleavage Assay.

Epoch's Eclipse(TM) probe assays, scheduled for release this summer, will allow affordable, reproducible and sensitive measurement of gene expression and detection of genetic polymorphisms for academic, biotech, diagnostic and pharmaceutical researchers.

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