Royalty Report: Drugs, Diagnostic, Drug Discovery – Collection: 246729

License Grant

University and Licensee agree as follows:

University hereby consents to the assignment of the License to Licensee by Genzyme Genetics, effective February 2, 2000.

Licensee shall obtain from the University of California an abandonment of the University of Californias opposition to the European Ward patent, and shall deliver the University of Californias written abandonment of the opposition to University by no later than February 4, 2000. University shall be responsible for filing the abandonment in the European Patent Office.

In consideration of Universitys consent to this assignment and execution of this Agreement, Licensee agrees to carry out a royalty-bearing sublicensing program for the Ward Patents and to hold reviews at six month intervals with University on its sublicensing activities under the License, unless and until both parties agree that such reviews are no longer necessary.

In consideration of Licensee obtaining the abandonment of the European opposition and the amendment to the License set out herein, University releases Licensee of any claim for breach of the License that arose before the Effective Date, including any claim for sales of products before the Effective Date by Licensee, and agrees that all obligations of the Licensee under the License are current as of the Effective Date.

Licensee acknowledges that the License grants no rights under U.S. Patent Nos. 6,007,994 and 5,759,781 (Ward mFISH patents) or any patents deriving from the U.S. patent application No. 08/577,622 filed on December 22, 1995.

University and Licensee agree to the amend the Earned Royalty Rate and Sublicense Rate.

No other changes are made, and as amended the Exclusive License continues in full force and effect.

License Property

Licensed Patents shall mean any United States or foreign patent application(s) or patent(s) owned, in whole or in part, by University during the term of this Agreement in which one or more of the Inventors are named and covering, in whole or in part, the Invention, together with any continuations, continuations-in-part, divisional or substitute patents, any reissues or re-examinations of any such applications or patents, and any extension of any such patents together with all foreign counterpart applications and patents of the foregoing.

The Invention shall mean methods, processes and related reagents described in U.S. Patent Application Serial Number 271.609.

Licensed Products or Services shall mean any process, method or reagent or other product or service covered within the scope of a valid claim of the Licensed Patents and any product produced or manufactured using any such process, method or reagent and any service performed using any such process, method or reagent.

Field of Use

This agreement pertains to the healthcare industry relating to drugs for the delineation of individual human chromosomes in metaphase and interphase cells by IN SITU suppression hybridization.

License Grant

University hereby grants to Licensee, subject to all the terms and conditions of this agreement, an exclusive license under the licensed patents for the terms defined to make, have made, use, sell and practice the invention in the countries where the licensed patents are effective or applications are pending, subject to rights required to be granted to the U.S. Government. Notwithstanding the preceding, University shall retain the right to make, use and practice the invention for itself for research purposes only.

University grants to Licensee a non-exclusive to make, practice and use the know-how worldwide for the term defined.

University grants to Licensee the right to grant sublicenses to third parties under terms and conditions at least equal to those contained herein provided that the terms of this agreement are included wherever applicable in such sublicenses. Licensees right to sublicense hereunder shall be exclusive to it and such sublicenses shall be coterminable with this agreement and the license granted to Licensee hereunder.

License Property

Licensed Patents shall mean any United States or foreign patent application(s) or patent(s) owned, in whole or in part, by University during the term of this agreement in which one or more of the Inventors are named and covering, in whole or in part, the invention, together with any continuations, continuations-in-part, divisional or substitute patents, any reissues or re-examinations of any such applications or patents, and any extension of any such patents together with all foreign counterpart applications and patents of the foregoing.

The Invention shall mean methods, processes and related reagents described in U.S. Patent Application Serial Number 271.609.

The Inventors have discovered new methods for the delineation of individual human chromosomes in metaphase and interphase cells by IN SITU suppression hybridization and have filed a patent application of like title thereon at Licensees expense (the Invention).

Licensed products or services shall mean any process, method or reagent or other product or service covered within the scope of a valid claim of the licensed patents and any product produced or manufactured using any such process, method or reagent and any service performed using any such process, method or reagent.

Field of Use

The subject invention relates to a method of detecting, identifying and/or quantitating selected individual chromsomes in mammalian mitotic or interphase cells, by means of chromosomal in situ suppression (CISS) hybridization and its use in analyzing cells for the occurrence of chromosomes, chromosome fragments, or chromosome aberrations, such as those associated with a condition or disease.
In the method of the present invention, chromosome-specific probes (DNA or RNA) are combined with a sample to be analyzed, in such a manner that an individual chromosome(s) of interest is labeled and the complex spectrum of sequences which comprise the chromosome can be detected. The probes used in the present method are of high genetic complexity and can be appropriately-selected cloned DNA or RNA fragments, used individually or in pools, or chromosome library DNA.

License Grant

University hereby grants to Israel Corporation and Corporation hereby accepts from University the License. License shall mean the exclusive worldwide license to practice University’s share in the University Research Technology (as hereinafter defined) for the development, manufacture, use and sale of the Licensed Products (as hereinafter defined). At the initiative of Corporation or University, the parties shall consult with each other regarding the prosecution of all patent applications with respect to the University Research Technology. University and Corporation shall assist, and cause their respective employees and consultants to assist, each other in assembling inventorship information and data for the filing and prosecution of patent applications on inventions pertaining to the Research Technology. Corporation shall be entitled to grant sublicenses under the License on terms and conditions in compliance and not inconsistent with the terms and conditions of this Agreement (except that the rate of royalty may be at higher rates than those set forth in this Agreement) (i) to a Corporation Entity or (ii) to other third parties for consideration and in an arms-length transaction.

License Property

Licensed Products shall mean all products, drugs, diagnostic reagents, diagnostic methods, therapeutic agents and therapeutic methods covered by a claim of any unexpired University Patents (as hereinafter defined) which has not been disclaimed or held invalid by a court of competent jurisdiction from which no appeal has been or can be taken.

University Research Technology shall mean all University Patents and all University Know-How.

University Patents shall mean all United States and foreign patents and patent applications, and any divisions, continuations, in whole or in part, reissues, renewals and extensions thereof, and pending applications therefor:
(1)  
which claim Pre-Existing Inventions and which are identified hereto; or
(2)  
which claim inventions that are made, in whole or in part, by students or employees of SAMSF during the term and in the course of the Research Project;  
with the exception of all such patents which are Corporation Patents as hereinafter defined.
U.S. Patent Application Serial No. 08/801,301, filed February 18, 1997 entitled Use if Nekatibub To Prevent Cytotoxic effects of Amyloid Protein by Pappolla.
U.S. Provisional Patent Application Serial No. 60/075,555 filed February 23, 1998 entitled Use of 3-Indol-Proprionic acid by Pappolla
U.S. Provisional Patent Application Serial No. 60/079,349 filed March 25, 1998 entitled Inhibition of Alzheimer of Alzheimer Beta-Fibrillogenesis by Mela Tonm by Pappolla.

Corporation Patents shall mean all United States and foreign patents and patent applications, and any divisions, continuations, in whole or in part, reissues, renewals and extensions thereof, and pending applications therefor which claim inventions that are made, in whole or in part, by students or employees of Corporation.

Research Technology shall mean all University Patents, University Know-How, Corporation Patents and Corporation Know-How.

Field of Use

Field shall mean research, development and testing within pharmaceutical, biotechnological and diagnostic development programs in the field of Alzheimer’s Disease and other central nervous system and neurodegenerative diseases, and in the field of all other possible utilities for melatonin analogs.

License Grant

University grants to Licensee a worldwide, exclusive license with the right by Licensee to grant sublicenses, under the Patent Rights to make, have made, use, sell, offer for sale and import Licensed Products. Licensee will not grant any sublicense under Patent Rights unless it first receives the prior written consent of  University, which consent will not be unreasonably withheld. University shall retain the right to make and use Licensed Products in its own laboratories for scientific purposes and for continued research  provided that such Licensed Products are not sold by University.

License Property

University is the owner of U.S. and foreign patent applications relating to (l) the proliferation of hepatocyte precursors and (2) hepatoblasts and methods of isolating same.

Patent Rights means the United States and foreign patent applications, including any divisionals, continuations and continuations-in-part, and any patents issuing thereon, including any substitutions, extensions, reissues, reexaminations, and inventors certificates.

Licensed Product means any product, the manufacture, use or sale of which is covered by a claim of Patent Rights.

Field of Use

Patents relates to research conducted on liver stem and precursor cells.  A hepatocyte is a cell of the main parenchymal tissue of the liver.