Royalty Report: Drugs, Therapeutic, Cancer – Collection: 249076

For the DCVax-Prostate Product,  Licensor grants an exclusive, worldwide, license, with a right to sublicense, to Licensee under the Designated Target IP that relates to PSMA, to research, develop, manufacture, have manufactured, use, sell, offer for sale, import and otherwise commercialize the DCVax-Prostate Product.

For the PSMA Related Diagnostic Products,  Licensor grants an exclusive, worldwide, irrevocable, perpetual, license, with a right to sublicense, to Licensee under the Designated Target IP that relates to, or is necessary to Exploit, Flt-4, to research, develop, manufacture, have manufactured, use, sell, offer for sale, import and otherwise commercialize Licensee Diagnostic Products for the in vitro or in vivo diagnosis of cancer, screening, monitoring, or selection of patients for specific treatment modalities, or for determining the dose of a therapeutic product the Licensee Flt-4 Diagnostic Field, each such Licensee Diagnostic Product, a Licensee Flt-4 Diagnostic Product, and Non-Antibody Products for the in vitro or in vivo diagnosis and treatment of cancer, and Licensor reserves for itself solely the right to research, develop, manufacture, have manufactured, use, sell, offer for sale, import or otherwise commercialize any Reserved Dovetailing Product provided, however, Licensor shall not promote Reserved Dovetailing Products for use in the Northwest Flt-4 Diagnostic Field, including providing written or other materials relating to use of the Reserved Dovetailing Products in the Licensee Flt-4 Diagnostic Field.

For the HuMAb® Licenses, Licensor grants the right to obtain from Licensor five (5) licenses under the HuMAb® Technology to develop, make, have made, use, sell, offer for sale and import on a worldwide basis selected antibody-based products directed against biological targets,  each a Licensee Target, on the terms set forth to this Agreement, used by Licensor in its standard cash-and-carry agreements.

Flt-4 shall mean the gene that is associated with Genbank Accession No, XP 003852 and allelic polymorphisms associated with such genes.

PSMA shall mean prostate specific membrane antigen related to the gene described in Genbank Accession No. NP 004467 and allelic polymorphisms associated with such gene.

CXCR-4 Product shall mean any antibody product, including any Antibody Product, with a therapeutically meaningful binding affinity for CXCR-4.

DCVax-Prostate Product shall mean that version of Licensors proprietary product that was in Phase III clinical trials under IND number BB IND 8602.

Designated Target shall mean each of PSMA , Fucosyl GM-1 or Flt-4 .

Licensor no longer wishes to jointly pursue with Licensee certain targets and products that at one time fell under the Collaboration Agreement, but instead wishes to permit Licensee to pursue them independently, and for Northwest to have specified rights to pursue certain products relating to some such targets as set forth in greater detail in this Agreement.

Licensee shall have the exclusive right to Exploit Designated Targets, Designated Target Antibodies and Designated Target Products, except to the extent of the licenses to Licensor, and to select, file, own and communicate with applicable governmental authorities regarding any tradenames, trademarks, Regulatory Documentation and Regulatory Approvals for Licensee Designated Products.

Further, Licensor agrees and acknowledges that Licensee shall have the exclusive right to fund any portion of the development and to retain all profit and income derived from the Exploitation of Licensee Designated Products, subject only to the royalties due Licensor.

Licensor irrevocably, perpetually and forever assigns and conveys to Licensee the Licensors entire right, title and interest in and to the Patents, Know-How, Transferred Antibodies, Data, and, In-License Agreement.

For Specific Rights and Privileges of Patent Ownership, Licensee shall have the following specific rights and privileges
–  Licensee shall have the sole and exclusive right, but not the duty, to file, prosecute, maintain and enforce the patent applications and patents within the Designated Target Patents worldwide.
– Licensee shall have the sole and exclusive right, but not the duty, to grant licenses under the Designated Target Patents, subject only to the licenses granted Licensor.
– Licensee shall have the sole and exclusive right, but not the duty, to sue on the Designated Target Patents, and to collect all damages and profits for any past, present and/or future infringements thereof, including any infringement prior to the Effective Date or thereafter.
– Licensee shall have the sole and exclusive right to sell, assign or otherwise transfer to any other entity or entities any or all of the rights relating to the Designated Target Patents assigned and transferred to Licensee here.
–  As between Licensor and Licensee, Licensee shall have the sole and exclusive right to take all measures consistent with or permitted by ownership of the Designated Target Patents.

Flt-4 shall mean the gene that is associated with Genbank Accession No, XP 003852 and allelic polymorphisms associated with such genes.

PSMA shall mean prostate specific membrane antigen related to the gene described in Genbank Accession No. NP 004467 and allelic polymorphisms associated with such gene.

CXCR-4 Product shall mean any antibody product, including any Antibody Product, with a therapeutically meaningful binding affinity for CXCR-4.

DCVax-Prostate Product shall mean that version of Licensors proprietary product that was in Phase III clinical trials under IND number BB IND 8602.

Designated Target shall mean each of PSMA , Fucosyl GM-1 or Flt-4 .

The Parties had entered into that certain Collaboration Agreement to develop fully human antibody-based therapeutics for multiple cancers.

The Licensor's lead DCVax product candidate, DCVax-Prostate, is a prostate cancer treatment that is in a pivotal phase III clinical trial.

During the Research term of this agreement, Licensee shall not make any other grant to the related antigens.

Antigens shall mean, collectively, the Research Antigens, Eligible Antigens, Optioned Antigens and Licensed Antigens, and Antigen shall mean any one of the Antigens.

Research Antigens shall mean, collectively, the antigens which are selected by the Collaboration, Licensor or Licensee for use in the Research Program, for which Licensor and Licensee have the right to grant the other party the commercial license, and which are not Optioned Antigens or Licensed Antigens, and Research Antigen shall mean any one of the Research Antigens.

The Diagnostic Field shall mean the use of Products for the following human medical purposes the detection, diagnosis and monitoring of any disease, predisposition, state or condition in humans or the selection of a particular patient(s) to receive a particular therapeutic treatment(s).

The Therapeutic Field shall mean the use of Products for the following human medical purposes the prevention or treatment of any disease, state or condition in humans.

The goal of the five-year alliance is to develop antibody therapeutics against promising antibody drug targets in the human genome. The candidates are intended to treat a broad range of diseases, including metabolic diseases, cancer, inflammation, and autoimmune disorders.

For the Grant of Rights and Licenses in the Research Field,  Licensor grants to Licensee and its Affiliates, within the Territory, a non-exclusive right and license, without any right to sublicense, under the Licensor Patent Rights and Know-How with respect to Research Program Gene Products and, to the extent licensed to Licensee in the Commercialization Field, Licensed Gene Products solely in the Research Field.

For the Grant of Rights and Licenses to Therapeutic Proteins in the Commercialization field, Licensor  grants to Licensee and its Affiliates, within the Territory, a non-exclusive license, with the right to sublicense under Licensee Know-How with respect to Licensed Gene Products to discover, develop, make, have made, import, use, have used, offer for sale, sell and have sold Therapeutic Proteins in the Commercialization Field and an exclusive license, with the right to sublicense, under the Licensor PatentbRights and Licensors interest in any Joint Patent Rights and Joint Know-How with respect to Licensed Gene Products, including any Therapeutic Protein that incorporates or is derived from any such Licensed Gene Product, to discover, develop, make, have made, import, use, have used, offer for sale, sell and have sold Therapeutic Proteins in the Commercialization Field.

For the Grant of Rights and Licenses to Products Other than Therapeutic Proteins in the
Commercialization Field, Licensor grants to Licensee and its Affiliates, within the Territory, a non-exclusive license, with the limited right to sublicense, under the Licensor Patent Rights, Know-How and Licensors interest in any Joint Patent Rights and Joint Know-How with respect to Licensed Gene Products, including any Diagnostic Product that incorporates or is derived from any such Licensed Gene Product, to discover, develop, make, have made, import, use, have used, offer for sale, sell and have sold Diagnostic Products and Drug Products in the Commercialization Field.

Licensor Know-How means trade secrets and other rights in or to Research Program Gene Products and Licensed Gene Products.

Diagnostic Product means any product or service derived from or directed to Research Program Gene Products or Licensed Gene Products for use in the Diagnostic Field.

Therapeutic Protein shall mean any product or service, including gene therapy, which uses a protein, peptide or polypeptide which is a Gene Product in the treatment or prevention of any disease, state or condition in humans.

Licensed Gene Product means any Gene Product for which Licensee and /or Licensor is granted a license in the Commercialization Field.

Diagnostic Field means in vitro or in vivo diagnosis or pre-screening of human patients to determine therapeutic eligibility for a Product in the Therapeutic Field or for monitoring human patients receiving a Product in the Therapeutic Field; provided, however, that the Diagnostic Field excludes the commercialization of diagnostic products for which no Regulatory Approval has been obtained and which are not the subject of an active application for Regulatory Approval, multi-gene diagnostic products, and diagnostic products directed to quantitative detection of relative RNA transcript abundance of multiple RNA species.

Research Field means use by Licensee, Licensor and their respective Affiliates, at the internal research facilities of Licensee, Licensor and their respective Affiliates, for research directed toward the discovery, identification, selection, or characterization of Products.

For the Grant of Rights and Licenses in the Research Field, Licensor grants to Licensee and its Affiliates, within the Territory, a non-exclusive right and license, without any right to sublicense, under the Licensor Patent Rights and Know-How with respect to Research Program Gene Products and, to the extent licensed to Licensee in the Commercialization Field, Licensed Gene Products solely in the Research Field.

For the Grant of Rights and Licenses to Therapeutic Proteins in the Commercialization field,  Licensor grants to Licensee and its Affiliates, within the Territory, an exclusive license, with the right to sublicense, under the Licensor Patent Rights, Licensor KnowHow and Licensors interest in any Joint Patent Rights and Joint Know-How with respect to Licensed Gene Products, including any Therapeutic Protein that incorporates or is derived from any such Licensed Gene Product, to discover, develop, make, have made, import, use, have used, offer for sale, sell and have sold Therapeutic Proteins in the
Commercialization Field.

For the Grant of Rights and Licenses to Products Other than Therapeutic Proteins in the Commercialization Field,  Licensor grants to Licensee and its Affiliates, within the Territory, a non-exclusive license, with the limited right to sublicense, under the Licensor Patent Rights, Licensor Know-How and Licensors interest in any Joint Patent Rights and Joint Know-How with respect to Licensed Gene Products, including any Diagnostic Product that incorporates or is derived from any such Licensed Gene Product, to discover, develop, make, have made, import, use, have used, offer for sale,sell and have sold Diagnostic Products andDrug Products in the Commercialization Field.

The Cre-Lox Patents means United States patent number 4,959,317, any foreign counterpart patents and patent applications.

Diagnostic Product means any product or service derived from or directed to Research Program Gene Products or Licensed Gene Products for use in the Diagnostic Field.

Therapeutic Protein shall mean any product or service, including gene therapy, which uses a protein, peptide or polypeptide which is a Gene Product in the treatment or prevention of any disease, state or condition in humans.

Licensed Gene Product means any Gene Product for which Licensee and /or Licensor is granted a license in the Commercialization Field.

A protein that is extruded from inside the cell through the cell membrane is referred to as a 'secreted protein.' These proteins contain a signal sequence that guides them from interior of the cell through the cell membrane and into the general circulation. Many secreted proteins, such as cytokines and hormones, are of therapeutic importance and have been commercialized by other companies to be very successful therapeutic agents.

Diagnostic Field means in vitro or in vivo diagnosis or pre-screening of human patients to determine therapeutic eligibility for a Product in the Therapeutic Field or for monitoring human patients receiving a Product in the Therapeutic Field; provided, however, that the Diagnostic Field excludes the commercialization of diagnostic products for which no Regulatory Approval has been obtained and which are not the subject of an active application for Regulatory Approval, multi-gene diagnostic products, and diagnostic products directed to quantitative detection of relative RNA transcript abundance of multiple RNA species.

Research Field means use by Licensee, Licensor and their respective Affiliates, at the internal research facilities of Licensee, Licensor and their respective Affiliates, for research directed toward the discovery, identification, selection, or characterization of Products.