Royalty Report: Drugs, Disease, Cancer – Collection: 250130

License Grant

University hereby grants to Licensee an exclusive license under Patent Rights to make, use, sell, offer for sale, and import Licensed Products, in the Field within the Territory and during the Term. Licensee may extend such license to its affiliates, provided that Licensee will be responsible for such affiliates.

License Property

Patent Rights means Universitys rights in the claims of any of the following: the US Patent Application serial number 15/052,526 'Scintillator Nanocrystal-Containing Compositions and Methods for their Use' and any patent application filed on the invention disclosed under UCSD Disclosure Docket No. SD2016-342; and continuing applications thereof including divisions, substitutions, and continuations-in-part (but only to the extent the claims thereof are entirely supported in the specification and entitled to the priority date of the parent application); any patents issuing on said applications including reissues, reexaminations and extensions; and any corresponding foreign applications or patents.

Licensed Product' means any service, composition or product which is composed of or incorporates, or is directly or indirectly discovered, developed and/or identified using, the Invention, or that is claimed in Patent Rights, or the manufacture, use, sale, offer for sale, or importation of which would constitute, but for the license granted to Licensee under this Agreement, an infringement, an inducement to infringe or contributory infringement, of any pending or issued claim within the Patent Rights.

Field of Use

Field means in vivo drug delivery in humans and animals.

The patent relatesg to technology to attach an inactive prodrug to a nano-crystal scintillator that is radiosurgically activated at the tumor site releasing the prodrugs energy.

License Grant

University hereby grants to Licensee an exclusive license under Patent Rights to make, use, sell, offer for sale, and import Licensed Products, in the Field within the Territory and during the Term. Licensee may extend such license to its affiliates, provided that Licensee will be responsible for such affiliates.

License Property

9,019,078 – Surgical object tracking system

Licensed Product means any service, composition or product which is composed of or incorporates, or is directly or indirectly discovered, developed and/or identified using, the Invention, or that is claimed in Patent Rights, or the manufacture, use, sale, offer for sale, or importation of which would constitute, but for the license granted to Licensee under this Agreement, an infringement, an inducement to infringe or contributory infringement, of any pending or issued claim within the Patent Rights.

Patent Rights means Universitys rights in the claims of any of the following: the U.S. patent 9,019,078 and any patent application filed on the invention disclosed under UCSD Disclosure Docket No. SD2016-210; and continuing applications thereof including divisions, substitutions, and continuations-in-part (but only to the extent the claims thereof are entirely supported in the specification and entitled to the priority date of the parent application); any patents issuing on said applications including reissues, reexaminations and extensions; and any corresponding foreign applications or patents.

Field of Use

Field means object identification and tracking (within the surgical industry).

Patent relates to technology to track hospital instruments using an applied nano-Quantum Dot polymer (nQD) and an optical scanner system. Specifically, the patent covers a method and apparatus for identifying and tracking surgical objects such as needles, scalpels, blades, sponges and instruments in the medical industry using an identifier encoded on a fluorescent paint attached to the object combined with detectors and software capable of retrieving the identifying information on the identifier.

License Grant

The University hereby grants to Licensee an exclusive license under University 's Patent Rights, in jurisdictions where University's Patent Rights exist, to make, have made, use, sell, offer for sale and import Licensed Products and to practice Licensed Methods in the Field of Use to the extent permitted by law.

License Property

University's Patent Rights means The University interest in any of the patent applications listed in this Agreement and assigned to The University (Case Nos. 1999-560, 2004-331, 2006-369, 2009-271, 2009-569, 2011-416, 2015-573, 2016-631, and 2016-99D); any continuing applications thereof including divisions; but excluding continuations-in-part except to the extent of claims entirely supported in the specification and entitled to the priority date of the parent application; any patents issuing on these applications including reissues and reexaminations; and any corresponding foreign patents or patent applications; all of which will be automatically incorporated in and added to and made a part of this Agreement. The patent applications and patents included as a result of Case Nos. 2015-573, 2016-631 and 2016-99D are referred to in certain provisions of this Agreement as the “Newly Added Patent Rights” within the University's Patent Rights.

Patent No. 8,048,646 from US Application No. 12/400,715 – NELL Peptide Expression Systems And Bone Formation Activity Of Nell Peptide
Patent No. 7,807,787 from US Application No. 12/400,714 – NELL Peptide Expression Systems And Bone Formation Activity Of Nell Peptide
Application No. 09/412,297 – NELL-1 Enhanced Bone Mineralization
Application No. 11/392,294 – NELL -1 Enhanced Bone Mineralization
Application No. 11/713,366 – NELL-1 Enhanced Bone Mineralization

Licensed Product means any article, composition, apparatus, substance, chemical, or any other material whose manufacture, use or sale would constitute an infringement of any Valid Claim within University's Patent Rights, or any service, article, composition, apparatus, chemical, substance, or any other material made, used, or sold by or utilizing or practicing a Licensed Method. This definition of Licensed Product also includes a service either used by Licensee, an Affiliate, or Sublicensee or provided by Licensee, an Affiliate or Sublicensee to its customers when such service requires the use of Licensed Product or performance of Licensed Method.

Licensed Method means any process or method whose use or practice would constitute an infringement of any Valid Claim within University's Patent Rights.

Field of Use

Field of Use means use in spinal fusion by local administration, Osteoporosis, and long bones/extremities (trauma), and excludes use in cartilage and all other indications.  Osteoporosis means thinning of the bones, with reduction in bone mass, due to depletion of calcium and bone protein.

License Grant

The German Licensor hereby grants to Company an exclusive license (with the right to grant sublicenses through multiple tiers) under the Licensed IP Rights to conduct research and to develop, make, have made, use, offer for sale, sell and import Product in the Territory for use in the Field.

License Property

The license is for the development and commercialization of DOXO-EMCH, a novel doxorubicin prodrug.

“Technology” shall mean (a) all methods, compositions, uses, technology, data and information relating to any anthracycline derivates with an acid-sensitive linkers, and (b) if Company has exercised its option, the Optional Technology (including the applicable Mentioned Optional Technology).

Product(s) shall mean any product for use in the Field that if made, used, sold, offered for sale or imported absent the license granted hereunder would infringe a Valid Claim, or that otherwise uses or incorporates the Licensed IP Rights.

Licensed Patent Rights shall mean (a) the patents and patent applications listed hereto, and all worldwide counterparts thereof in which Licensor has an ownership or the right to grant a sublicense for, to the extent they claim or disclose the Technology, (b) all U.S. and foreign patents and patent applications that claim or cover the Technology in which Licensor heretofore or hereafter has an ownership or (sub)licensable interest, (c) all divisions, continuations, continuations-in-part, that claim priority to, or common priority with, the patent applications listed in clauses (a)—(b) above or the patent applications that resulted in the patents described in clauses (a)—(b) above which Licensor owns or has the right to grant a sublicense for, and (d) all patents that have issued or in the future issue from any of the foregoing patent applications, including utility, model and design patents and certificates of invention, together with any reissues, renewals, extensions or additions thereto, which are owned by Licensor or Licensor has the right to grant a sublicense for.

Licensed Patent Rights:
US [09/980,266, EP 00945721.9]
PRODRUG 1:  U.S. Application [09/980,266]U.S. Application [11/388,733]PRODRUG2: U.S. Application [10/221,544]

Licensed IP Rights shall mean, collectively, the Licensed Patent Rights and the Licensed Know-How Rights.

Field of Use

DOXO-EMCH renamed INNO-206 is a prodrug of the commonly used chemotherapeutic doxorubicin. Once administered, INNO-206 binds circulating albumin via an acid sensitive linker. Circulating albumin is known to preferentially accumulate in tumors. Once in the acidic environment of the tumor, the albumin bound INNO-206, is cleaved to release free doxorubicin.

Oncology Field shall mean the detection, diagnosis, prognosis, monitoring, prevention or treatment of any oncologic disease, state or condition in humans or animals.

License Grant

Licensor, a non-profit institution, hereby grants to Licensee and its Affiliates a worldwide, non-exclusive license, under Licensor Know-How and Licensed Patents (I) for all internal research and development purposes, including without limitation, the right to make, use and import Licensor Know How and inventions claimed in the Licensed Patents and (ii) to develop, make, use, market, sell, offer for sale, export and import, in the Field of Use, Licensed Products, including without limitation those covered by Valid Claims in the Licensed Patents.

License Property

Intellectual property relates to the induction of gene silencing in mammalian cells through RNAi.

RNA interference, or RNAi, is a naturally occurring mechanism within cells for selectively silencing specific genes, an ability that could become the basis for a whole new class of therapeutic products. The discovery of RNAi has been heralded by many as a major breakthrough, and the journal Science named RNAi the top scientific achievement of 2002 as well as one of the top ten scientific advances of 2003. Because many diseases are caused by the inappropriate activity of specific genes, the ability to silence such genes selectively through RNAi could provide a means to treat a wide range of human diseases.

Licensed Patents means the U.S. Patent Applications listed below and any divisions, continuations, reissues, reexamines, extensions and continuations-in-part applications thereof and any patents issuing thereto; and any and all foreign patents, foreign applications, extensions and supplemental protection certificates or patent applications corresponding thereto having the Principal Investigator as an inventor and claiming the same priority date as a parent application.

Licensor Patents
Serial No.                  Type      Tite                                                                                       Date            Filed Status
PCT/US01/08435      PCT      Methods and Compositions for RNA Interference       3/16/01       Published
09/858,862                CIP       Methods and Compositions for RNA Interference       5/16/01       Pending
09/866,551                CIP       Methods and Compositions for RNA Interference       5/24/01       Pending
10/055,797                CIP       Methods and Compositions for RNA  Interference      1/22/02       Pending

Licensed Product means any product, including but not limited to any lyophilized liquid, sustained release or aerosolized formulation or other formulation, or process for which Licensee, or its Affiliate has received FDA Approval and/or Regulatory Approval, which is made through the use of Licensor Know-How or falls within the scope of a Valid Claim of a Licensed Patent.

Field of Use

The field of Use means all therapeutic uses in humans, including without limitation the diagnosis, prevention and treatment of diseases or conditions and all other healthcare applications. Field of Use shall not include research reagent sales.