Royalty Report: Drugs, Cancer, Therapeutic – Collection: 253968

License Grant

University grants an exclusive, worldwide license, with the right to sublicense through multiple tiers, under the Patent Rights to develop, make, have made, use, and sell Licensed Products in the Field.

License Property

The licensed property includes any patents and patent applications that cover inventions disclosed in University invention disclosure UMMC05-46 entitled Virus-Like Particles as Vaccines for Paramyxovirus, including without limitation those applications having serial numbers 60/706,126; 11/497,888, and PCT filing.

Field of Use

Field means the diagnosis, prevention and/or treatment of any diseases and conditions in humans.

License Grant

University hereby grants to Licensee and Licensee hereby accepts from University a sole and exclusive, royalty-bearing right and license for the territory under patent rights to make, have made, use, import, offer to sell, sell or have sold on its behalf product in the field, including the right to sublicense third parties.  Licensee shall have the right to extend such license to its affiliates.

Licensee, at Universitys request, shall grant to a third party a royalty bearing, sublicense under Patent Rights in the field defined by Licensee and the third party.  Licensee shall be required to grant only one sublicense under this Agreement.

License Property

Patent Rights shall mean the following German Patent Aplications P44 35 907.1-41, filed 7 October 1994, entitled 'Papillomavirusanliche Paertikel.  Fusionsproteine sowie Verhafen zo deren Herstellung,' 95 26 752.4 filed 21 July 1995, entitled 'Hochefflziente Bultung Von Papillomavirusanlichen Partikelein,' and the PCT Application EP95/03794 (W096/11272) filed 9 October 1995, entitled 'Papilloma virus-like particles, fusion proteins as well as processes for their production,' United States Patent Application filed 6 October, 1997 entitled 'Papillomavirus capsomere vaccine formulations and methods for use and any United States or foreign patent applications later filed based on the inventions (hereinafter referred to as the Patent Rights Patent Applications(s)' and any foreign or United States patents issuing from said pending or later filed patent applications (hereinafter referred to as the Patent Rights Patent(s)', and any continuations, continuations-in-part, divisions, reissues, reexaminations or extension of any of the foregoing.

Inventions shall mean new and useful improvements in  the construction of Papillomavius hybrid particles conceived and reduced to practice by all employees of University, and disclosed to University in University Invention Disclosure dated September 28, 1994, and December 16, 1996, and as amended from time to time.

Field of Use

Field shall mean products and processes directed to the treatment, prevention or diagnosis of human diseases or infections related to human papilloma virus ('HPV').

License Grant

Licensor, one of the nation’s leading research universities in topics such as health sciences, hereby grants to Licensee a limited, transferable (solely to Patriot Scientific or any purchaser of Licensee), exclusive license (referred to as Evaluation License) to evaluate the Materials for use in the Field of Use and to practice any method, process or procedure during the Evaluation Period solely for purposes of the Evaluation. The Evaluation License will terminate upon the expiration or termination of this Agreement, unless extended by mutual agreement. No other evaluation license will be granted in the Field of Use for the Evaluation Period.

Licensor hereby grants to Licensee the exclusive option to enter into a license agreement from Licensor for the commercial development, use, and sale of the Technology, products based on the Technology, patents, trade secrets, know-how, and other information related to the Technology;

License Property

Technology shall mean Materials or any intellectual property developed by Licensee from Materials including without limitation, all or any of the inventions and developments related thereto or arising out of any compositions, data, strains, patent applications, processes, techniques, contained therein and any physical embodiments thereof.

Materials shall mean the materials and/or intellectual property listed
– Licensor IDF Number 2013-2417 entitled “Non-Covalent Loading of Plant Picornavirus Particles” with US Patent Application US2015/0376578 A1 and EP Patent Application 14754692.3
– Licensor IDF Number 2015-2767 entitled “Cancer Immunotherapy using Virus Particles with US Patent Application US2018/0133304 A1 and associated foreign patent applications in Japan, China, Canada, Australia, and EP, US non-published patent application with patent serial number 16/612,214, and PCT Patent application with publication number WO 2018/208828 A1
– Licensor IDF Number 2017-3151 entitled “Melt Processed Viral Nanoparticle Constructs” with US Patent Application US2019/0350871 A1 and EP Patent Application 17868454.4

Patents shall mean any patent that issues or has issued to Licensor or patent application covering or consisting of the Technology and based on intellectual property in existence as of the Effective Date and any related patent or patent application that is a continuation, continuation-in-part, divisional, or reissue in the United States of America or any other country.

Field of Use

The technology is a novel platform technology using virus-like nanoparticles to treat and prevent cancer and infectious diseases in humans and for veterinary use.

The technology also has direct application as part of a vaccine platform, which has generated promising data in both cancer and infectious diseases, including COVID-19.
The researchers have collectively demonstrated that plant-derived, engineered VLP-based nanotechnologies stimulate a potent anti-tumor immune response in mouse models of metastatic melanoma, ovarian cancer, colon cancer, brain cancer and breast cancer, including companion dogs with metastatic melanoma. This data supports the potential to translate preclinical studies into veterinary applications, such as the treatment of cancer in companion animals, which has high relevance to human melanoma.
This immuno-oncology approach provides a personalized treatment approach by relieving the patient’s tumor-mediated immunosuppression and potentiating anti-tumor immunity against antigens expressed by their own tumor.

The vaccine platform is a natural extension of the immune-stimulating properties of the VLP, combined with directing the response to pre-defined targets. Instead of being a personal vaccine, the modular approach of linking disease specific targets to the VLP allows the potential to rapidly develop countermeasures for pandemics such as COVID-19.

Field of Use shall mean all therapeutic, diagnostic, vaccine and preventive uses of Technology for both veterinary and human applications. Final field of use, including specific indications, which may be narrower than the Field of Use, will be defined in any commercial use license. Said commercial use license will necessarily incorporate developmental, regulatory, and commercial distribution/sales milestones for each product that incorporates any Technology in the Field of Use. For clarification purposes, Technology and Materials shall not be used in or on humans during the Evaluation Period unless Licensee consults with Licensor regarding appropriate, and possibly expanded, indemnification and insurance requirements and receives Licensor’s written authorization to do so. Such authorization will be in Licensor’s sole discretion.

License Grant

Licensor, government organization, hereby grants and Licensee accepts, subject to the terms and conditions of this Agreement, an exclusive license under the Licensed Patent Rights in the Licensed Territory to make and have made, to use and have used, to sell and have sold, to offer to sell, and to import any Licensed Products in the Licensed Fields of Use and to practice and have practiced any Licensed Processes in the Licensed Fields of Use.

Sublicensing – Upon written approval by Licensor, which approval will not be unreasonably withheld, Licensee may enter into sublicensing agreements under the Licensed Patent Rights.  
Licensed Fields of Use – Exclusive.  Licensed Territory – Worldwide.

License Property

Patent License Number  A-027-2003
Serial Number(s) of Licensed Patent(s) and/or Patent Application(s) U.S. Patent No. 6,387,662 (U.S. S/N 09/246,441), issued May 14, 2002, entitled 'Synthesis and Purification of Hepatitis C Virus-Like particles' (E-009-1997/0) (Inventors T. Jake Liang
(NIDDK), Thomas F. Baumert (NIDDK)). This application is a continuation of and claims the benefit of priority of International Application No. PCT/US97/05096
designating the U.S. having International filing date of Mar. 25, 1997, abandoned, claims the benefit of priority of U.S. S/N 60/030,238, filed Nov. 8, 1996.

PCT/US97/05096 filed March 25, 1997, entitled 'Synthesis and Purification of Hepatitis C Virus-Like particles in vitro' (related to E-009-1997/0) (Inventors T. Jake Liang (NIDDK), Thomas F. Baumert (NIDDK)). National Stage filed March 25, 1997 in Australia Patent No. 738585, issued Jan. 03, 2002, in EPO patent application No. 9791652.6, in Canada patent application No. 2269097, in Japan patent application No. 10-522521.

Field of Use

Vaccines for the prevention and treatment of chronic Hepatitis C Virus (HCV) infections.

License Grant

Licensor hereby grants to Licensee an exclusive license, subject to any rights of the U.S. government specified in this agreement, in the Territory for the Field of Use, with the right to sublicense, under the Patent Rights, to make, have made for its own use and sale, use and sell Licensed Products and Licensed Processes.

Licensor also hereby grants to Licensee an exclusive license to make, use, and/or sell the Licensed Materials in the Territory for the Field of Use. At Licensees request, Licensor shall provide Licensee with a reasonable amount of Licensed Materials so that Licensee may reproduce such Licensed Materials for the purpose of making, selling, or using Licensed Products or Licensed Processes.

License Property

Protein GP96 Vaccination (UMD-107) technology is a platform designed to activate immune responses against cancer or infectious diseases.

U.S. patent application serial number US 61/033,425 entitled 'Heat Shock Protein GP96 Vaccination and Methods of Using Same' and filed on 20 March 2008;
PCT patent application number PCT/US2009/001727 entitled 'bleat Shock Protein GP96 Vaccination and Methods of Using Same' and filed on 19 March 2009;
all United States patents and foreign patents and patent applications based on these U.S. applications; all divisionals, continuations of the foregoing; and those claims in continuations-in-part of the foregoing that are described in sufficient detail in U.S. patent application serial number US 61/033,425 or PCT patent application number PCT/US2009/001727 to meet the requirements of 35 U.S.C. 112¶1; and any re-examinations or reissues of the foregoing.

“Patent Rights” shall mean the following United States Patent applications  U.S. patent application serial number US 61/033,425 entitled “ Allogeneic Cancer Cell-Based Immunotherapy” and files on 3 March 2008; PCT patent application number PCT/US2009/001330 entitled “Allogeneic Cancer Cell-based Immunotherapy” and filed on 3 March 2009; all United States patents and foreign patents and patent applications based on these U.S. applications; all divisionals, continuations of the foregoing; and those claims in continuations-in-part of the foregoing that are described in sufficient detail in U.S. patent application serial number US 61/033,425 or PCT application number PCT/US2009/001330 to meet the requirements of 35 U.S.C. 112¶1; and any re-examination or reissues of the foregoing.

Field of Use

Field of Use is for the treatment of cancer relating to all human healthcare and research applications.

License Grant

The Licensor grants to the Licensee the exclusive, worldwide right to conduct various technical, preclinical, marketing, patent, and other studies on products in the field of vaccines for the diagnosis or treatment of diseases.

License Property

Through our majority owned subsidiary Solovax we have an exclusive option agreement, as amended, with the University to license U.S. Patent Application serial nos. 09/156509 and 10/773356 and its foreign equivalents entitled “T-Cell Vaccination for the Treatment of Multiple Sclerosis.”