Royalty Report: Medical, Pain, Delivery – Collection: 254416


Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 4


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: 4

Primary Industries

  • Medical
  • Pain
  • Delivery
  • Therapeutic
  • Drugs

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: 254416

License Grant
Licensor, a subsidiary, entered into an agreement with Licensee transfer the 499 Patent and related intellectual property.
License Property
The 499 Patent and related intellectual property is related to Products that involve anesthetizing a portion or all of a patient’s maxillary dental arch using a nasally delivered anesthetizing composition.  6,413,499 Methods and kits for maxillary dental anesthesia by means of a nasal deliverable anesthetic
Field of Use
The present invention relates to methods and systems for anesthetizing a patient's teeth and surrounding palatal tissues within the maxillary dental arch by means of a nasal deliverable anaesthetic. Such methods and systems eliminate altogether the need for painful needle injected local anesthetics when preparing a patient for dental work on the maxillary, or upper, dental arch. By this means, patients will have less fear and anxiety when visiting a dentist and will experience greatly decreased pain associated with the application of the local anesthetic preparatory to carrying out the actual dental procedure.

IPSCIO Record ID: 259017

License Grant
The parties hereto have determined pursuant to this Third Assignment Agreement to (i) clarify and expand the scope of Licensors entitlement to royalties and the term thereof, (ii) provide for Licensee to advance additional funds to assist Licensor in paying outstanding and future obligations prior to the receipt by Licensee of Net Sales from Products, and (iii) further amend the timing of the payment obligations in light of the available cash flow and cash flow needs of the parties; and that the modifications made in this Third Assignment Agreement to the Second Amended and Restated Assignment Agreement are in the best interests of each of the parties hereto.
License Property
Product or Products means any product (or use thereof) that is covered by at least one valid and enforceable claim of the Patents that relates to anesthetizing a portion or all of a patient’s maxillary dental arch using a nasally delivered anesthetizing composition.

Patents means (1) U.S. Patent No. 6,413,499 and all inventions disclosed and claimed therein, all foreign patents and applications, and all substitutes, reissues, reexaminations, extensions, renewals, reinstatements and restorations of any of the foregoing, and (2) any additional patent claims approved in the United States or any foreign jurisdiction relating to anesthetizing a portion or all of a patient’s maxillary dental arch using a nasally delivered anesthetizing composition, including certain of such claims in U.S. Patent No. 8,580,282 issued on November 12, 2013 to Mark David Kollar for a Dental Anesthetic Comprising Tetracaine and a Vasoconstrictor for Intranasal Administration (which patent was the subject of a provisional application filed on April 3, 2009).

U.S. Patent No. 6,413,499 – Methods and kits for maxillary dental anesthesia by means of a nasal deliverable anesthetic

U.S. Patent No. 8,580,282 – Dental anesthetic comprising tetracaine and a vasoconstrictor for intranasal administration

Field of Use
This agreement pertains to the drug industry relating to dental anesthesia.

IPSCIO Record ID: 369241

License Grant
Licensor grants to the Licensee of Ireland
– the exclusive right and license to make, have made, use, offer for sale, sell and import the Product in the Territory, including the right to record sales for its own account;
– in each case, solely for use in the Field and Territory and in connection with Licensees development and Commercialization of the Product and to otherwise exercise Licensees rights and perform its obligations under this Agreement
— an exclusive license under the Product Patents Rights and Product
— an exclusive license under the SAIB Patent Rights;
— an exclusive license under the Re-appliable Patent Rights; and
— an exclusive sublicense under Licensors license to the Epicept Intellectual Property; and,
– an exclusive license and right of cross-reference to all Development Data Controlled by Licensor in existence as of the Effective Date solely to exercise its rights and licenses under this Agreement with respect to the Product.

Licensor grants an exclusive license to use the Licensor Trademark in the Territory solely in connection with the Commercialization of Product in the Territory.

License Property
Licensor is the owner of a proprietary product for pain treatment consisting of a bupivacaine transdermal patch as described below and certain patents and know-how relating thereto.

Product means the product under development by Licensor currently known as ELADURâ„¢.

Bupivacaine means 1-butyl-N-(2,6-dimethylphenyl) piperidine-2-carboxamide, including any and all pharmaceutically acceptable salts, solvates, prodrugs, esters, free base forms, enantiomers (and racemic or other mixtures of said enantiomers) thereof.

Topical Bupivacaine Product means any formulation containing Bupivacaine, either alone or in combination with one or more other active ingredients. for use in the Field.

Licensor Trademark means the trademark rights to the mark ELADURâ„¢ and similar rights under the laws of any Governmental Entity, including all goodwill associated therewith, and all applications, registrations, extensions and renewals relating thereto.

Patents rights include Transdermal Delivery System, and, Methods for Transdermal Drug Administration.

Field of Use
ELADUR is an investigational transdermal drug patch intended to deliver bupivacaine for up to 3 days from a single application.

Bupivacaine is a prescription medication used as a local anesthetic (numbing medicine). Bupivacaine blocks the nerve impulses that send pain signals to your brain.  Bupivacaine injection is used to numb an area of your body during or after surgery or other procedures, childbirth, or dental work.

The Field means all pharmaceutical applications, including the treatment of pain, for human health.

IPSCIO Record ID: 345598

License Grant
The Companys Interim Chief Executive Officer sold, transferred and assigned to the Company all of his rights in and to a certain patent application as to which he is a co-inventor with the Director of Clinical Affairs of the Company.

In the original Technology Sale Agreement, the third party, who is the other co-inventor, agreed to a certain royalty amount based on net sales of various licensed products.

This amendment allows the Company to reduce royalties paid on dental products to the third party and in place to pay those royalties to the Companys Interim Chief Executive Officer in exchange for his assignment of his rights to the technology.

License Property
The technology is for underlying the SafetyWand, CompuFlo technology and an improvement to the controls for CompuDent.

The SafetyWand is the first, patented safety-engineered injection device that conforms to standards while also meeting the clinical needs of dental and medical practitioners. SafetyWand disposable handpiece, a patented injection device that incorporates safety engineering sharps protection features to aid in the prevention of needlesticks. The SafetyWand is the first patented injection device to be fully compliant with OSHA regulations under the federal Needlestick Safety Act while meeting the clinical needs of dentists.

The CompuFlo technology is a computer-controlled, pressure sensitive infusion, perfusion, and aspiration technology capable of delivering critically important information, in visual and audible forms, that allows physicians, dentists and other health care specialists to determine the characteristics of human and other tissue into which fluids are being delivered (or extracted).

The Sellers have developed the technology, know-how and other intellectual property underlying their invention of (I) a “Pressure/Force Computer Controlled Drug Delivery System”, (ii) a “Universal Syringe Holder Enhancement” (iii) a non-deflecting, non-clogging single use disposable hypodermic needle, (iv) a Handpiece for Injection Device with a retractable rotating needle (US Patent No. 6,428,517 B1), Anti-deflection/force penetration reduction rotating syringe (US Patent No. 6,428,517), for use as a separate drug delivery or aspiration system or as an adjunct to Milestone’s computer controlled anesthesia system known as “The CompuDent/CompuMed/WandTM, (v) a Local Anesthetic and Delivery Injection Unit with Automated Rate Control (US Patent No. 6,652,482 B2), (vi) Safety IV Catheter Infusion Device (US Utility Patent App 10/174,246) (vii) Drug Delivery System with Profiles (notice of allowance issued) and Pressure/Force Computer Controlled Drug Delivery with automated changing (notice of allowance issued) (viii) any and all other patent submissions, past, present and future, that bear the name of one or both of the Sellers (collectively, the Intellectual Property).

Field of Use
The products currently that have embodied these Proprietary rights are the SafetyWandTM, The CompuMed/Wand-PDL Drive Unit device, a.k.a. The CompuDent Single Tooth Anesthesia Drive Unit device, The CompuFloTM.  device, and the SuperSafe – safety engineered dental syringe device.

CompuDent provides painless injections for all routine dental treatments including root canals, crowns, fillings and cleanings.

Disclaimer: The information gathered from RoyaltySource® database was sourced from the U.S. Securities and Exchange Commission EDGAR Filings and other public records. While we believe the sources to be reliable, this does not guarantee the accuracy or completeness of the information provided. Further, the information is supplied as general guidance and is not intended to represent or be a substitute for a detailed analysis or professional judgment. This information is for private use only and may not be resold or reproduced without permission.