Royalty Report: Drugs, Therapeutic, Diagnostic – Collection: 25776

License Grant

The Licensor grants to the Licensee and its Affiliates an exclusive, worldwide license, with the right to sub-license, under the Licensor’s commercial rights in the Patent Rights and Biological Materials to develop, make, use and sell Licensed Products in the field.

License Property

Biological Materials means certain tangible biological materials that are necessary for the effective exercise of the Patent Rights, as well as tangible materials that are routinely produced through use of the original materials, including for example, any progeny derived or produced from a cell line, monoclonal antibodies produced by hybridoma cell, DNA or RNA replicated from isolated DNA or RNA, recombinant proteins produced through use of DNA or RNA, and substances routinely purified from a source material included in the original materials such as recombinant proteins isolated from a cell extract or supernantant by non-proprietary affinity purification methods.

Pursuant to the new Agreement, the Licensor has granted an exclusive, worldwide,  (with the right to subLicense) License with regard to patents entitled Use of Fused Imidazoles, Aminopyrimidines, Isonicotinamides, Aminomethyl Phenoxypiperidines and Aryloxypiperidines to Promote and Detect Endogenous Neurogenesis (U.S. Patent Application No. 10/914,460 ); and Methods for Discovering Neurogenic Agents ( U.S. Patent Application No. 10/728,652 ).

Field of Use

Field means the use of compounds as therapeutic agents to treat diseases in humans and animals in all therapeutic categories including, without limitation  Category I, which is limited to psychiatric disorders, mood disorders, depression, post-traumatic stress syndrome, anxiety, panic disorder, bipolar and unipolar disorders, delusional disorders, and schizophrenia;  Category II, which includes Alzheimer’s Disease and Parkinson’s Disease;  and Category III, which includes diabetes and its complications, including the neurological complications of peripheral neuropathies, static and progressive dementias and hypokinetic movement disorders.

License Grant

The University grants to the Licensee a non-exclusive, worldwide, royalty-bearing license, with the right to sublicense, under its commercial rights in the Patent Rights and Biological Materials to develop, make, have made, use, and sell Licensed Products in the Field.  Licensee shall have the right to grant sublicenses.

License Property

The patents are for RNA Sequence-Specific Mediators of RNA Interference.

Licensed Product means any product that cannot be developed, manufactured, used, or sold without infringing one or more claims under the Patent Rights, or, using or incorporating some portion of one or more Biological Materials.

Biological Materials means the tangible biological materials described in the patents, as well as tangible materials that are routinely produced through use of the original materials, including, for example, any progeny derived from a cell line, monoclonal antibodies produced by hybridoma cells, DNA or RNA replicated from isolated DNA or RNA, recombinant proteins produced through use of isolated DNA or RNA, and substances routinely purified from a source material included in the original materials.

UMMC 01-36 “RNA Sequence-Specific Mediators of RNA Interference” Inventors David P. Bartel, Philip A. Sharp, Thomas Tuschl, and Philip D. Zamore
I. United States Patents and Application
USSN 60/265232 entitled “RNA Sequence-Specific Mediators of RNA Interference”

USSN 09/821832 entitled “RNA Sequence-Specific Mediators of RNA Interference”
PCT/US01/10188 entitle “RNA Sequence-Specific Mediators of RNA Interference”

Field of Use

The field of use is therapeutics limited to the narrowed fields of other Medical School license agreements; specifically, using RNAi to inhibit HCMV Immediate Early (IE) gene expression in Retinitis applications, using RNAi to inhibit mutant SOD 1 gene expression in Amytrophic Lateral Sclerosis (ALS) applications, and using RNAi to inhibit gene targets implicated in Type II Diabetes and Obesity under the rights of Medical School in any patent rights claiming those inventions.

License Grant

Medical School and Licensor each hereby grants to Company and its Affiliates an exclusive, worldwide, royalty-bearing license (with the right to sublicense) under their respective commercial rights in the Patent Rights and Biological Materials to develop, make, have made, use, and sell Licensed Products in the Field.
                                                                    
Medical School hereby grants to Company and its Affiliates a non-exclusive, royalty-bearing license (with the right to sublicense) under its commercial rights in the Related Technology to develop, make, have made, use, and sell Licensed Products in the Field and Licensor hereby consents to such grant by Medical School.

Licensor hereby grants to Company and its Affiliates the right to acquire a non-exclusive, worldwide, royalty-bearing license (with the right to sublicense) to any Licensor Related Technologies. Licensor shall promptly disclose in writing to Company each of the Licensor Related Technologies at the time such technologies are acquired or licensed by Licensor. Licensor and Company shall negotiate in good faith the terms of the Licensor Related Technologies License.

License Property

United States Provisional Patent Application filed December 3, 2002 serial number 60/430,732 entitled ' Polyvalent, Primary HIV-1 Envelope Glycoprotein DNA Vaccine.

United States Provisional Patent Application filed in September 2003, serial number 60/503/907 entitled 'Polyvalent DNA and Protein Vaccines.'

United States Utility Patent Application filed December 3, 2003 and its foreign counterparts referred to by the parties as the Joint Patent Filing.

Licensed Product means the HIV Vaccine and any product that cannot be developed, manufactured, used, or sold without (a) infringing one or more claims under the Patent Rights, (b) using or incorporating some portion of one or more Biological Materials, or (c) using some portion of the Related Technology.

Biological Materials means certain tangible biological materials that are necessary for the effective exercise of the Patent Rights, which materials are described, as well as tangible materials that are routinely produced through use of the original materials, including, for example, any progeny derived from a cell line, monoclonal antibodies produced by hybridoma cells, DNA or RNA replicated from isolated DNA or RNA,  recombinant proteins produced through use of isolated DNA or RNA, and substances routinely purified from a source material included in the original materials (such as recombinant proteins isolated from a cell extract or supernatant by non-proprietary affinity purification methods). These Biological Materials shall be listed on this agreement, which will be periodically amended to include any additional Biological Materials that Medical School may furnish to Company.

Licensor Related Technologies means any additional technologies outside of the 03-24 Technology and the 03-111 Technology that satisfies all of the following (i) are now or subsequently owned or licensed to Licensor, including any technologies that may be acquired by Licensor pursuant to its option for an exclusive license of the Medical School Subcontract, (ii) result from work done by Medical School under the Medical School Subcontract for a DNA-based HIV vaccine with protein boost, and (iii) are deemed necessary or advantageous by Company for the development or commercialization of the HIV Vaccine.

The '03-111 Technology – U. S. Patent Application Serial Number 60/503,907 (the '03-111 Patent Filing') covering an HIV protein boost technology invention referred to by Medical School and Licensor as UMMC 03-111.

The '03-24 Technology – UMMC 03-24 entitled Primary and Polyvalent HIV-1 Envelope Glycoprotein DNA Vaccines

Field of Use

Field means therapeutics and prophylactics limited to the generation of DNA-based HIV-1 vaccines.