Royalty Report: Diagnostic, Medical, Drugs – Collection: 260378

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 17

Description

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: 17

Primary Industries

  • Diagnostic
  • Medical
  • Drugs
  • Disease
  • Cancer
  • Test/Monitoring
  • Biotechnology
  • Device
  • Research
  • Pharmaceuticals
  • Therapeutic
  • Genome
  • Proteins
  • Veterinary
  • Diagnostic Substances
  • Food
  • Assay
  • nucleic acid

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: 260378

License Grant
Licensor grants a non-exclusive license, without the right to grant or authorize sublicenses, under the Licensed Patent Rights to develop and perform the Services solely at the Facilities, and to use, and offer for sale and sell the Services to Third Parties solely in the Territory.
License Property
Licensed Patent Rights shall mean, collectively, Licensors rights in all patent applications, including provisional patent applications, heretofore or hereafter filed in the Territory;  all patents that have issued or in the future issue in the Territory from any of such patent applications, including without limitation utility models, design patents and certificates of invention; and,  all divisionals, continuations, continuations-in-part, substitutions, reissues, renewals, extensions, restorations or additions to any such patent applications and patents, in each case that claim, and only to the extent they claim, compositions, uses, methods, equipment, devices and other technology for the use of cell-free fetal nucleic acids from biological samples, including plasma, serum, whole blood and urine, obtained from pregnant women for prenatal diagnostic testing by whole genome massively parallel sequencing, used in the performance of the MaterniT21 PLUS Test by Licensors Laboratories as of the Effective Date, or any improvements to such test; provided, however, that the Licensed Patent Rights shall exclude any of the foregoing licensed by a University to Licensor under another agreement.

MatemiT21 PLUS Test shall mean the laboratory-developed test for the non-invasive testing of a plasma sample from a pregnant woman for the detection and diagnosis of prenatal aneuploidy and/or fetal abnormalities by use of cell-free fetal nucleic acids, currently known as the MatemiT21 PLUS test, as performed by Licensors Laboratories.

Field of Use
The Field shall mean the non-invasive detection and diagnosis of prenatal aneuploidy and fetal abnormalities by use of cell-free fetal nucleic acids from biological samples, including plasma, serum, whole blood and urine, obtained from pregnant women.
The MaterniT® 21 PLUS test analyzes genetic information that enters your bloodstream from the placenta.  It analyzes the amount of chromosome 21 in fetal DNA picked up from the maternal blood sample. It can detect an increased amount of chromosome 21 material which is associated with trisomy 21 (Down syndrome). It is completely non-invasive as it only involves a blood sample from the mother.

IPSCIO Record ID: 352725

License Grant
The Parties and others have entered into the Settlement Agreement dated as of the Effective Date.   Both of the Parties desire to continue their current businesses related to the sale of services in the NIPT LDT Field.

The Parties desire for Licensee to have the exclusive right to Exploit the Pooled Patents in the NIPT IVD Field.

Licensee will have
– the exclusive, worldwide, sublicensable right under the Pooled Patents to Exploit NIPT IVD Products in the NIPT IVD Field,
– the exclusive, worldwide, sublicensable right under the Pooled Patents, excluding the Isis Patents, to Exploit NIPT LDT Tests in the NIPT LDT Field, subject to the non-exclusive rights granted to, or reserved by, the Licensor Parties, and
– the nonexclusive, worldwide, sublicensable right under the Isis Patents to Exploit NIPT LDT Tests in the NIPT LDT Field.

Licensor on behalf of itself and its Affiliates, grants to Licensee and its Affiliates an exclusive, irrevocable and perpetual, non-transferable and non-assignable, worldwide license, with the exclusive right to grant sub licenses, under the Licensor Owned Patents and Isis Patents, to Exploit NIPT LDT Tests in the NIPT LDT Field and to Exploit NIPT IVD Products in the NIPT IVD Field, provided that the license is Royalty bearing with respect to NIPT IVD Products and the license is Test Fee-bearing with respect to NIPT LDT Tests.

License Property
Pooled Patents means patents owned or controlled by Licensee and the Licensor.

NIPT IVD Product means a distributable in vitro diagnostic device that has either received applicable Regulatory Approval for sale and use to conduct or perform, in whole or in part, NIPT or is otherwise particularly labeled and marketed for use to conduct or perform NIPT, in whole or in part, excluding general purpose products and components labeled for research use only.

Licensor noninvasive prenatal testing (NIPT) is a chromosome counting method that analyzes genetic information in fetal cell-free DNA in maternal blood to determine risk for specific fetal chromosomal and subchromosomal abnormalities.

Field of Use
Licensed NIPT Field means, collectively, the NIPT IVD Field and NIPT LDT Field.  NIPT means in vitro cell-free nucleic acid-based non-invasive prenatal testing, including, without limitation, testing by massively parallel sequencing or digital PCR, of a biological sample, including but not limited to plasma, serum, whole blood, and urine, obtained from a pregnant woman, excluding oncology testing.

IPSCIO Record ID: 291158

License Grant
Licensor hereby grants to Licensee solely in the Field of Use and in the Territory during the Term, a non-exclusive, non-sublicensable and royalty-bearing commercial license under the Patent to make, use, offer to sell, sell, otherwise commercially dispose of Products and Licensee services relating to Products solely in the Territory.
License Property
Products are any rtPCR RHD Tests that are not made or used solely for purposes of conducting the Study or any other aspect of the Research Plan.

Patent means the United States Patent 6,258,540, entitled “Non-invasive prenatal diagnosis,” issued July 10, 2001, to Dr. Yuk-Ming Dennis Lo and Dr. James Stephen Wainscoat and assigned to Isis Innovation, Ltd. (UK), including any reissues, extensions, substitutions, continuations, divisions, patent term extensions, and continuation-in-part applications together with any improvements thereto owned or controlled by Licensor.

6,258,540 – Non-invasive prenatal diagnosis

Research Products are any rtPCR RHD Tests that are made or used solely for purposes of conducting the Study or any other aspect of the Research Plan.

The RhD test is a noninvasive prenatal test.

Field of Use
Field of Use means the detection, measurement, confirmation or characterization of fetal RhD in maternal serum or plasma based on genotype for use in the evaluation of maternal fetal RhD incompatibility.

“This new approach to noninvasive evaluation of a baby in utero is a very exciting scientific and commercial development and may significantly reduce the need for invasive fetal diagnostic tests, such as amniocentesis or chorionic villus sampling.”

IPSCIO Record ID: 344543

License Grant
University of China grants an exclusive license to its interest in the Invention with the right to sublicense, to apply and exploit the use of the Invention, to make, authorize the making of, have made, use, process, supply, sell, offer to sell, lease, otherwise commercially dispose of, import and export or otherwise exploit in any manner the Licensed Product and/or the Combined Product in the Licensed Field of Use within the Territory. Licensee shall be responsible for the safety and quality of the Licensed Product. In respect of any Proprietary IPR in the Invention not covered by the Prospective Patent, the license is non-exclusive. In respect of the Prospective Patent, the license is exclusive.
License Property
Licensor is the owner of the Invention.  The invention is Prenatal Diagnosis by Molecular Size Analysis.
Field of Use
Licensed Field of Use means any prenatal, fetal or maternal, diagnostics and/or prenatal, fetal or maternal, prognostics and/or prenatal, fetal or maternal, analysis and/or prenatal, fetal or maternal, research, for use with any and all types of technology platforms or uses, other than for the purpose of promoting sex selection followed by gender-specific abortion without a medical reason.

IPSCIO Record ID: 352732

License Grant
The Third Party has granted this Licensee a sublicense under each University License Agreement to exploit laboratory-developed NIPT tests in accordance with the Pooled Patents Agreement.

In connection with a Settlement Agreement, the University of Hong Kong agreed, and pursuant to which certain license agreements between the University and Licensee, collectively, the University License Agreements, were amended and assigned to a Third Party for inclusion in the patent pool subject to the Pooled Patents Agreement.  

The Third Party will be responsible for paying all royalties to the University for the test fee pool and IVD royalties under the University License Agreements.

License Property
The pooled patents and grant are for
– a Non-IVD Licensed Product sold by Licensee or its Affiliates, the gross revenue actually received by Licensee or its Affiliates for the sale to any third party of such Non-IVD Licensed Product.
– US T 21 Test shall mean a non-invasive, prenatal, circulating cell-free, fetal nucleic acid-based trisomy 21 test for United States sales only.
Field of Use
The field of use is prenatal diagnostics.

IPSCIO Record ID: 352698

License Grant
The University of Hong Kong grants to Licensee, subject to the approval for granting exclusive right by the Government of the Special Administrative Region of Hong Kong and the Innovation and Technology Fund Agreement, a non-assignable exclusive license for Inventions within certain University Dockets, and a non-exclusive license for Invention within other University Dockets until and unless approved as an exclusive license by the Government of the Special Administrative Region of Hong Kong, with the right to sublicense, to apply and exploit the use of the Inventions, to make, authorize the making of, have made, use, process, supply, sell, offer to sell, lease, otherwise commercially dispose of, import and export or otherwise exploit in any manner the Licensed Product and/or the Combined Product in the Licensed Field of Use within the Territory.
License Property
The University Invention is partly sponsored by the Innovation and Technology Fund entitled Development of Genomic Strategies for the Non-invasive Detection of Down Syndrome.

The patents include
Diagnostic Applications of Digital PCR,
Analysis of Nucleic Acids by Digital PCR,
Detection of Nucleic Acid Targets with a Defined End Sequence, and,
Diagnosing Fetal Chromosomal Aneuploidy.

Field of Use
Down syndrome (sometimes called Down's syndrome) is a condition in which a child is born with an extra copy of their 21st chromosome – hence its other name, trisomy 21. This causes physical and mental developmental delays and disabilities.

The Licensed Field of Use means prenatal diagnostics and/or prenatal prognostics and/or prenatal analysis and/or prenatal research in these areas, for use with any and all types of technology platforms or uses, other than for the purpose of promoting sex selection followed by gender specific abortion without a medical reason.

IPSCIO Record ID: 291168

License Grant
Licensor hereby grants to Licensee a worldwide, exclusive (even as to Licensor), royalty-bearing license in the Field, under the Licensor Patent Rights, the Licensor ownership interest in Joint Patent Rights and Joint Inventions, Licensor Know-How and Licensor Inventions to make, have made, have used, sell, have sold, offer for sale, and import Licensed Products in the Field throughout the world. This grant includes the right for Licensee to grant sublicenses to Licensee Affiliates without consent, either directly or through one or more intermediaries.
License Property
Licensed Product shall mean the component of an in vitro diagnostic device containing Biological Material for use within the Field, the manufacture, use or sale of which, but for the license granted herein, would infringe at least one Valid Claim of Licensor Patent Rights or Joint Patent Rights in any country. For purposes of clarity, component means the consumable portion of the diagnostic device comprising  biologic material (e.g. antibody) and inert material (e.g. plastic vessel) but does not include the hardware (e.g., fluorometer) or sample acquisition device (e.g., nasal swab) used with the component. In addition, Licensed Product includes any Biological Material whose development or manufacture used or uses Licensor Know How.

Licensor Patent Rights shall mean  (a) the claims of the patent and patent applications listed hereto; (b) all patent applications heretofore or hereafter filed or having legal force in any country owned by or licensed to Licensor (and which Licensor has the right to sublicense to Licensee) or to which Licensee otherwise acquires sublicenseable rights, which claim a composition (including but not limited to, Biological Materials), method or process, which are necessary to practice any process or method claimed in the patent and patent applications in the Field or are necessary, to make, have made, have used, sell, have sold, offer for sale, and import any Licensed Product, together with any and all patents that have issued or in the future issue therefrom, including utility, model and design patents and certificates of invention, and (c) patents and patent applications claiming Licensor Inventions; (d) patents and patent applications added; and (e) all divisionals, continuations, continuations-in-part, continued prosecution applications, requests for continued examination, reissues, renewals and extensions of the patents and patent applications and any foreign counterparts to those patents and patent applications, to the extent and only to the extent that Licensor has or hereafter will have the right to grant licenses and sublicenses thereunder.

US 5,886,151 – Candida albicans integrin-like protein
US 6,346,411 – DNA encoding–candida albicans integrin-like protein
US 6,774,219  – Candida albicans gene, integrin-like protein, antibodies, and methods of use

Joint Patent Rights shall mean (a) all claims of patents and patent applications having legal force in any country which claim a Joint Invention, together with any and all patents that issue therefrom, including utility, model and design patents and certificates of invention, and (b) all divisionals, continuations, continuations-in-part, continued prosecution applications, requests for continued examination, reissues, renewals, and extensions or additions to any such patents and patent applications and any foreign counterparts to those patents and patent applications.

Joint Invention shall mean an Invention made or conceived jointly by one or more employees or others acting on behalf of Licensee and by one or more employees or others acting on behalf of Licensor during and in the course of a Development Collaboration Program or in the course of work done under the Prior Agreements. The parties agree that Joint Inventions shall be owned jointly by Licensor and Licensee in accordance with US law, whereby each joint owner shall have the right to use, pledge, practice, license, assign and otherwise transfer and enjoy its rights to and interests in joint inventions without permission of or accounting to the other joint owner(s)), subject to the licenses granted.

Field of Use
Field shall mean in vitro diagnostic devices containing Biological Material for use in detection of Targets in humans and in food.  'Target' shall mean a given species and genus of microorganism detected using Licensed Product. (Staphylococcus aureus and Staphylococcus epidermidis are two distinct Targets.)

IPSCIO Record ID: 26962

License Grant
The University hereby grants to Licensee exclusive, worldwide licenses under Regents’ Patent Rights within the Field of Interest to make, have made, use, sell, distribute, and lease machines, articles of manufacture, and compositions-of-matter and to perform processes and have others perform processes.
License Property
The Invention has utility for the detection of chromosome abnormalities.

Patent Rights shall mean all U.S. and foreign patents and patent applications related to Pending U.S. Patent Application Serial No. 819,314 & 6-937,793 entitled Method and Compositions for Chromosome-Specific Staining ;.Pending U.S. Patent Application Serial No. 6-934,188 entitled Method of Preparing and Applying Single Stranded DNA Probes to Double Stranded Target DNAs; Any U.S. Patent Application based on subject matter described in UC Case Number 87-095-1 (renumbered UC Case Number 85-157-4) entitled Method for Determining Aneuploidy in Fetal Cells from Maternal Blood Samples.

Field of Use
'Field of Interest' shall mean relating to analytical, research, and diagnostic applications of technology based on chromosomal staining, marking, and labeling.  Field of Interest shall specifically exclude therapies and treatments derived from analytical, research, and diagnostic applications.

IPSCIO Record ID: 1741

License Grant
The Company entered into an agreement to acquire an invention for the use of certain antibodies in the identification of fetal cells from maternal blood.  Licensor assigns all of his Trade Secret Rights and Patent Rights in the Invention to Licensee.
License Property
Licensor owns certain intellectual property and trade secret rights in the concept and techniques of using anti-embryonic hemoglobin antibodies in the process of identifying fetal cells in the maternal blood

The Invention shall mean the concept and techniques of using anti-embryonic hemoglobin antibodies, directed against either or both of the epsilon or zeta chains, in the process of identifying fetal cells in the maternal blood.

Trade Secret Rights shall mean any and all information relating to the Invention.  The Product shall mean a test or product for identifying fetal cells in the maternal blood which utilizes the Invention. The term Product shall include a combination product or test which utilizes the Invention and also utilizes Licensee's enrichment technology. The term Product shall not include Licensee's instrumentation technology related to the fetal cells or maternal blood and, to the extent sold separately, shall not include Licensee's tests or products relating to nucleic acid probes for identification of fetal nucleic acids, and Licensee's enrichment technology to be used on cells other than fetal cells.

Field of Use
Licensee is in the business of surgical and medical instruments and apparatus.

IPSCIO Record ID: 65273

License Grant
The Licensor grants grants the Licensee an exclusive, royalty-bearing, non-transferable , sublicensable license under the Licensed Patents and Technical Information,  relating to molecular diagnostics for lung cancer, solely to make, have made, use, sell, offer for sale, and import the Licensed Products in the Licensed Field in the Territory during the Term.
License Property
62/163,766 Methods and Compositions for Diagnosing or Detecting Lung Cancers – Patent rights and technical information and know-how relating to molecular diagnostics for lung cancer, including, but not limited to confirmatory, companion and recurrence diagnostics for any type of lung cancer with detection through whole blood, fractionated blood, plasma, serum and/or other biological samples.
Field of Use
The Licensee  will obtain a license under such patent rights, technical information and know-how to develop and commercialize products for the non invasive cancer diagnostic testing including for lung cancer.

IPSCIO Record ID: 324667

License Grant
German Licensor grants to Licensee and its Affiliates a worldwide, non-exclusive license (without the right to sublicense) under the Licensed Patents (i) to make, to have made, to use, to have used, to import, to have imported, to offer to sell, to have offered to sell, and to sell and to have sold Licensed Products and to pass on to direct and indirect purchasers of Licensed Products the right to use such purchased Licensed Products and (ii) to perform Licensed Services.
License Property
The term Licensed Patent(s) shall mean those patents and patent applications which are listed below as well as any reexamination certificate, reissue, substitution, renewal, extension, addition, utility model or other patent right, U.S. or foreign, which has now issued or in the future may issue from any continuation, continuation in part or divisional application of such patents and patent applications.
US Patent #5,185,243 – Method for detection of specific nucleic acid sequences
US Patent #5,516,641 – Method for detection of specific nucleic acid sequences

The term Licensed Product(s) shall mean any human vitro diagnostic testing product and any other product whose manufacture, use, or sale would, but for the license granted under this Agreement, infringe any claim of a Licensed Patent which claim has not been held unpatentable, invalid or unenforceable by a decision of a  competent tribunal from which no appeal has or can be taken or which claim has not been admitted by the patentee to be invalid or unenforceable.

The term Licensed Services shall mean any services performed by using Licensed Products and any services the performance of which would in the absence of the license granted herein infringe any claim of a Licensed Patent which claim has not been held unpatentable, invalid or unenforceable by a decision of a competent tribunal from which no appeal has or can be taken, or which claim has not been admitted by the patentee to be invalid or unenforceable.

Licensor is a leading manufacturer and distributor of in vitro diagnostics, or IVD, products worldwide with a strong market position in each of the core product markets, which include chemistry/immunochemistry, hemostasis, microbiology and infectious disease diagnostics.

Field of Use
Field of Use is for human vitro diagnostic testing.

In Vitro diagnostics (IVDs) are diagnostic tests that that can detect diseases, conditions, or infections. In vitro diagnostics test a sample of tissue or bodily fluids, as opposed to testing inside the body

Licensee develops products for applications in the life sciences, oncology, reproductive health and other segments.

IPSCIO Record ID: 203343

License Grant
The parties previously entered a Clinical Diagnostics Agreement and Blood Screening Agreement.

Pursuant to the settlement, the parties hereby irrevocably stipulate the Licensor Licensed Patents in the Territory are valid and enforceable; and, the making, use, offer for sale, sale, or importation of any Licensee Product in the Territory, where a Licensor Licensed Patent has issued and prior to the expiration of such Licensor Licensed Patent, would, in the absence of the licenses granted in the Agreements, as applicable, constitute infringement of one or more claims of such Licensor Licensed Patent.

Per the original agreement, the Parties entered a nonexclusive license in the Territory, without the right to sublicense, under the Licensor Licensed Patents to make, import, use, offer for sale and sell Licensor Licensed Products for use in Blood Screening solely for sale to or use by or on behalf of Existing Customers under the Existing Agreements and Existing Offers.

License Property
The Licensee Products means all assays sold by Licensee for the detection, quantitation, genotyping or other analyses of nucleic acid sequences Directed to HIV for use in in vitro diagnostics and/or Blood Screening, including without limitation the following products of Licensee Amplicor HIV-1 test, v. 1.0; Amplicor HIV-1 Monitor test, v. 1.0; Amplicor HIV-1 Monitor test, v. 1.5; COBAS Amplicor HIV-1 Monitor test, v. 1.5; Ampliscreen HIV-1 test, v. 1.5; and COBAS Ampliscreen HIV-1 test, v. 1.5; and all versions and successors and substitutes therefor.

Blood Screening means the commercial use of products that detect nucleic acid sequence(s) for the screening of blood, plasma or blood components intended for transfusion or for use in blood products (e.g., without limitation, immunoglobulins); or confirmatory or supplemental testing of the same samples otherwise screened for purposes described.

Directed to HIV means that the claim or technology in question is directed to methods, compositions, reagents or kits specifically for use in nucleic acid-based diagnostic assays for the detection of HIV nucleic acid sequence(s), or specifically for use in the manufacture of any compositions or reagents for use in, or manufacture of nucleic acid-based diagnostic assays for detection of HIV nucleic acid sequence(s) (excluding, for example, polymerase chain reaction claims and technology and other methods for detection of nucleic acid sequence(s) generally which involve nucleic acid amplification).

HIV means any viral isolate of the human immunodeficiency virus classified as HIV by the International Committee on the Taxonomy of Viruses (or any body that replaces such Committee) or any subtype of such isolate and further includes any isolate that is at least forty percent (40%) homologous to any such isolate and of the same genomic type and substantially the same genomic organization, any isolate that has a genome that either hybridizes to or is substantially identical to any such isolate or its compliment, and any defective or modified form of any of the above isolates.

''Patent' means U.S. Patent No. 6,531,276 Bl

Field of Use
This agreement is for the HIV Qualitative Assay field.

IPSCIO Record ID: 273391

License Grant
Licensor hereby grants to Licensee, subject to all the terms and conditions of this Agreement, a worldwide, nonexclusive right and license (without the right to grant sublicenses) under the Patent Rights to (a) use, offer to sell, sell and practice Diagnostic Services in the Field; (b) make, have made, use, offer to sell, sell and import Licensed Reagents in the Field; and (c) make, have made, use, offer to sell, sell and import Kits in the Field. Notwithstanding the foregoing, Licensor hereby grants to Licensee the worldwide, non-exclusive right to convey to the end-user (purchaser) of FDA (U.S. Food and Drug Administration) Approved Kits manufactured by Licensee the right to perform Diagnostic Services solely in conjunction with the use of FDA Approved Kits manufactured by or on behalf of Licensee (without the right to grant sublicenses).
License Property
Patent Rights shall mean collectively the Gene Patent Rights and the Methodology Patent Rights.

Diagnostic Service(s) shall mean the performance of laboratory-based assays covered in whole or in part by a Valid Claim of the Patent Rights.

Gene Patent Rights shall mean the United States and foreign patents and patent applications relating to the APC (Adenomamus polyposis coli) gene and/or the p53 gene and licensed (with the right to grant sublicenses) to Licensor pursuant to the JHU (Johns Hopkins University) License Agreement together with patents arising therefrom and any extensions, registrations, confirmations, reissues, divisions, continuations or continuations-in-part, re-examinations or renewals thereof, including without limitation the patents and patent applications listed hereto (which may be updated from time to time to include such additional patents and patent application that may arise therefrom); provided, however, that Gene Patent Rights expressly excludes any claims of such patents and patent applications that fall outside of the Field, including, without limitation, claims to antibodies, to the treatment, prevention or remedying of a gene deficiency, to purified proteins, or to DNA (Deoxyribonucleic acid) sequences other than those sequences that correspond to the p53 gene and the APC (Adenomatous polyposis coli) gene; provided further that DNA sequences which are (i) immediately adjacent to the p53 or APC genes and (ii) necessary to the use of the p53 or APC genes, respectively, in the Field shall be considered within the Gene Patent Rights.

US Patent No.  5,352,775 – APC gene and nucleic acid probes derived therefrom
US Patent No.  5,527,676 – Detection of loss of the wild-type P53 gene and kits therefor

Methodology Patent Rights shall mean the United States and foreign patents and patent applications relating to methods of detecting mammalian nucleic acids isolated from stool specimens and reagents therefor and licensed (with the right to grant sublicenses) to Licensor pursuant to the JHU (Johns Hopkins University) License Agreement together with patents resulting therefrom and any extensions, registrations, confirmations, reissues, divisions, continuations or continuations-in-part, re-examinations or renewals thereof, including without limitation the patents and patent application listed hereto (which may be updated from time to time to include such additional patents and patent applications that may arise therefrom).

US Patent Application No. W093/20235 and 08/861,910 (detecting mammalian nucleic acids from stool)

Licensed Reagent shall mean any Reagent covered in whole or in part by a Valid Claim of the Patent Rights.

Kit shall mean a collection of one or more Reagents, including at least one Licensed Reagent, packaged in the form of a kit (including an FDA Approved kit).

Field of Use
Field shall mean (a) stool-based detection of any disease or condition (including pre-cancers, staging and monitoring of the foregoing, and therapeutic response) for research and development, Clinical Laboratory Improvement Amendments (CLIA) testing services (and their foreign equivalents), and FDA Approved Kits; and (b) a screening assay (regardless of other uses to which such assay is put) for colorectal cancer in any type of patient samples, excluding tests solely for staging and/or monitoring of colorectal cancer which do not obsolete or adversely impact such screening assay.

IPSCIO Record ID: 605

License Grant
Swiss Licensor grants to Licensee and its Affiliates, a non-exclusive worldwide right and license under the Licensed Patents as follows to perform in vitro human and/or animal diagnostic testing procedures on a sample of material obtained from a human or animal, as applicable, solely to detect the presence, absence or quantity of a nucleic acid sequence associated with a disease or condition in the Licensed Fields.
License Property
Other Technology shall mean the processes covered by the method claims (if they are Valid Claims) of United States Patent Nos. 5,008,182, 5,677,152, 5,773,258 and 5,176,995, and any reissue or reexamination patents thereof, and the claims (if they are Valid Claims) of United States Patent No. 5,110, 920, and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.

PCR Technology shall mean polymerase chain reaction technology covered by Valid Claims of United States Patent Nos. B1 4,683,195, B1 4,683,202, and 4,965,188 and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.

Quantitation Technology shall mean the method claims (if they are Valid Claims) of United States Patent Nos. 5,389,512 and 5,219,727, and any reissue or reexamination patents thereof, and claims 1-4, 8, 9 and 15-18 (if they are Valid Claims) of United States Patent No. 5, 476,774, and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.

RT and RT-PCR  Technology shall mean the reverse transcription process covered by the method claims (if they are Valid Claims) of United States Patent Nos. 5,407,800, 5,310,652, 5,561,058, 5,618,703 and 5,322,770, and any reissue or reexamination patents thereof, and the claims (if they are Valid Claims) of United States Patent No. 5,693,517, and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.

'5' Nuclease Technology' shall mean only the processes defined by the method claims (if they are Valid Claims) of United States Patent Nos. 5,210,015 and 5,487,972 and any reissue or reexamination patents thereof and the reaction mixture claims (if they are Valid Claims) of United States Patent No. 5,804,375 and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.

Field of Use
Diagnostic Services Field means the field of human in vitro diagnostics for the detection, quantitation, monitoring, genotyping, or phenotyping, of genetic and infectious diseases, disease susceptibility, genetic pre-disposition to disease or cancer; analyzing specimens taken from a human being for the purpose of testing, with respect to that human being, for a physiological or pathological state, for a congenital abnormality, for safety and compatibility of a treatment or to monitor therapeutic measures; or any use of PCR as a testing service to provide to a person data, results or interpretations of any application of PCR for purposes of therapy or diagnosis of a human being, including, without limitation, clinical laboratory services, whether or not a fee is charged for such services; tissue transplant typing, including testing performed on animal tissue intended for use in xenotransplantation; Parentage Determination; diagnosis, disease management; and clinical trials, whether or not a patient result is provided directly or indirectly to a patient.  Licensed Field shall specifically exclude any services performed for screening of blood and/or blood products.

IPSCIO Record ID: 237259

License Grant
Licensor grants the Japanese Licensee, a non-exclusive, non-transferable license in the Territory under the Licensor Patent Rights to develop, make, have made, use, offer for sale, sell and have sold, Licensed Products in the Field, Future Licensed Products and to practice Licensed Methods in the Field.
License Property
The patents include Method for Detecting, Identifying and quantitating organisms and viruses, and, a Method for Determining  the sensitivity of Microorganisms, and, a Nucleic Acid Probe, and, Method for releasing RNA and DNA from Cells, and, Accelerated Nucleic Acid re-association method, and, Nucleic Acid Probes for Detection of non-viral organisms.

Licensor has developed proprietary technology relative to the performance of diagnostic assays based on genetic probe technology for the detection of agents causing infectious diseases, including viruses, and for the detection of cancer.

Licensor Patent Rights shall mean the Japanese patents, patent applications and international applications, to the extent they enter the national stage in Japan; all patents that have been issued or in the future issue, that are derived from or are related to, all patents to this Agreement, including without limitation utility model and design patents and certificates of invention.  

Licensed Product shall mean any already developed product or product in development as of the effective date of this agreement.  The products relate to DNA Probe – HBV Quantitative HBV, Infectious Disease , and Cancer.

Licensed Method shall mean any method, the use or practice of which would constitute, but for the license granted herein, an infringement of any issued Valid Claim within the Licensor Patent Rights.

Field of Use
Field shall mean the field of diagnostics, including but not limited to human, animal and environmental diagnostics and food testing and of investigational use only (IUO) applications.

The Field specifically does not include nucleic acid probe based testing of human blood, plasma or other blood products intended for direct transfusion or administration to humans. The Field also does not include nucleic acid probe based testing for infectious agents in blood in connection with organ transplants.  Excluded Assay Targets are Hepatitis Viruses, Herpes Viruses, HIV-1, HIV-2, HTLV-I, HTLV-11, MSRV,  and, HMMT-like Virus.

IPSCIO Record ID: 291130

License Grant
Licensor hereby grants to Licensee, and Licensee hereby accepts from Licensor, a royalty-bearing, non exclusive, personal, non-transferable license under the Licensed Technology solely to perform Licensed Services within the Territory.

Licensor hereby grants to Licensee the right and Licensee accepts and agrees to credit Licensor as the source of its Licensed Technology rights in Licensees promotional materials and any other materials intended for distribution to Third Parties as follows

License Property
Licensor owns and has the right to grant licenses to practice under certain United States Patents describing and claiming, inter alia, nucleic acid amplification processes known as polymerase chain reaction ('PCR'), homogeneous PCR, and RT-PCR ('reverse transcription PCR').

Licensed Technology shall mean, subject to the following limitations, the Valid Claims of the United States patents listed in Agreement and any reissue or reexamination patents thereof. No rights under any kit claims of such patents are included in this definition or licensed under this Agreement. With the exception of the reaction mixture claims of United States Patents Nos. 5,804,375, 5,693,517, 5,476,774 and 6,127,155, the plasmid claims of the 5,476,774 patent, the primer claims of United States Patent No. 5,573,906, and the probe claims of United States Patent No. 5,110,920, no rights under any apparatus, device, composition of matter, reagent or substance claims of such patents are included in this definition or licensed under this Agreement.
4,683,195 – Process for amplifying, detecting, and/or-cloning nucleic acid sequences
4,683,202 – Process for amplifying nucleic acid sequences
4,965,188 – Process for amplifying, detecting, and/or cloning nucleic acid sequences using a thermostable enzyme

Diagnostic Product shall mean an assemblage of reagents, including but not limited to reagents packaged in the form of a kit, useful in performing a Licensed Service.

Licensed Service(s) shall mean the performance by Licensee of an in vitro procedure within the Licensed Field which utilizes the Licensed Technology. Licensed Services include, but are not limited to, any combination of the steps of collecting a sample for analysis, isolating nucleic acid sequences from the sample, amplifying one or more desired sequences, analyzing the amplified material, including sequence analysis, and reporting the results.

Field of Use
Licensed technology includes specified nucleic acid amplification processes, to perform certain polymerase chain reaction-based human in vitro clinical laboratory services.

Licensed Field shall mean the field of clinical laboratory services that detect the presence, absence and/or quantity of a nucleic acid sequence for the detection, diagnosis, confirmation, prognosis, management and/or treatment of a human disease or condition, including, but not limited to, such services to identify predisposition to disease, disease susceptibility, confirm disease, predict therapeutic effectiveness or monitor disease progress; used in the course of human clinical trials; for Parentage Determination; and for tissue transplant typing, including testing performed on animal tissue intended for use in xenotransplantation. Licensed Field shall specifically exclude any services performed for the screening of blood and/or blood products.

IPSCIO Record ID: 223141

License Grant
The German Licensor hereby grants to Licensee an exclusive license (including the right to grant sublicenses) under the Licensed Patent Rights to conduct research and to develop, make, use, offer for sale, sell and import Licensed Products and to provide Services in the Territory.
License Property
Licensed Patent Rights shall mean (a) those certain patent applications and patents listed hereto; (b) all patents that have issued or in the future issue from such foregoing patent applications, including utility, model and design patents and certificates of invention; (c) all patents that have issued or in the future issue from any patent application that claims priority from, or common priority with, any of the foregoing patent applications, including utility, model and design patents and certificates of invention; and (d) all divisionals, continuations, continuations-in-part, reissues, renewals, extensions or additions to any such foregoing patent
applications and patents.

W003023057 (PCT /EP02/05489) – Method and Diagnosis Kit for Selection and/or for Qualitative and/or Quantitative Detection of Cells

Licensed Products shall mean in-vitro diagnostic assays to isolate, detect, identify, quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of prostate cancer and/or bladder cancer, for the purpose of research, diagnosis or medical care, the  manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the AdnaGen Patent Rights.

Field of Use
This agreement pertains to the medical industry relating to certain technology concerning the qualitative and quantitative detection of cells which may be useful in connection with nucleic acid diagnostic assays. The diagnostic indicators are used for the presence of prostate cancer and/or bladder cancer, for the purpose of research, diagnosis or medical care.

'Group 1 Additional Products' shall mean in-vitro diagnostic assays to isolate, detect, identify or quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of kidney cancer, cervical cancer, and/or ovarian cancer, for the purpose of research, diagnosis or medical care, the manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the Licensed Patent Rights.

'Group 2 Additional Products' shall mean in-vitro diagnostic assays to isolate, detect, identify or quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of lung cancer, colon cancer, and/or breast cancer, for the purpose of research, diagnosis or medical care, the manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the Licensed Patent Rights.

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