Royalty Report: Medical, Device, Surgical – Collection: 26718

License Grant

The Patent Owner, an individual, granted the Licensee a license under the Licensed Patent to make, use, and sell Licensed Products for use in the Licensed Field of Use within the Licensed Territory.

License Property

Licensed Products means any water jet device for use in the medical, surgical and dental fields (the Licensed Field of Use).

Applicant's invention relates to instruments and tools useful for incising biologic tissues.

U.S. Patent #5,620,414 titled 'Apparatus and Method for Effecting Surgical Incision Through Use of a Fluid Jet' filed on April 8, 1994 and issued on April 15, 1997 (CIP of U.S. Serial Number 906,558, filed June 30, 1992 — abandoned).

Field of Use

'Licensed Field of Use' means those disciplines or areas of endeavor into and for which LICENSEE may sell Licensed Products, and includes the medical, surgical and dental fields.

License Grant

COMPANY hereby grants and LICENSEE hereby accepts a license under the Licensed Patents to make, use, and sell Licensed Products for use in the Licensed Field of Use within the Licensed Territory.  An exclusive worldwide license is granted for technology applicable in medical and surgical fields related to ophthalmological applications.

License Property

DESCRIPTION                          PATENT #               ISSUED

SURGICAL LIQUID LANCE APPARATUS*              5,037,431            AUG 6, 1991

METHOD AND APPARATUS FOR TISSUE               5,322,504            JUN 21, 1994

EXCISION AND REMOVAL BY FLUID JET**

FLUID JET SURGICAL CUTTING INSTRUMENT         5,591,184            JAN 7, 1997

METHOD AND APPARATUS FOR TISSUE               5,674,226            OCT 7, 1997

EXCISION AND REMOVAL BY FLUID JET

FLUID JET SURGICAL CUTTING TOOL               5,562,692            OCT 8, 1996

HYDROJET APPARATUS FOR REFRACTIVE             5,643,299            JUL 1, 1997

SURGERY

METHOD OF USING FLUID JET SURGICAL            5,735,815            APR 7, 1998

CUTTING TOOL

METHOD AND APPARATUS FOR THERMAL            08/755,622            AUG 4, 1998

PHOCOEMUSIFICATION BY FLUID THROTTLING

METHOD AND APPRATUS FOR DENTAL              08/890,496           SEPT 28, 1998

TREATMENT USING HIGH PRESSURE LIQUID
JET

Field of Use

'Licensed Field of Use' means the medical and surgical fields  related to ophthalmological applications.

License Grant

The Licensor granted the Licensee an exclusive license (including the right to grant sublicenses) in and to the devices and the technology for the purposes of making, having made, using and selling the Devices.

License Property

The devices relate to ophthalmic applications of fluid jet technology.

Field of Use

Licensed Field of Use means the medical and surgical fields related to ophthalmological applications.

License Grant

Licensor agrees to grant and does hereby grant to Licensee an exclusive, worldwide license (with right to sublicense) upon the terms and conditions hereinafter specified to evaluate, make, have made, use and sell in the Territory the Surgical Clip Technology, the Licensed Products, Licensed Processes and the Technical Information and including, without limitation, Improvements, Patents and Improvement Patents.  Licensor shall retain the right to permit the Inventors to use any of the Surgical Clip Technology, the Licensed Products, Licensed Processes and Technical Information, and including, without limitation, Improvements, Patents and Improvement Patents for human, neurosurgical procedures performed only by them in their existing neurosurgical practice and only until Licensee has developed a potential Royalty Product for clinical field testing. Such usage shall be without compensation to or liability on the part of Licensee; but all of the same shall be treated by Licensor as confidential Information of Licensee during the term of this Agreement.

License Property

Licensed Product means any apparatus, product, or device within the Surgical clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Surgical Clip Technology means all of the patented or unpatented, patentable or unpatentable, scientific and technical information and know-how created and developed by the inventors during or previous to this Agreement relating to arrangements and techniques for surgical clips and applicators therefor, and includes, but is not limited to, the technology shown, described, and claimed in the patents and patent applications set forth and incorporated herein.
4,586,503 – Surgical microclip
4,733,664 – Surgical clip, applier, and method
4,983,176 – Deformable plastic surgical clip

Patent or Patent Rights are equivalent terms and shall mean any patent issuing on a patent application existing as of the effective date drawn to an invention within the Surgical Clip Technology and covering a Licensed Product Licensed Product, a Licensed Process or Technical Information including, without limitation, the patents and patent applications set forth and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on any later filed continuation-in-part application directed to substantially the same type of invention as that claimed in any patent or patent application listed.

Royalty Products mean products sold by Licensee and by any affiliate and/or sublicensee which are either (a) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents; or (b) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents, in combination with one or more Licensee Inventions.

The terms Micro Clip, Mezzo Clip, and Macro Clip and relate only to sizes and dimensions of surgical clips.

Improvement Patent means any patent issuing on a patent application which comes into existence on or after the effective date drawn to an invention within the Surgical Clip Technology covering a Licensed Product, a Licensed Process or Technical Information and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on a later filed patent application which is a continuation in part of any of the aforesaid patent applications and directed to substantially the same type of invention as that claimed in any such patent application.

Licensed Process means any process, method, or technique within the Surgical Clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Field of Use

This agreement pertains to the medical industry relating to surgical clips for joining vessels and other surgical products, including wound closure products.

License Grant

The assignment of the intellectual property agreement for International Patent Application No. PCT/IB2010/000797 to Licensee, the Hong Kong affiliate.

License Property

PCT/IB2010/000797 A Device and Method for Lifting Abdominal Wall During Medical Procedure

License Grant

The parties agree to amend the original agreement in connection with the proposed assignment of the Agreement of Party A. This amendment refers to the Licensor granting and does hereby grant to Licensee an exclusive, worldwide license (with right to sublicense) upon the terms and conditions hereinafter specified to evaluate, make, have made, use and sell in the Territory the Surgical Clip Technology, the Licensed Products, Licensed Processes and the Technical Information and including, without limitation, Improvements, Patents and Improvement Patents.  Licensor shall retain the right to permit the Inventors to use any of the Surgical Clip Technology, the Licensed Products, Licensed Processes and Technical Information, and including, without limitation, Improvements, Patents and Improvement Patents for human, neurosurgical procedures performed only by them in their existing neurosurgical practice and only until Licensee has developed a potential Royalty Product for clinical field testing. Such usage shall be without compensation to or liability on the part of Licensee; but all of the same shall be treated by Licensor as confidential Information of Licensee during the term of this Agreement.

License Property

Licensed Product means any apparatus, product, or device within the Surgical clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Surgical Clip Technology means all of the patented or unpatented, patentable or unpatentable, scientific and technical information and know-how created and developed by the inventors during or previous to this Agreement relating to arrangements and techniques for surgical clips and applicators therefor, and includes, but is not limited to, the technology shown, described, and claimed in the patents and patent applications set forth and incorporated herein.
4,586,503 – Surgical microclip
4,733,664 – Surgical clip, applier, and method
4,983,176 – Deformable plastic surgical clip

Patent or Patent Rights are equivalent terms and shall mean any patent issuing on a patent application existing as of the effective date drawn to an invention within the Surgical Clip Technology and covering a Licensed Product Licensed Product, a Licensed Process or Technical Information including, without limitation, the patents and patent applications set forth and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on any later filed continuation-in-part application directed to substantially the same type of invention as that claimed in any patent or patent application listed.

Royalty Products mean products sold by Licensee and by any affiliate and/or sublicensee which are either (a) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents; or (b) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents, in combination with one or more Licensee Inventions.

The terms Micro Clip, Mezzo Clip, and Macro Clip and relate only to sizes and dimensions of surgical clips.

Improvement Patent means any patent issuing on a patent application which comes into existence on or after the effective date drawn to an invention within the Surgical Clip Technology covering a Licensed Product, a Licensed Process or Technical Information and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on a later filed patent application which is a continuation in part of any of the aforesaid patent applications and directed to substantially the same type of invention as that claimed in any such patent application.

Licensee Improvement Patent shall mean any Improvement Patent filed following the assignment date that is not a Post-Assignment Licensor Improvement Patent.

Post-Assignment Licensor Improvement Patent shall mean any Improvement Patent filed following the Assignment Date and containing at least one claim pertaining to an invention conceived in whole or in part by Licensor following the assignment date.

Licensed Process means any process, method, or technique within the Surgical Clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Field of Use

This agreement pertains to the medical industry relating to surgical clips for joining vessels and other surgical products, including wound closure products.