Royalty Report: Drugs, Drug Discovery, Disease – Collection: 273247

License Grant

The Israeli Licensor, the technology transfer company of the University, hereby grants to the Company an exclusive or non-exclusive license, in accordance with the Agreement terms, in the Territory, with the right to grant sublicenses as provided, to practice and utilize the Licensed Patent Rights, and the Licensed Know-how to (a) research and develop products and services solely in the Field of Use, and (b) to register, make, have made, lease, use, import, market, have marketed, and/or sell or have sold products and services solely in the Field of Use.

License Property

Product(s) shall mean any products, product component, production supplement and/or process covered by a valid claim of the Licensed Patent Rights in the country where the product is sold and/or that embodies any Licensed Know-How.

Licensed Patent Rights shall mean the Patent Rights, the Non-exclusive Patent Rights and Research Patent Rights.  

Research Patent Rights shall mean any United States and/or non-United States patent or patent applications and all substitutions, divisions,  continuations, continuations-in-part, reissues, reexaminations and extensions  thereof that are owned or otherwise controlled by the Licensor and that cover the Know-how and/or Research Know-how developed prior to or during the course of the Research Program.

Patent Rights shall mean:  The patent application set forth, designated as exclusive; Any non-United States patent applications claiming  priority from the patent application referred to; Claims of United States continuation-in-part applications, and of the resulting patents; and Any reissues, divisionals, amendments or extensions of the United States or non-United States patents.

Exclusive Patent Rights:  New Heterocyclic compounds, method of developing new drug leads and combinatorial libraries used in such method.
Non-exclusive Patent Rights:  A general procedure for the preperative scale systhesis of protected Ca (functionalysed alkyl) amino acids suitable for solid phase synthesis.

Exclusive Know-How: All new developments, now in existence or to be developed pursuant to the Research Program.

Non-Exclusive Know-How: The novel building units described in Agreement and a process for the preparation of compounds described in the Agreement consisting of a multistep reaction procedure.

Non-Exclusive Patent Rights shall mean the provisional patent application set forth in this Agreement designated as non-exclusive; Any United States  utility patent application and non-United States patent applications based, in whole or in part, on the provisional patent application set forth; The United States and non-United States patents issued from the applications referred to; Claims of United States continuation-in-part applications, and of the resulting patents, which are based on the subject matter specifically described; and Any reissues, divisionals, amendments or extensions of the United States or non-United States patents described.

Field of Use

This invention is in the field of using combinatorial chemistry to develop new drugs.

License Grant

License to Commercialize Collaboration Compounds –  Licensor grants to Licensee a worldwide, exclusive license, with the right to sublicense, under the Licensor IP and Licensors interest in the Collaboration IP, to make, have made, use, sell, offer to sell and import Collaboration Compounds, and/or Collaboration Products based on such Collaboration Compounds, for any and all uses and indications in the Licensee Field.

License to Compounds (Other than Collaboration Compounds)  Derived from Licensee Compounds – Licensor grants to Licensee a worldwide, exclusive license, with the right to sublicense, under the Licensor IP and Licensors interest in the Collaboration IP, to make, have made, use, sell, offer to sell and import Collaboration Compounds, and/or Collaboration Products based on such Collaboration Compounds, for any and all uses and indications in the Licensee Field.

License Property

Collaboration Product shall mean a pharmaceutical product containing a Collaboration Compound that is sold by Licensee or Licensor, or their respective Sublicensees or Affiliates.  It is understood that, in the event any Collaboration Compound is sold for therapeutic purposes, such Collaboration Compound shall be deemed a Collaboration Product and shall be subject to milestones and royalties as set forth in this Agreement.

Collaboration Compound shall mean a Licensor Compound or a Non-Exclusive Compound or a compound that is derived, directly or indirectly, from a Licensee Compound, Licensor Compound, or Non-Exclusive Compound; in each case, that modulates the biological activity of a Collaboration Target at a level of potency to be established by the JRC.  A compound shall be deemed to have been derived directly from another compound if it (i) is the result of a chemical modification made to such a compound, (ii) is otherwise obtained from a chemical synthesis program based on one or more such compounds, (iii) is based on proprietary structure-activity data obtained from the testing of one or more such compounds, or (iv) is specifically or generically within the scope of one or more claims of any patent application or patent filed by Licensor or Licensee or their Affiliates to protect any compound in category (i), (ii) or (iii) above.  A compound shall be deemed to have been derived indirectly from another compound if it is the result of a series of iterations of any or all of (i) through (iv) above.  For purposes of clarity, any compound synthesized in the course of the Collaboration and based on a Licensee Compound, Licensor Compound, or Non-Exclusive Compound which is active against a Collaboration Target at the level of potency established by the JRC shall be deemed a Collaboration Compound.  Joint Research Committee or “JRC” shall mean the entity organized to manage the scientific implementation of the Collaboration.

Licensee IP shall mean Licensee Patents and Licensee Know-how.

Collaboration IP shall mean Collaboration Patents and Collaboration Know-how.  Collaboration IP shall not include Licensor IP or Licensee IP.

Licensor IP shall mean Licensor Patents and Licensor Know-how.  Licensor IP shall not include any intellectual property owned or licensed by Licensor or its Affiliates relating to the ECLiPSâ„¢ technology (i.e., the creation or use of encoded combinatorial libraries or any tag and/or marker compounds).

Licensee Patents shall mean all Patents in the Territory Controlled by Licensee or its Affiliates as the effective date, or any other Patent Controlled by Licensee during the Term; in each case, necessary for the discovery, development, manufacture, importation or use of one or more Collaboration Compounds and/or the development, manufacture, use, sale, importation or commercialization of corresponding Collaboration Products.

Licensor Patents shall mean all Patents in the Territory Controlled by Licensor or its Affiliates as the Effective Date, or any other Patent Controlled by Licensor during the Term; in each case, necessary for the discovery, development, manufacture, importation or use of one or more Collaboration Compounds and/or the development, manufacture, use, sale, importation or commercialization of corresponding Collaboration Products.

Collaboration Patents shall mean (i) all patents and patent applications claiming any invention or discovery which was conceived or reduced to practice during the Collaboration Term and in the course of the Collaboration, by employees or agents of Licensee, Licensor or any of their respective Affiliates, either alone or jointly (including, without limitation, the synthesis and composition of matter of any Collaboration Compound, or method of use thereof; and (ii) any divisions, continuations, continuations-in-part, reissues, reexaminations, extensions or other governmental actions which extend any of the subject matter of the patent applications or patents in (i) above, and any substitutions, confirmations, registrations, revalidations, or additions of any of the foregoing, in each case, which is owned or Controlled, in whole or part, by license, assignment or otherwise by Licensor or Licensee during the term of this Agreement; provided, however, that Collaboration Patents shall not include any Licensee Patents or Licensor Patents.

Licensor Compound shall mean any compound brought to the Collaboration by Licensor, which is Controlled by Licensor at or after the Effective Date, and which is proprietary to Licensor by virtue of being within the Licensor IP.

Field of Use

The primary objective of the alliance is to identify active molecules and bring them forward to clinical proof of concept, yielding novel candidates for drug development in various therapeutic areas.

Licensor Field shall mean, with respect to each Collaboration Compound for which Licensor has received approval to develop pursuant, all human and animal disorders and diseases treated by modulation of a Collaboration Target by such Collaboration Compound.

Licensee Field shall mean, with respect to each Collaboration Compound, all human and animal disorders and diseases treated by modulation of a Collaboration Target by such Collaboration Compound.

License Grant

Canadian Licensor grants to Licensee the sole and exclusive license, even with respect to Licensor, including the right to grant sublicenses, under the Licensor Patent Rights and to use the Licensor Know-How, to make, have made, use, have used, offer for sale, sell, import, export, register and/or market Products and/or Licensee Products in the Territory for use in the Field.

License Property

Product means any and all products for humans or animals that include, in whole or as a component thereof, a Licensor Compound.

Licensor Compound means any 5-HT6 receptor antagonist for which Licensor as of the Effective Date has rights, whether by reason of its own conception of such antagonist, or under agreement with a Third Party, and are Covered by Licensor Patent Rights. Licensor Compounds shall include any 5-HT6 receptor antagonist for which Licensee during the term of this Agreement has rights by reason of its own conception of such antagonist and which also is Covered by the Licensor Patent Rights. A list of the Licensor Compounds shall be updated from time-to-time.

Licensee Product means any pharmaceutical product that includes, in whole or as a component, any Licensee Compound as an active ingredient thereof.

Licensee Compound means any 5-HT6 receptor antagonist for which Licensee as of the Effective Date or during the term of this Agreement has rights, by reason of its own conception of such antagonist, and are Covered by Licensee Patent Rights, but are not covered by the Licensor Patent Rights. A list of the Licensee Compounds shall be updated from time-to-time.

Licensor Patent Rights means all Patent Rights that Licensor owns, or otherwise has the right to grant the licenses herein relating to 5-HT6 receptor antagonists as updated from time-to-time, including (a) any patents issuing from any such patent applications listed hereto and (b) any divisional applications, continuation applications, continuation-in-part applications, substitutions, extensions, supplementary protection certificates, reissues, reexaminations, renewals or the like related to the patents and patent applications listed hereto. Licensor Patent Rights do not include Licensors non-exclusive license from NIH to the 5-HT6 receptor patents.
6,100,291 – Pyrrolidine-indole compounds having 5-HT.sub.6 affinity
6,133,287 – Piperidine-indole compounds having 5-HT.sub.6 affinity
6,251,893 – Bicyclic piperidine and piperazine compounds having 5-HT6 receptor affinity

Licensee Patent Rights means all Patent Rights that Licensee owns relating to 5-HT6 receptor antagonists as updated from time-to-time, including (a) any patents issuing from any such patent applications listed hereto and (b) any divisional applications, continuation applications, continuation-in-part applications, substitutions, extensions, supplementary protection certificates, reissues, reexaminations, renewals or the like related to the patents and patent applications listed.

U.S. Patent Application No. 11/676,203 – Compounds having 5-HT6 receptor affinity
U.S. Provisional Patent Application No. 60/890,324 – 6 substituted compounds having 5-HT6 receptor affinity

Field of Use

Field shall mean prophylaxis and treatment of diseases, in all indications, for either human or veterinary use.

License Grant

The Japanese Licensor hereby grants and agrees to grant to Licensee: (i) an exclusive (except as to Licensor), royalty-bearing license (with the right to sublicense) under the Program Patents, Program Know-How, and the Licensor Technology to the extent necessary develop, have developed (following approval of the MC in accordance with this agreement), make, have made, use, import, offer for sale, sell and have sold (following approval of the MC in accordance with this agreement) any Product in the Co-Promotion Territory; and (ii) an exclusive (even as to Licensor), royalty-bearing license (with the right to sublicense) under the Program Patents, Program Know-How, and the Licensor Technology to develop, have developed, make, have made, use, import, offer for sale, sell and have sold (with the right to sublicense) any Product in the Licensee Territory.

License Property

Product shall have the meaning regarding Lead Compound and Research Compound. Products do not include Independent Products.

Lead Compound shall mean a Substance designated by the RMC as suitable for initial development against a Current Program Target within the Field based upon results of screening performed pursuant to this agreement.  Lead Compounds may be selected as Collaboration Lead Compounds.

Research Compound shall mean any compound that is based upon a Substance that agonizes or antagonizes a Current Program Target and that is made, created, discovered, identified, invented, synthesized, optimized or acquired by or on behalf of either Party pursuant to the Research Plan, or otherwise in the course of the Program. Research Compounds may be selected as Collaboration Lead Compounds.

Program Patents shall mean patents and patent applications, both foreign and domestic, including without limitation all substitutions, provisionals, continuations, continuations-in-part, divisionals, extensions, reexaminations, reissues, renewals, supplementary protection certificates and inventors certificates, that are owned or controlled by either Party or both Parties and claim Program Inventions made during the Term in the course of the discovery, research, Pre-Clinical Development, Development and commercialization of Substances, Lead Compounds, Research Compounds, Collaboration Lead Compounds, Independent Lead Compounds, Products or Independent Products pursuant to the Program. Program Patents shall exclude Research Compound Patents and Program Know-How.

Licensor Technology shall mean, collectively, the Patent Rights and the Know-How owned or controlled by Licensor.

RMC shall mean the research management committee.

MC shall mean the marketing committee.

Field of Use

Field shall mean the agonism or antagonism of Current Program Targets for the treatment of disease in humans.

The deal is for the discovery, development and commercialization of products to treat metabolic diseases.  Metabolic syndrome is a cluster of conditions that occur together, increasing your risk of heart disease, stroke and type 2 diabetes. These conditions include increased blood pressure, high blood sugar, excess body fat around the waist, and abnormal cholesterol or triglyceride levels.

This collaboration agreement is to research and develop orphan nuclear receptor agonists and antagonists.

License Grant

University hereby grants to Israel Corporation and Corporation hereby accepts from University the License. License shall mean the exclusive worldwide license to practice University’s share in the University Research Technology (as hereinafter defined) for the development, manufacture, use and sale of the Licensed Products (as hereinafter defined). At the initiative of Corporation or University, the parties shall consult with each other regarding the prosecution of all patent applications with respect to the University Research Technology. University and Corporation shall assist, and cause their respective employees and consultants to assist, each other in assembling inventorship information and data for the filing and prosecution of patent applications on inventions pertaining to the Research Technology. Corporation shall be entitled to grant sublicenses under the License on terms and conditions in compliance and not inconsistent with the terms and conditions of this Agreement (except that the rate of royalty may be at higher rates than those set forth in this Agreement) (i) to a Corporation Entity or (ii) to other third parties for consideration and in an arms-length transaction.

License Property

Licensed Products shall mean all products, drugs, diagnostic reagents, diagnostic methods, therapeutic agents and therapeutic methods covered by a claim of any unexpired University Patents (as hereinafter defined) which has not been disclaimed or held invalid by a court of competent jurisdiction from which no appeal has been or can be taken.

University Research Technology shall mean all University Patents and all University Know-How.

University Patents shall mean all United States and foreign patents and patent applications, and any divisions, continuations, in whole or in part, reissues, renewals and extensions thereof, and pending applications therefor:
(1)  
which claim Pre-Existing Inventions and which are identified hereto; or
(2)  
which claim inventions that are made, in whole or in part, by students or employees of SAMSF during the term and in the course of the Research Project;  
with the exception of all such patents which are Corporation Patents as hereinafter defined.
U.S. Patent Application Serial No. 08/801,301, filed February 18, 1997 entitled Use if Nekatibub To Prevent Cytotoxic effects of Amyloid Protein by Pappolla.
U.S. Provisional Patent Application Serial No. 60/075,555 filed February 23, 1998 entitled Use of 3-Indol-Proprionic acid by Pappolla
U.S. Provisional Patent Application Serial No. 60/079,349 filed March 25, 1998 entitled Inhibition of Alzheimer of Alzheimer Beta-Fibrillogenesis by Mela Tonm by Pappolla.

Corporation Patents shall mean all United States and foreign patents and patent applications, and any divisions, continuations, in whole or in part, reissues, renewals and extensions thereof, and pending applications therefor which claim inventions that are made, in whole or in part, by students or employees of Corporation.

Research Technology shall mean all University Patents, University Know-How, Corporation Patents and Corporation Know-How.

Field of Use

Field shall mean research, development and testing within pharmaceutical, biotechnological and diagnostic development programs in the field of Alzheimer’s Disease and other central nervous system and neurodegenerative diseases, and in the field of all other possible utilities for melatonin analogs.

License Grant

The parties wish to enter into a collaboration employing Licensees medicinal chemistry, analytical chemistry and primary biology capabilities and Licensors chemistry, in vitro biology, and in vivo biology capabilities, in order to develop and commercialize pharmaceutical compounds subject to and in accordance with the terms and conditions of this Agreement (the “Collaboration”).

License to Commercialize Collaboration Compounds – With respect to all Collaboration Compounds for which Licensee has received Licensors approval to develop and commercialize, Licensor grants to Licensee a worldwide, exclusive license, with the right to sublicense, under the Licensor IP and Licensor’s interest in the Collaboration IP, to make, have made, use, sell, offer to sell and import Collaboration Compounds, and/or Collaboration Products based on such Collaboration Compounds, for any and all uses and indications in the Licensee Field.

License to Compounds (Other than Collaboration Compounds) Derived from Licensee Compounds –  Licensor grants to Licensee a worldwide, perpetual, exclusive, royalty-free license, with the right to sublicense, under Licensors interest in the Collaboration IP, to exploit for any and all purposes all compounds (other than Collaboration Compounds) derived, directly or indirectly, from Licensee Compounds.

Research Licenses – The Parties hereby grant each other non-exclusive, worldwide, royalty-free research licenses, without the right to sublicense, under their respective interests in the Licensee IP, Licensor IP and Collaboration IP, in order for each Party to perform its research obligations pursuant to Research Plans during the Collaboration Term.

License Property

Collaboration Product shall mean a pharmaceutical product containing a Collaboration Compound that is sold by Licensor or Licensee, or their respective Sublicensees or Affiliates.  It is understood that, in the event any Collaboration Compound is sold for therapeutic purposes, such Collaboration Compound shall be deemed a Collaboration Product and shall be subject to milestones and royalties as set forth in this Agreement.

Collaboration Compound shall mean a Licensee Compound or a Non-Exclusive Compound or a compound that is derived, directly or indirectly, from a Licensor Compound, Licensor Compound, or Non-Exclusive Compound; in each case, that modulates the biological activity of a Collaboration Target at a level of potency to be established by the JRC.  A compound shall be deemed to have been derived directly from another compound if it (i) is the result of a chemical modification made to such a compound, (ii) is otherwise obtained from a chemical synthesis program based on one or more such compounds, (iii) is based on proprietary structure-activity data obtained from the testing of one or more such compounds, or (iv) is specifically or generically within the scope of one or more claims of any patent application or patent filed by Licensee or Licensor or their Affiliates to protect any compound in category (i), (ii) or (iii) above.  A compound shall be deemed to have been derived indirectly from another compound if it is the result of a series of iterations of any or all of (i) through (iv) above.  For purposes of clarity, any compound synthesized in the course of the Collaboration and based on a Licensor Compound, Licensee Compound, or Non-Exclusive Compound which is active against a Collaboration Target at the level of potency established by the JRC shall be deemed a Collaboration Compound.

Joint Research Committee or “JRC” shall mean the entity organized to manage the scientific implementation of the Collaboration.

Licensor IP shall mean Licensor Patents and Licensor Know-how.

Collaboration IP shall mean Collaboration Patents and Collaboration Know-how.  Collaboration IP shall not include Licensee IP or Licensor IP.

Licensee IP shall mean Licensee Patents and Licensee Know-how.  Licensee IP shall not include any intellectual property owned or licensed by Licensee or its Affiliates relating to the ECLiPSâ„¢ technology (i.e., the creation or use of encoded combinatorial libraries or any tag and/or marker compounds).

Licensor Patents shall mean all Patents in the Territory Controlled by Licensor or its Affiliates as the effective date, or any other Patent Controlled by Licensor during the Term; in each case, necessary for the discovery, development, manufacture, importation or use of one or more Collaboration Compounds and/or the development, manufacture, use, sale, importation or commercialization of corresponding Collaboration Products.

Licensee Patents shall mean all Patents in the Territory Controlled by Licensee or its Affiliates as the Effective Date, or any other Patent Controlled by Licensee during the Term; in each case, necessary for the discovery, development, manufacture, importation or use of one or more Collaboration Compounds and/or the development, manufacture, use, sale, importation or commercialization of corresponding Collaboration Products.

Collaboration Patents shall mean (i) all patents and patent applications claiming any invention or discovery which was conceived or reduced to practice during the Collaboration Term and in the course of the Collaboration, by employees or agents of Licensor, Licensee or any of their respective Affiliates, either alone or jointly (including, without limitation, the synthesis and composition of matter of any Collaboration Compound, or method of use thereof; and (ii) any divisions, continuations, continuations-in-part, reissues, reexaminations, extensions or other governmental actions which extend any of the subject matter of the patent applications or patents in (i) above, and any substitutions, confirmations, registrations, revalidations, or additions of any of the foregoing, in each case, which is owned or Controlled, in whole or part, by license, assignment or otherwise by Licensee or Licensor during the term of this Agreement; provided, however, that Collaboration Patents shall not include any Licensor Patents or Licensee Patents.

Licensee Compound shall mean any compound brought to the Collaboration by Licensee, which is Controlled by Licensee at or after the Effective Date, and which is proprietary to Licensee by virtue of being within the Licensee IP.

Field of Use

Licensee Field shall mean, with respect to each Collaboration Compound for which Licensee has received approval to develop pursuant, all human and animal disorders and diseases treated by modulation of a Collaboration Target by such Collaboration Compound.

Licensor Field shall mean, with respect to each Collaboration Compound, all human and animal disorders and diseases treated by modulation of a Collaboration Target by such Collaboration Compound.

The primary objective of the alliance is to identify active molecules and bring them forward to clinical proof of concept, yielding novel candidates for drug development in various therapeutic areas.

License Grant

Licensor hereby grants to the Swedish Licensee and its Affiliates the following licenses:

     (i)  a worldwide, royalty-bearing, non-exclusive license, without the right to grant sublicenses, under the Licensor Patent Rights and other rights in the Licensor Technology, to develop, make, use, sell, import and distribute Licensed Products and to develop and provide Licensed Services in the field of Chromatographic Bioseparations;

     (ii) a worldwide, royalty-bearing, non-exclusive license under the Licensor Patent Rights and other rights in the Licensor Technology (i) to have a third party manufacture bulk quantities of Licensor Compounds for incorporation into Media Products and (ii) to have a third party manufacture Media Products; and

    (iii) a worldwide, royalty-bearing, exclusive license, without the right to grant sublicenses, under the Licensor Patent Rights and other rights in the Licensor Technology to use Licensor Compounds to develop Licensed Products, provide Licensed Services, and sell Licensor Compounds that are incorporated into Media Products; provided, however, that Licensor expressly excludes from this license grant and reserves to itself all rights in and to Licensor Compounds under the Licensor Patent Rights and other rights in Licensor Technology for its own internal programs for applications outside the field of Chromatographic Bioseparations, including without limitation pharmaceutical applications, without payment to Licensee.

License Property

Licensor Core Technology means Technology developed under one of the Prior Agreements that principally consists of (i) chemical synthesis of ligands, (ii) chemical compositions of ligands, including without limitation Licensor Compounds, (iii) combinatorial libraries of chemical compounds, and (iv) chemi-informatics.

Licensed Product means any product (i) which incorporates an Licensor Compound; or (ii) which, absent the licenses granted to Licensee hereunder, the manufacture, use or sale of such product would infringe one or more Valid Claims of the Licensor Patent Rights or the Joint Patent Rights; or (iii) which is developed, manufactured or used through use of the Licensor Technology or the Joint Technology.

Media Product means a Licensed Product that is chromatography media (e.g., a ligand covalently linked to media such as Sepharose).

Chromatographic Bioseparations means a method to purify or isolate a particular Biomolecule from a mixture of Biomolecules by means of a differential or selective non-covalent interaction of the particular Biomolecule in a mobile phase with a stationary phase consisting of a small organic molecule ligand that is covalently attached to a particulate solid support (i.e., a chromatographic resin).

Patent Rights means any claims covering Licensee Technology, Licensor Technology, or Joint Technology in United States or foreign patent applications, together with any and all patents that have issued or in the future issue therefrom, and all related divisionals, continuations, continuations-in-part (to the extent directed to the same subject matter), reissues, renewals, extensions or additions and foreign counterparts thereof.  Licensor Patent Rights means Patent Rights that are either (i) assigned solely to Licensor, (ii) assigned jointly to Licensor and a party other than APB, or (iii) licensed to or otherwise controlled by Licensor, in each case to the extent that Licensor has the ability to license or sublicense the rights required under this Agreement without payment to a third party. Licensee Patent Rights means Patent Rights that are either (i) assigned solely to Licensee, (ii) assigned jointly to Licensee and a party other than Licesor, or (iii) licensed to or otherwise controlled by Licensee, in each case to the extent that Licensee has the ability to license or sublicense the rights required under this Agreement without payment to a third party. Joint Patent Rights means Patent Rights assigned to both Licensor and Licensee as joint owners. Joint Patent Rights will include (i) Patent Rights claiming Joint Technology and (ii) Patent Rights claiming both Licensor Technology and Licensee Technology in a single filing. Collaboration Patent Rights means claims in Patent Rights that cover Collaboration Technology.

Licensor Compound means a small organic chemical molecule transferred by Licensor to Licensee pursuant to the Technology Transfer Plan.

Biomolecules means polypeptides, proteins, oligonucleotides, polynucleotides, oligosaccharides, polysaccharides or any combination of such molecules, whether produced by natural means or by organic synthesis on solid support or in solution.

Field of Use

This agreement pertains to the drug industry.

License Grant

Licensor, a University, hereby grants to Company and its affiliates for the term (a) a royalty-bearing license under the Patent Rights to develop, make, have made, use, sell, offer to sell, lease, and import Licensed Products in the field in the territory and to develop and perform Licensed Processes in the field in the territory;  (b) a royalty-bearing license to use the tangible property to develop, make, have made, use, sell, offer to sell, lease and import Licensed Products in the field in the territory and to develop and perform Licensed Processes in the field in the territory.

License Property

Licensed Product shall mean any product or part thereof that: (i)  absent the license granted hereunder, would infringe one or more valid claims of the Patent Rights; or  (ii) is manufactured by using a Licensed Process or that, when used, practices a Licensed Process.

Patent Rights shall mean: (a) the United States and international patents listed.
US Patent Application #10/108,195 titled Methods and Products related to FGF Dimerization
(b) the United States and international patent applications and/or provisional applications listed and the resulting patents;  (c) any patent applications resulting from the provisional applications listed, and any divisionals, continuations, continuation-in-part applications, and continued prosecution applications (and their relevant international equivalents) of the patent applications listed and of such patent applications that result from the provisional applications listed, to the extent the claims are directed to subject matter specifically described in the patent applications listed, and the resulting patents;  (d) any patents resulting from reissues, reexaminations, or extensions (and their relevant international equivalents) of the patents described in (a), (b), and (c) above; and (e) international (non-United States) patent applications and provisional applications filed after the effective date and the relevant international equivalents to divisionals, continuations, continuation-in-part applications and continued prosecution applications of the patent applications to the extent the claims are directed to subject matter specifically described in the patents or patent applications referred to in (a), (b), (c), and (d) above, and the resulting patents.

Licensed Process shall mean any process that, absent the license granted hereunder, would infringe one or more valid claims of the Patent Rights or which uses a Licensed Product.

United States Patents and Applications
M.I.T. Case No. 9265
'A Novel Fibroblast Growth Factor Dimer'

International (non-U.S.) Patents and Applications
M.I.T. Case No. 9265
'A Novel Fibroblast Growth Factor Dimer'

WO Patent Application Serial No US02/09517, Filed on March 27, 2002
Entitled: METHODS AND PRODUCTS RELATED TO FGF DIMERIZATION

Field of Use

Field shall mean human therapeutics for the treatment of neurological disorders and conditions, which shall include disorders and conditions pertaining to the central nervous, peripheral nervous, autonomic nervous, and neuromuscular systems.

patents pertain to a novel molecule for treatment of neurological disorders, including stroke.

License Grant

Licensee hereby grants to Licensor a worldwide, non-exclusive license under the Research Program Technology and Licensor Inhibition Mode Technology solely to perform its obligations under the Research Program as specifically provided in the Research Plan.

Licensor hereby grants to Licensee and its Affiliates a worldwide, non-exclusive license under the Licensor Core Technology (and any improvements thereto) to research, develop, make, have made, use, import, offer for sale, sell, have sold or otherwise exploit compounds that inhibit the Target (including but not limited to Program Compounds) and/or Products in the Territory.

Licensor hereby grants to Licensee and its Affiliates a worldwide, non-exclusive license under the Licensor Background Technology to research, develop, make, have made, use, import, offer for sale, sell, have sold or otherwise exploit compounds that inhibit the Target (including but not limited to Program Compounds) and/or Products in the Territory.

License Property

Research Program means the activities undertaken by or under authority of Licensee, which may include input from Licensor and the Licensor Principal Consultant, to discover and develop Program Compounds as set forth and in the Research Plan.

Research Program Technology means Research Program Know-How and Research Program Patents.
Research Program Patents mean Licensee Research Program Patents, Licensor Research Program Patents, and Joint Research Program Patents.

Licensor Inhibition Mode Technology means Licensor Inhibition Mode Patents and Licensor Inhibition Mode Know-How.

Patents within the Licensor Core Technology.
U.S. Patent No. 6,344,330 – Pharmacophore Recombination For the Identification of Small Molecule Drug Lead Compounds
U.S. Patent No. 6,335,155 – Methods for rapidly identifying small organic molecule ligands for binding to biological target molecules

Licensor Core Technology mean all patents, patent applications, invention disclosures, certificates of invention and applications for certificates of invention, owned or Controlled by Licensor or its Affiliates as of the Agreement’s Effective Date and/or during the term of the Agreement, and all information, materials and other subject matter, and improvements thereof, relating to (i) mutants or the use thereof in screening, (ii) the use of novel protein engineering techniques and their application in drug discovery, (iii) target-directed fragment discovery and maturation to produce drug leads, including monophores, extenders and fragments, and monophore, extender and fragment libraries for such purposes, (iv) covalent tethering and techniques related thereto (e.g., NMR, X-ray, mass spec. AUC, Biacore) and its use to discover fragments and test binding hypotheses of fragments and leads, or (v) dynamic and other combinatorial chemistries related to proteins, as well as any divisions, continuations, continuations-in-part, reissues, reexaminations, extensions, supplementary protection certificates, and other governmental actions which extend any of the patent applications, patents, invention disclosures, certificates of invention or certificates of invention applications above, and all foreign counterparts to any of the foregoing.  Notwithstanding the foregoing, Licensor Core Technology shall exclude all Licensor Inhibition Mode Technology and Research Program Technology.

Licensor Background Technology means all patents, patent applications, invention disclosures, certificates of invention and applications for certificates of invention, Controlled by Licensor or its Affiliates as of the Effective Date and/or during the term of the Agreement, that (i) are necessary or useful to Licensee in the research, development, or commercialization of compounds that inhibit the Target (including but not limited to Program Compounds and Products), and (ii) are not Licensor Inhibition Mode Patents, Research Program Patents or within the Licensor Core Technology; as well as any divisions, continuations, continuations-in-part, reissues, reexaminations, extensions, supplementary protection certificates, and other governmental actions which extend any of the patent applications, patents, invention disclosures, certificates of invention or certificates of invention applications above, and all foreign counterparts to any of the foregoing.

Field of Use

Research collaboration agreement relates to discover novel oral drugs for the treatment of viral infections.

License Grant

The parties wish to collaborate in a chemical lead and drug discovery program.  This agreement has an exclusive period.  Licensee has a non-exclusive right to use Licensors Technology as necessary to conduct activities under the Research Program.  Additionally, Licensor grants an exclusive, worldwide license, with the right to sublicense to use such Licensor Technology as is necessary to make, have made, use, have used, sell, have sold, import and export Active Compounds, Development Compounds and/or Products in the Territory.

License Property

Licensor has developed, licensed and/or owns certain drug discovery technology and intellectual property rights, including chemical library design software, multi-parallel synthesis and purification methods, chemical libraries suitable for high throughput biological screening assays and medicinal chemistry (collectively, 'CombiChem Technology').

Licensee desires to utilize CombiChem Technology for its drug discovery activities under Licensee know-how concerning the identification and characterization of novel small molecule inhibitors for development as therapeutics for treatment of diseases in humans.

Licensee and its Affiliates have developed and own certain drug discovery and intellectual property rights, including certain assays, methods and know how regarding the Initial Target, among other things (collectively 'ICOS Technology').

The Product means any product containing an Active Compound or Development Compound with such compound as the active ingredient or one of the active ingredients, which is the subject of one or more claims under a Collaboration Patent and which is granted regulatory approval by the governing health regulatory authority of the applicable country for marketing in the Field.

The Product means any product containing an Active Compound or Development Compound with such compound as the active ingredient or one of the active ingredients, which is the subject of one or more claims under a Collaboration Patent and which is granted regulatory approval by the governing health regulatory authority of the applicable country for marketing in the Field.

Field of Use

The Field means all therapeutic indications in humans for any Target against which a Collaboration Compound, Active Compound, Development Compound or Products may be directed.

License Grant

The parties agree to collaborate with each other relating to the discovery and optimization of compounds for use in the Field with respect to certain biological targets within the Field.

Screening License – Licensor hereby grants to Licensee a nonexclusive, worldwide, royalty-free license (without the right to sublicense) under the Licensor Patent Rights and other rights in the Licensor Technology to screen Licensor Compounds delivered under the collaboration against Anti-Infective Targets and Anti-Fungal Targets in the Field, but only during the Screening Phase.

Develop and Commercialize License – Licensor hereby grants to Licensee and its Affiliates the following licenses:

         (i)      an exclusive, worldwide license (with the right to sublicense) under the Licensor Patent Rights and other rights in Licensor Technology to conduct development of Licensed Compounds in the Field, including the right to develop Analog Compounds based on Licensed Compounds.;
         (ii)     an exclusive, worldwide license (with the right to sublicense) under the Licensor Patent Rights and other rights in Licensor Technology to make, have made, use, have used, sell, and import Licensed Compounds and certain identified Analog Compounds, as described below, in the Field; and
         (iii)    a non-exclusive, worldwide license (with the right to sublicense) under the Licensor Patent Rights and other rights in Licensor Technology to use chemical synthesis methods within the Licensor Patent Rights and Licensor Technology to make and have made Royalty-Bearing Products.

License Property

Licensor Compound means a chemical compound owned or controlled by Licensor provided by Licensor to Licensee pursuant to this Agreement as part of a screening library, including without limitation the compounds provided in the Compass Array Library and Mapping Array Libraries.

Licensed Compound means any Available Compound or Inactive Licensor Compound that has been designated as a Licensed Compound as provided.

Licensed Compound Se means a set of one or more Licensed Compounds from the same Mapping Array Library that have biological activity for the same Target, as well as any Licensor Analog Compounds of such Licensed Compounds that are synthesized by a party in the course of optimizing those Licensed Compounds.

Patent Rights means any United States and foreign patent application and any divisional, continuation, or continuation-in-part of such patent application (to the extent the claims are directed to subject matter specifically described therein), as well as any patent issued thereon and any reissue or reexamination of such patent, and any foreign counterparts to such patents and patent applications.  Licensor Patent Rights means Patent Rights that are either (i) assigned solely to Licensor, (ii) assigned jointly to Licensor and a party other than Licensee, or (iii) licensed to or otherwise controlled by Licensor, in each case to the extent that Licensor has the ability to license or sublicense the rights required under this Agreement without payment to a third party.  Licensee Patent Rights means Patent Rights that are either (i) assigned solely to Licensee (including Patent Rights in Analog Compounds pursuant to this agreement assigned jointly to Licensee and a party other than Licensor, or (iii) licensed to or otherwise controlled by Licensee, in each case to the extent that Licensee has the ability to license or sublicense the rights required under this Agreement without payment to a third party. Joint Patent Rights means Patent Rights assigned to both Licensor and Licensee as joint owners. Joint Patent Rights will include (i) Patent Rights claiming Joint Technology and (ii) Patent Rights claiming both Licensor Technology and Licensee Technology in a single filing, but will not include Patent Rights in Analog Compounds assigned by Licensor to Licensee pursuant to this agreement.

Technology means any proprietary development, information, know-how, idea, design, concept, technique, process, invention, compound, discovery, improvement whether or not patentable or copyrightable.  

Licensor Technology means Technology that is either (i) assigned solely to Licensor, (ii) assigned jointly to Licensor and a party other than Licensee, or (iii) licensed to or otherwise controlled by Licensor, in each case to the extent that Licensor has the ability to license or sublicense the rights required under this Agreement without payment to a third party. Licensee Technology means Technology that is either (i) assigned solely to Licensee, (ii) assigned jointly to Licensee and a party other than Licensor, or (iii) licensed to or otherwise controlled by Licensee, in each case to the extent that Licensee has the ability to license or sublicense the rights required under this Agreement without payment to a third party. Joint Technology means Technology that is developed or discovered jointly by one or more employees or consultants of Licensee and one or more employees or consultants of Licensor in connection with this Agreement.

Field of Use

Field means all applications in the life sciences relating to human therapeutic products for the treatment, prophylaxis or diagnosis of infectious diseases caused by bacterial organisms.