Royalty Report: Drugs, Cancer, Disease – Collection: 273399

License Grant

Licensor hereby grants to the Dutch Licensee, and Licensee hereby accepts from Licensor, a sole and exclusive and royalty bearing license, with the right to sublicense, in the Territory, under the Technology Rights during the Term of this Agreement, to research, develop, make, have made, use, import, export, market and sell Products and to practice and have practiced Processes, without any limitations except for those limitations expressly set forth herein.

License Property

Core Business means the core business of Licensor i.e. antiviral and anticancer drug discovery, development, and commercialization.

Products mean any composition(s), compound(s), product(s), apparatus or Material(s) of which its research, development, manufacture, use, sale, supply or other disposition is covered by, incorporates or utilizes the Technology Rights and which could not be conceived, developed or reduced to practice but for the use of the Technology Rights.

Processes mean any process of which its research, development, manufacture, use, sale, supply, service testing or other disposition is covered by, incorporates or utilizes the Technology Rights.

Technology Rights means one or more of Materials, Know How and Patent Rights.

Patent Rights means (i) the Patents listed and (ii) any Patents based on any of the Patents listed, and (iii) any other Patents that would be infringed by or useful for the manufacture, use, sale, offer for sale or import of a Product or Process and that are owned by Licensor or any of its Affiliates, as of the Effective Date or at any time during the term of this Agreement and (iv) any Patents that would be infringed by or useful for the manufacture, use, sale, offer for sale or import of a Product or Process and that are licensed to Licensor as of the Effective Date or at any time during the term of this Agreement. Patents Rights will include any reissues, confirmations, renewals, extensions, counterparts, divisions, continuations, continuations-in-part, supplemental protection certificates or utility models relating to the patents or patent applications described or referred to herein. It is expressly understood that Patent Rights exclude Licensee Background Patents and Improvements.

Licensor’s patent application, now published as WO 02/33128 and entitled, “Simultaneous quantification of nucleic acids in diseased cells,” and all divisionals, continuations, continuations-in-part, reissues, substitutions, confirmations, updates, registrations, revalidations, reexaminations, renewals, extensions or the like of any such patents and patent applications, to the extent that they relate to the mitochondrial toxicity technology.

Know how means the information, inventions and data (including, but not limited to, formulae, procedures, processes, protocols, techniques and results of experimentation and testing) concerning the Technology Rights owned or licensed by Licensor or any of its Affiliates as of the Effective Date or at any time during the term of this Agreement and that are useful for the research and/or development and/or manufacture and/or use of the Product or Processes, excluding Patent Rights therein.

Material means any and all materials, compositions, products and biologicals owned or licensed by Licensor or any of its Affiliates as of the Effective Date or at any time during the term of this Agreement and that are useful for the research and/or development and/or manufacture and/or use of the Product or Process, and any and all intellectual property rights therein, excluding Patent Rights.

Field of Use

The license is to further develop and commercialize Licensor's (anticancer and antiviral drug discovery) mitochondrial DNA and RNA detection and toxicity technology.

License Grant

Licensor hereby grants to Licensee and its Affiliates a license under the Licensor Licensed IP to research, develop,  make, have made, use,  sell, offer for sale, import, and export the Products within the Asian Territories, within the Field.  The license granted herein is exclusive within the Asian Territories without any reservation of rights by Licensor, and will remain in effect until this Agreement is terminated in accordance.  For avoidance of doubt, the  foregoing license shall also include the right to practice the Licensor Licensed IP to manufacture Products anywhere in the world.

License Property

Clofarabine is a purine nucleoside antimetabolite which is FDA-approved for treating relapsed or refractory acute lymphoblastic leukaemia (ALL) in children after at least two other types of treatment have failed.

Product shall mean any product, service, test, or information, including Clofarabine, which, but for the license granted herein, would infringe one or more claims of a Licensor Patent or is discovered, developed, manufactured, approved, marketed or sold using Licensor Know-How or used with Licensor Know-How.

Licensor has rights in patents and technical information relating to the development and uses of 2-flouro-2-halo substituted purine nucleosides Clofarabine.

Patent shall mean (i) patent applications filed in any country within the Asian Territories; (ii) all divisional,  continuation (in whole or in part), reissues, substitute applications and extensions with respect to any of the applications described in (i); (iii) all issued or granted patents resulting from any of the applications described  above; and (iv) all issued or granted reissue, re-examination, renewal or extension patents, supplementary protection certificates, and confirmation or registration patents based on any of the patents described in (iii).

Intellectual Property shall mean all inventions, discoveries, know-how, methods, processes, data, information,  technology, research tools, compositions, tangible materials and formulas that are invented, discovered, developed or otherwise generated by or for either party or their respective Affiliates prior to or during the term of this Agreement, and all Intellectual Property Rights therein and thereto anywhere in the world.

Intellectual Property Rights shall mean any and all now known or hereafter existing:  (i) rights associated with works of authorship, including exclusive exploitation rights, copyrights, and moral rights; (ii) trademark and trade name rights and similar rights; (iii) trade secret rights; (iv) patents and industrial property rights; (v) other  proprietary rights in Intellectual Property of every kind and nature, whether arising by operation of law, by contract or license, or otherwise; and (vi) all registrations, applications, renewals, extensions, combinations,  divisions, or reissues of the foregoing, in each case in any jurisdiction throughout the Asian Territories.

Field of Use

Clofarabine has been shown to be effective in vitro and in vivo against hematologic malignancies and solid tumors, as well as potentially effective for various other therapeutic indications such as autoimmune diseases and transplantation immunity.

License Grant

Licensor and its Affiliates hereby grant to Licensee an exclusive, worldwide royalty-bearing license, with the right to grant sublicenses, under any Licensor Patent Rights and to use any Licensor Know-How to make, have made, use and sell Licensed Products containing Acolbifene in the Field in the Territory (including Canada). The foregoing licenses shall be exclusive even as to Licensor. Licensor shall remain solely responsible (at its own expense) for the filing, prosecution, maintenance, enforcement and defense of the Licensor Patent Rights covering Licensed Products containing Acolbifene in the Territory which activities shall be governed by the terms of the Agreement.  This become effective as of the date on which Licensor’s licenses to Acolbifene are terminated pursuant to this agreement.

The Parties have been collaborating in the development of a certain antiestrogen compound as a Licensed Compound under the terms of the Agreement.

Licensee now desires to assume sole responsibility for the continued development of such antiestrogen compound.

License Property

Acolbifene shall mean the specific antiestrogen compound known as acolbifene (also referred to by the parties as EM-652 or SCH 57068) and having the chemical structure.

Licensed products means any pharmaceutical products in dosage form which contain one or more Licensed Compounds, including without limitation, Licensed Combinations.

Licensed Compounds means (i) any compounds existing on the effective date of this Agreement which were conceived of as antiestrogen or antiandrogen compounds by or on behalf of Licensee and (ii) any additional novel or existing compounds which are conceived of as compounds in the Field by or on behalf of Licensee while carrying out research in the program as that term is defined.

Patent Rights means (i) all pending United States patent applications and issued patents relating to Licensed Compounds, including without limitation, the pending United States patent applications and issued patents listed, as of the effective date of this Agreement; (ii) all claims of any patent applications or issued patents filed or issued during or after the term of this Agreement to which Licensee have rights covering any compositions for, processes for or methods of use of any Licensed Compounds in the Field; (iii) all claims of any foreign counterpart patent applications and/or issued patents of (i) and (ii) and (iv) any reissues, extensions, substitutions, confirmations, registrations, revalidations, additions, continuations, continuations-in-part or divisions of or to any of the foregoing which are hereafter granted in the Territory.

Field of Use

Acolbifene is a nonsteroidal selective estrogen receptor modulator which, as of 2015, is in phase III clinical trials for the treatment of breast cancer.

License Grant

Licensor hereby grants to Licensee the exclusive worldwide right and license, with the right to sublicense on the terms and conditions set forth, in the Field of Use under the Licensor Patent(s) to make, have made, market, have marketed, use, import, offer for sale, sell and have sold Licensed Product (the License). The License granted hereunder shall be subject to any rights of the U.S. Government, its agencies or authorities under Public Law 96-517 and Public Law 98-620 which may be applicable. Notwithstanding the License granted herein, Licensor shall have the right, subject to Licensees consent, not to be unreasonably withheld, to make and have made Licensed Product(s) for itself and distribution to non-profit organizations for research purposes only, but not for any commercial or other purpose. Nothing in the foregoing sentence shall constitute a grant by Licensee or confer upon Licensor any rights to make or use the Biological Materials.

License Property

Licensor Patent(s) shall mean those United States or foreign patents and/or applications listed hereto as amended and modified from time to time by Licensor is hereby incorporated herein by reference, the inventions disclosed therein, and any divisions, reissues, continuations, continuations-in-part or extensions relating or corresponding thereto, and disclosed in foreign patent application corresponding thereto.

US Application Serial No. 09/546,733  

Biological Materials shall mean the vascular endothelial growth factor-2 gene referred to as “VEGF-2” and proprietary naked plasmid DNA encoding for VEGF-2, including the plasmid DNA sometimes referred to as “phVEGF-2” or “pVGI.1(VEGF2)”, together with any Progeny, Derivatives and Modifications therefrom.

Initial Product shall mean a product for the treatment of peripheral diabetic neuropathy that incorporates Biological Materials.

Licensed Product shall mean any product or method in the Field of Use covered by one or more Valid Claims.

Intellectual Property shall mean all intellectual property rights, including (i) United States and other national patents and patent applications, divisions, continuations, continuations-in-part, reissues, renewals, reexaminations, requests for continued examination, supplemental registrations or extensions thereof, (ii) trademarks, whether registered or unregistered and applications for registration thereof, (iii) copyrights, whether registered or unregistered and applications for registration thereof, and (iv) trade secrets, know-how, technology, proprietary information and data, including formulae, procedures, plans, methods, processes, specifications, models, protocols, techniques and experimentation, and design, testing and manufacturing data, and products, compositions, and procedures.

Field of Use

Field of Use shall mean the use of Biological Materials for treating a peripheral neuropathy, including, without limitation, diabetic neuropathy.

Peripheral neuropathy refers to the conditions that result when nerves that carry messages to and from the brain and spinal cord from and to the rest of the body are damaged or diseased. The peripheral nerves make up an intricate network that connects the brain and spinal cord to the muscles, skin, and internal organs.

License Grant

Licensor hereby grants to Licensee, and Licensee hereby accepts, an exclusive, irrevocable, perpetual, license, with the right to grant sublicenses, under the Assigned Technology to Develop, Manufacture, Commercialize, make, have made, use, have used, offer for sale, sell, have sold and import Covered Products in the Licensee Field in the Territory.

Assignment; License-Back.  Licensee hereby assigns, transfers, conveys and delivers to Licensor, and Licensor hereby accepts all and every right, title and interest of Licensee in and to the Licensee Patent Rights listed, together with all ancillary rights thereto, including the right to sue for damages by reason of past infringement of any such rights; and the Licensee Intellectual Property owned by Licensee that relates directly to such Licensee Patent Rights (collectively, the Assigned Technology).

License Property

Intellectual property relates to superentolimod product candidate and entolimod vaccine product candidate.

Covered Product(s) means any product the Development, Manufacture, use or sale of which is covered by the Licensee Patent Rights or makes use of any Licensee Intellectual Property.

Patent Rights means any and all (a) issued patents and (b) pending patent applications, including all provisional applications, substitutions, divisionals, continuations, continuations-in-part, renewals, and all letters of patent granted with respect to any of the foregoing, (c) patents of addition, restorations, reissues, extensions, supplementary protection certificates, registration or confirmation patents, patents resulting from post-grant proceedings, re-examinations; (d) inventor’s certificates; and (e) other forms of government issued rights substantially similar to any of foregoing, in each any country in the Territory.

Licensee Intellectual Property means Know-How that is Controlled by Licensee or its Affiliates during the term of this Agreement and that is reasonably necessary or useful for or directly related to the Development, Manufacture or Commercialization of the Covered Products. The term Licensee Intellectual Property does not include (a) any Know-How, which is, as of the Effective Date or later becomes, generally available to the public, excluding Licensee Confidential Information or Know-How Controlled by Licensee or its Affiliates that is publicly disclosed by a Third Party without the consent of Licensee, and Know-How included in Licensee Patent Rights

Licensee Patent Rights means those Patent Rights that Cover Licensee Intellectual Property and are Controlled by Licensee or its Affiliates at any time during the term of this Agreement.  Licensee Patent Rights as of the Effective Date are listed which shall be updated in writing from time to time, at least annually, during the term of this Agreement.

Title: Flagellin compositions
Jurisdiction: USA
Application Detials: 15/329,870, Filing Date: 07-29-2015, Priority Date: 07-30-2014
Patent Details: N/A
Status: Pending

Title:  Flagellin compositions and uses including effective vaccination
Jurisdiction:  USA
Application Details:  15/500,133, Filing Date: 07-30-2015, Priority Date: 07-30-2014
Patent Details:  N/A
Status:  Pending

Field of Use

Licensor Field means the prevention or treatment of any disease or condition in humans that is caused by the recent exposure to ionizing radiation including mitigation and prevention of Acute Radiation Syndrome (as defined by the Center for Disease Control and Prevention) and concurrent radiation treatment of humans or animals diagnosed with oncological conditions at the time of treatment to treat this condition. For the avoidance of doubt, it is understood and agreed that the Licensee Field shall not include (i) prevention or treatment of sickness, diseases, disorders, and frailties caused by prior exposure to radiation treatment of cancer, and (ii) prevention or treatment of any disease, disorder or frailty in humans that are “cancer survivors” (i.e., persons who has completed initial cancer management and has no apparent evidence of active disease).

License Grant

Licensor hereby grants to Japanese Licensee an exclusive, royalty-bearing license under the Licensor Technology and Licensors interest in the Joint Technology, to make, have made use, sell and otherwise commercialize Collaboration Products for all uses in the Field in the Territory.

License Property

Licensor Technology shall mean Licensor Patent Rights, Licensor Know-How and Gene Therapy Technology.

Licensor Patent Rights shall mean (i) all patents and patent applications, or conceived and reduced to practice by Licensor alone, or Licensor and/or its agents (including researchers at DFCI) in connection with the Research Program during the Research Program Term, 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 or revalidations of any of the foregoing, in each case, which is owned or controlled, in whole or part, by license, assignment or otherwise by Licensor, to the extent Licensor has the right to license or sublicense, and subject to any limitations of such license or sublicense. For the avoidance of doubt, the Licensor Patent Rights shall not include Licensor Know-How.

Licensor know-how shall mean confidential information and materials, including, but not limited to, pharmaceutical, chemical, biological and biochemical products, technical and non-technical data, and information relating to the results of tests.

U.S. Patent Application Serial No. 08/745,375 entitled 'Methods for Promoting Wound Healing and Transplant-Assoctaed Vasculopathy'

U.S. Patent Application Serial No. 08/816,346 entitled 'Chimeric Adenoviral Coat Protein and Methods of Using Same'

U.S. Patent Application Serial No. 08/854,601 entitled 'Multigene HSV Vectors for Cancer Immunotherapy'

U.S. Patent Application Serial No. 08/861,773 entitled 'An Improved Method for the Production of Non-Group C Adenoviral Vectors'

U.S. Patent Application Serial No. 60/047,849 entitled 'Alternately Targeted Adenovirus'

U.S. Patent Application Serial No. 60/049,072 entitled 'Phage Vector and Methods of Use'

U.S. Patent Application Serial No. 60/054,329 entitled.'Targeted HSV Vectors'

Field of Use

Field shall mean Gene Therapy for the treatment of human cancer excluding any use of the vascular endothelial growth factor (VEGF) gene or tumor necrosis factor alpha (TNF) gene or, in each case, any portion or derivative thereof.

The collaboration involves the development of Ad.CD for immunotherapy of cancer based on the delivery of tumor antigen genes. Ad.CD, an adenovirus vector containing the cytosine deaminase ('CD') gene, is designed to convert a nontoxic precursor drug into fluorouracil to effect tumor destruction, either alone or in combination with radiation therapy.