Royalty Report: Drugs, Disease, Alzheimer’s disease – Collection: 274611

License Grant

Licensor hereby grants to Licensee an exclusive (even as to Licensor), royalty-bearing license, with the right to grant sublicenses, under the Patent Rights, the Licensor Know-How and PHS Patent Rights to use, store, import, export, transport, Manufacture or have Manufactured Licensed Compounds in the Territory in the Field and to Develop, Manufacture and Commercialize Licensed Products in the Territory in the Field during the Term.

Licensor hereby also grants to Licensee an exclusive (even as to Licensor), royalty-free right and license in the Territory, with the right to grant sublicenses as part of any sublicense of rights granted with respect to Licensed Products, to use the Licensed Trademarks in connection with using, selling and offering for sale Licensed Products in the Territory in the Field during the Term.

License Property

Patent Rights means
(a)  Patent applications (including provisional patent applications and PCT patent applications) or patents as follows
(i)   U.S. Patent Application Serial No./U.S. Provisional Patent Application Serial No. 60/052,087(provisional), HHS Reference number E-247-1997/0, filed July 9, 1997, entitled Highly Selective Butyrylcholinestcrase Inhibitors for the Treatment and Diagnosis of Alzheimer’s Disease and Dementias, and

(ii)  U.S. Patent Application Serial No./U.S. Provisional Patent Application Serial No, 60/245,329 (provisional), HHS Reference number E-141-2000/0, filed November 2, 2000, entitled Agents useful for reducing amyloid precursor protein and treating dementia and methods of use thereof,  and any U.S. and foreign patent application(s) claiming the benefit of priority thereof including all divisions and continuations of these applications, all patents issuing from these applications, divisions, and continuations, and any reissues, reexaminations, and extensions of all these patents to the extent that at least one Inventor from the Institution is an Inventor thereon.

Field of Use

This agreement pertains to the drug industry relating to Alzheimers disease and dementias.  Field shall mean all fields other than the Excluded Field and Research Field.  Research Field shall mean internal research and not for purposes of commercial manufacture or distribution in lieu of purchase.

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

College hereby grants to Licensee an exclusive, worldwide, sublicensable license under the Patent Rights to make, have made, use, market, sell, offer to sell, lease and import Licensed Products in the Field.

License Property

Technologies are biomarkers that directly impact the diagnosis of neurodegenerative diseases.   Licensee , in collaboration with College, have applied the latest proteomic techniques to the differential diagnosis of neurodegenerative diseases utilizing blood serum.

The term Patent Rights shall mean United States Patent Application Serial No. TBA, entitled 'Biomarkers for Neurodegenerative Disease,' filed TBA, which was developed by the Inventors, the inventions described and claimed therein, and all other pending United States patent applications or parts thereof and any United States patent which issues from any such pending applications and any and all divisions, reissues, re-examinations, renewals, continuations, continuations-in-part to the extent the claims are directed to subject matter specifically described in the aforementioned patent application and are dominated by the claims of the existing Patent Rights, and extensions thereof, and all other counterpart, pending or issued patents in all other countries.

Re College OTA # 04-107 Entitled 'Serum Proteomic Methods and Biomarkers for Diagnosis of Neurodegenerative Disease and Differential Diagnosis of Alzheimers, Parkinsons Lou Gehrigs (ALS) Diseases, and other Motor Neuron and Neurological Disorders'

The term Licensed Product(s) shall mean any product, process or service that incorporates, utilizes or is made with the use of the Patent Rights.

Field of Use

This agreement pertains to the drug industry relating to Diagnosis of Neurodegenerative Disease and Differential Diagnosis of Alzheimers, Parkinsons Lou Gehrigs (ALS) Diseases, and other Motor Neuron and Neurological Disorders in the Field that shall mean all fields.

License Grant

Licensor grants to the Swiss Licensee the sole and exclusive license, including the right to grant sublicenses, under the Licensor Patents and to use the Licensor Know-How, to make, use, offer for sale, sell and import  Products in the Territory for use in the Field.

License Property

Patent Rights
U.S. #1
(a) First US provisional filed January 22, 2001 (60/262,651).
(b) Second US provisional filed February 8, 2001 (60/267,196).
(c) Third US provisional filed July 19, 2001 (60/306,140)
(d) A regular US patent application (10/051,309) was filed on January 22, 2002, claiming priority to the above-mentioned three US provisional applications.

U.S. #2
(a) First US provisional filed February 8, 2001 (60/267,195)
(b) Second US provisional filed January 7, 2002 (60/344,824).
(c) A regular US patent application (10/067,996) was filed on February 8, 2002, claiming priority to the above-mentioned two US provisional applications.
(d) Possible Second US family to be filed; awaiting analysis from MPC.

U.S.#3
A first US provisional application (Memory 3 VI) was filed October 16, 2001 (60/329,314).

U.S. #4
(a) First US provisional filed November 15, 2001 (60/331,422)
(b) Second US provisional filed January 23, 2002 (60/349,985).

U.S. #5
(a) U.S. provisional application filed June 25, 1999 (60/141,196
(b) A regular U.S. Patent Application was filed June 23, 2000 (09/602,735), claiming priority to the above-mentioned provisional application.

Licensor Compound means any PDE4 inhibitor for which Licensor either prior to the Effective Date or during the Agreement Term has rights, whether by reason of its own conception of such inhibitor, or under agreement with a Third Party.

Collaboration Compound means any PDE4 inhibitor that (i) either or both Parties or its Affiliates conceives in the conduct of the Research Collaboration, or (ii) the JLT otherwise agrees shall constitute a Collaboration Compound pursuant to the Research Workplan.

'Neurological Indication' means prophylaxis or treatment of Alzheimers' disease, prophylaxis or treatment of mild cognitive impairment ('MCI') or treatment of vascular dementia.

'Non-Memory Compound' means a PDE4 inhibitor, other than a Memory Compound or a Collaboration Compound, with respect to which the initial IND for the inhibitor is for a Neurological Indication or Psychiatric Indication.

'Psychiatric Indication' means depression, anxiety or mixed anxiety/depression.

Field of Use

MEM 1414 is a PDE4 inhibitor and our second drug candidate for the treatment of Alzheimer's disease and potentially for MCI. PDE4 inhibitors are designed to inhibit the activity of PDE4, the enzyme which breaks down neuronal cAMP.

MEM 1917 is a PDE4 inhibitor that we are developing for the treatment of depression.

License Grant

The Licensor, government public health organization, hereby grants and Licensee accepts a nonexclusive license under the Licensed Patent Rights in the Licensed Territory to make and have made, to use and have used, to sell and have sold, to offer to sell, and to import or have imported any Licensed Products in the Licensed Fields of Use and to practice and have practiced any Licensed Processes in the Licensed Fields of Use.

License Property

Pursuant to the License Agreement, licensor granted to the Company a non-exclusive worldwide right and license to develop and manufacture certain proprietary autologous tumor infiltrating lymphocyte adoptive cell therapy products for the treatment of metastatic melanoma, ovarian cancer, breast cancer, and colorectal cancer.

The intellectual property subject to the License Agreement is covered by 43 patents and patent applications, consisting of nine issued United States patents, 13 pending patent applications in the United States, and 21 foreign patents and patent applications as counterparts of U.S. patents/patent applications. The Company also has limited rights to sublicense the intellectual property subject to the License Agreement. The License Agreement will expire on a product-by-product basis upon the expiration of the subject patent rights.

Tumor infiltrating lymphocytes (TIL) are a subset of T lymphocytes (T cells) that migrate and are located within a tumor site. TIL isolated from these tumor sites exhibit natural anti-tumor activity without genetic modifications. For the avoidance of doubt, cell therapy products involving genetically modified tumor infiltrating lymphocytes are excluded from Licensed Fields of Use.

Patent(s) or Patent Application(s)
1.
United States Patent No. 5,399,346 issued March 21, 1995 [HHS Ref. No. E-189-1989/3-US-02]

2.
United States Patent No. RE39788 issued August 21, 2007 [HHS Ref. No. E-189-1989/3-US-04]

3.
United States Patent No. 5,830,755 issued November 3, 1998 [HHS Ref. No. E-093-1995/0-US-01]

4.
Australian Patent No. 709122 issued December 2, 1999 [HHS Ref. No. E-093-1995/0-AU-03]

5.
United States Patent No. 6,734,014 issued May 11, 2004 [HHS Ref. No. E-040-1996/0-US-07]

6.
United States Patent No. 7,378,277 issued May 27, 2008 [HHS Ref. No. E-040-1996/0-US-08]

7.
United States Patent No. 7,723,111 issued May 25, 2010 [HHS Ref. No. E-323-2000/0-US-01]

8.
European Patent No. 1379670 issued August 6, 2008 [HHS Ref. No. E-323-2000/0-EP-03]

9.
United States Patent Application No. 12/715,829 filed March 2, 2010 [HHS Ref. No. E-323-2000/0-US-09]

10.
United States Patent Application No. 10/526,697 filed May 5, 2005 [HHS Ref. No. E-275-2002/1-US-02]

11.
European Patent Application No. 3794636.5 filed April 4, 2005 [HHS Ref. No. E-275-2002/1-EP-03]

12.
Canadian Patent Application No. 2,497,552 filed March 2, 2005 [HHS Ref. No. E-275-2002/1-CA-04]

13.
Australian Patent Application No. 2003265948 filed September 5, 2003 [HHS Ref. No. E-275-2002/1-AU-05]

14.
United States Patent Application No. 13/178,644 filed July 8, 2011 [HHS Ref. No. E-275-2002/1-US-06]

15.
United States Patent No. 7,381,405 issued June 3, 2008 [HHS Ref. No. E-297-2002/0-US-02]

16.
Canadian Patent Application No. 2,501,087 filed April 1, 2005 [HHS Ref. No. E-297-2002/0-CA-03]

17.
Australian Patent No. 2002353822 issued February 23, 2009 [HHS Ref. No. E-297-2002/0-AU-04]

18.
United States Patent No. 7,915,036 issued March 29, 2011 [HHS Ref. No. E-106-2004/0-US-02]

19.
United States Patent Application No. 11/576,621 filed April 4, 2007 [HHS Ref. No. E-340-2004/2-US-02]

20.
Canadian Patent Application No. 2,590,401 filed April 4, 2007 [HHS Ref. No. E-340-2004/2-CA-03]

21.
Australian Patent No. 2005336093 issued June 9, 2011 [HHS Ref. No. E-340-2004/2-AU-04]

22.
European Patent Application No. 05858553.0 filed April 5, 2007 [HHS Ref. No. E-340-2004/2-EP-05]

23.
Australian Patent Application No. 2007248019 filed May 3, 2007 [HHS Ref. No. E-086-2006/0-AU-03]

24.
Canadian Patent Application No. 2,651,174 filed November 3, 2008 [HHS Ref. No. E-086-2006/0-CA-04]

25.
European Patent Application No. 07797329 filed May 3, 2007 [HHS Ref. No. E-086-2006/0-EP-05]

26.
United States Patent Application No. 12/298,927 filed May 3, 2007 [HHS Ref. No. E-086-2006/0-US-06]

27.
United States Patent No. 7,820,174 issued October 26, 2010 [HHS Ref. No. E-106-2006/3-US-01]

28.
United States Patent Application No. 12/870,941 filed August 30, 2010 [HHS Ref. No. E-106-2006/3-US-03]

29.
Australian Patent Application No. 2009282886 filed August 20, 2009 [HHS Ref. No. E-106-2006/3-AU-04]

30.
Canadian Patent Application No. 2,734,838 filed August 20, 2009 [HHS Ref. No. E-106-2006/3-CA-05]

31.
European Patent Application No. 09791694.4 filed August 20, 2009 [HHS Ref. No. E-106-2006/3-EP-06]

32.
Australian Patent Application No. 2008206442 filed January 11, 2008 [HHS Ref. No. E-059-2007/2-AU-02]

33.
Canadian Patent Application No. 2,674,445 filed July 3, 2009 [HHS Ref. No. E-059-2007/2-CA-03]

34.
European Patent Application No. 08727582.2 filed January 11, 2008 [HHS Ref. No. E-059-2007/2-EP-04]

35.
United States Patent Application No. 12/522,321 filed July 7, 2009 [HHS Ref. No. E-059-2007/2-US-05]

36.
PCT Patent Application No. PCT/US2010/021909 filed January 25, 2010 [HHS Ref. No. E-043-2009/0-PCT-02]

37.
PCT Patent Application No. PCT/US2010/031988 filed April 22, 2010 [HHS Ref. No. E-170-2009/0-PCT-02]

38.
PCT Patent Application No. PCT/US2010/048701 filed September 14, 2010 [HHS Ref. No. E-205-2009/0-PCT-02]

39.
United States Patent Application No. 12/869,390 filed August 26, 2010 [HHS Ref. No. E-273-2009/0-US-02]

40.
United States Provisional Patent Application No. 61/405,668 filed October 22, 2010 [HHS Ref. No. E-236-2010/0-US-01]

41.
United States Provisional Patent Application No. 61/384,931 filed September 21, 2010 [HHS Ref. No. E-269-2010/0-US-01]

42.
United States Provisional Patent Application No. 61/466,200 filed March 22, 2011 [HHS Ref. No. E-114-2011/0-US-01]

43.
United States Provisional Patent Application No. 61/473,409 filed April 8, 2011 [HHS Ref. No. E-148-2011/0-US-01]

Field of Use

Licensed Fields of Use

(a) The use of the Licensed Patent Rights to develop and manufacture autologous tumor infiltrating lymphocyte adoptive cell therapy products for the treatment of metastatic melanoma.

(b) The use of the Licensed Patent Rights to develop and manufacture autologous tumor infiltrating lymphocyte adoptive cell therapy products for the treatment of ovarian cancer.

(c) The use of the Licensed Patent Rights to develop and manufacture autologous tumor infiltrating lymphocyte adoptive cell therapy products for the treatment of breast cancer.

(d) The use of the Licensed Patent Rights to develop and manufacture autologous tumor infiltrating lymphocyte adoptive cell therapy products for the treatment of colorectal cancer.

License Grant

Licensor hereby grants Licensees of the Netherlands and Ireland, an exclusive, even as to Licensor, license, with the right to grant sublicenses, under the Licensed Patents to research, develop, use, have used, make, have made, offer for sale, sell, have sold, import and export Bapineuzumab Products in the Field in the Territory.

Licensor hereby grants each Licensee a non-exclusive license, with the right to grant sublicenses, under the Licensed Patents to research, develop, use, have used, make, have made, offer for sale, sell, have sold, import and export Licensed Products other than Bapineuzumab Products in the Field in the Territory.

License Property

Licensed Products shall mean any therapeutic, prophylactic and/or diagnostic product, the composition, manufacture or use of which would, but for the licenses granted by Licensor to Licensees herein, infringe a Valid Claim of a Licensed Patent owned or otherwise Controlled by Licensor.

The patents relate to DNA Encoding Recombinant Antibody Molecules End Specific for Amyloid ß Peptide.

Aß Peptide shall mean P-amyloid protein which is the cleavage product of amyloid precursor protein, occurring predominantly as a (1-39) to (1-43) amino acid.

Field of Use

Field shall mean the treatment, prevention and/or diagnosis of diseases and/or conditions in humans, including but not limited to Alzheimers Disease  and Mild Cognitive Impairment.