Royalty Report: Drugs, Cancer, Biotechnology – Collection: 274909

License Grant

Licensor grants to the Licensee of the United Kingdom, and its Affiliates, an exclusive license under Licensor Background Patent Rights, Licensor Future Patent Rights, Licensor Alliance IP Rights, Licensor’s interest in Joint Alliance IP Rights, and Licensor Know-How to develop, have developed, make, have made, use, sell, have sold, and import Cellular Assay Products throughout the Territory in the Cellular Assay Products Field.

Licensor grants
—  a non-exclusive, irrevocable license under Licensor’s Alliance IP Rights, Licensor’s interest in Joint Alliance IP Rights and Licensor Know-How to develop, make, use, sell, have sold, and import products throughout the relevant territories in the Limited Field and,
—  a non-exclusive, irrevocable license under Licensor’s Alliance IP Rights and Licensor’s interest in Joint Alliance IP Rights to develop, have developed, make, have made, use, sell, have sold, and import products throughout the relevant territories in the Limited Field.

Licensor grants an option to negotiate in good faith and on commercially reasonable terms
—  an exclusive, payable license, with the right to sublicense for the Limited Field under Licensor Alliance IP Rights, and Licensor’s interest in Joint Alliance IP Rights, and;
—  a sub-license for the Cellular Assay Products Field in the Territory.

License Property

The patents and know-how are for certain intellectual property rights related to the propagation and differentiation of human embryonic derived cells.

Field of Use

The Cellular Assay Products Field shall mean the use of Cellular Assay Products for in vitro assay applications, including but not limited to drug discovery and development, drug monitoring, drug toxicology testing, and consumer products testing, but excluding the use of any Cellular Assay Product in any therapeutic or diagnostic application.

The Licensor Field shall mean therapies that comprise, or are derived from, or developed or manufactured using, human embryonic stem cells.

The Limited Field shall mean products or services that contain cells that comprise, or are derived from, or manufactured using, human embryonic stem cells (and not human induced pluripotent stem cells) in markets outside of the Licensor Field and the Cellular Assay Products Field.

Cellular assay products derived from human embryonic stem cells (hESCs) is for use in drug discovery, development and toxicity screening.

License Grant

The Licensee entered into a royalty Agreement with the Licensor and received the following assets from the Licensor

License Property

Certain patents and patent applications and all related active prosecution cases, trade secrets, know-how and certain other intellectual property rights, and all of the Licensor's goodwill with respect to the technology directly related to the research, development and commercialization of certain products and know-how related to hES cells;

Certain biological materials and reagents (including master and working cell banks, original and seed banks, and research, pilot and GMP grade lots and finished product);

Certain regulatory filings for clinical trials for GRNOPC-I for spinal cord injury, including the investigational new drug applications filed with the United States Food and Drug Administration for Licensor’s Phase I safety study of oligodendrocyte progenitor (GRNOPC-1) cells in patients with neurologically complete, subacute spinal cord injury (Protocol No. CP35A007), and long term follow up of subjects who received GRNOPC1 (Protocol No. CP35A008), and the clinical trial for VAC1 for acute myelogenous leukemia, including a Phase I/II study of active immunotherapy with GRNVAC1, autologous mature dendritic cells transfected with mRNA encoding human telomerase reverse transcriptase (hTERT), in patients with acute myelogenous leukemia (AML) in complete remission (Protocol No. CP06-151).

US Patent 6,800,480 – Methods and Materials for the Growth of Primate-Derived Primordial Stem Cells in Feeder-Free Culture
US Patent 7,413,902 – Feeder-Free Culture Method for Embryonic Stem Cells
US Patent 6,440,735 – Dendritic Cell Vaccine Containing Telomerase Reverse Transcriptase for the Treatment of Cancer
US Patent 7,402,307 – Method for Identifying and Killing Cancer Cells
US Patent 7,824,849 – Cellular Telomerase Vaccine and Its Use for Treating Cancer
US Patent 7,560,281 – Use of TGF Beta Superfamily Antagonists to Make Dopaminergic Neurons from Embryonic Stem Cells
US Patent 8,252,586 – Neural Cell Populations from Primate Pluripotent Stem Cells
US Patent 8,153,428 – Use of TGF Beta Superfamily Antagonists and Neurotrophins to Make Neurons from Embryonic Stem Cells
US Patent 6,667,176 – cDNA Libraries Reflecting Gene Expression During Growth and Differentiation of Human Pluripotent Stem Cells
US Patent 7,041,438 – Use of Human Embryonic Stem Cells for Drug Screening and Toxicity Testing
US Patent 7,413,904 – Embryonic Stem Cells Having Genetic Modifications
US Patent 7,410,798 – Culture System for Rapid Expansion of Human Embryonic Stem Cells
US Patent 7,297,539 – Medium for Growing Human Embryonic Stem Cells
US Patent 7,455,983 – Medium for Growing Human Embryonic Stem Cells
US Patent 8,097,458 – Culture System for Rapid Expansion of Human Embryonic Stem Cells
US Patent 6,642,048 – Conditioned Media for Propagating Human Pluripotent Stem Cells
US Patent 6,458,589 – Hepatocyte Lineage Cells Derived from Pluripotent Stem Cells
US Patent 6,506,574 – Hepatocyte Lineage Cells Derived from Pluripotent Stem Cells
US Patent 7,256,042 – Process for Making Hepatocytes from Pluripotent Stem Cells
US Patent 7,282,366 – Hepatocytes for Therapy and Drug Screening Made From Embryonic Stem Cells
US Patent 7,473,555 – Protocols for Making Hepatocytes from Embryonic Stem Cells
US Patent 8,148,151 – Differentiation of Primate Pluripotent Cells to Hepatocyte-Lineage Cells
US Patent 6,833,269 – Making Neural Cells for Human Therapy or Drug Screening from Human Embryonic Stem Cells
US Patent 8,148,148 – Neural Progenitor Cell Populations
US Patent 8,252,585 – Neural Progenitor Cell Populations
US Patent 7,250,294 – Screening Small Molecule Drugs Using Neural Cells Differentiated from Human Embryonic Stem Cells
US Patent 7,763,463 – Use of Cyclic AMP and Ascorbic Acid to Produce Dopaminergic Neurons from Embryonic Stem Cells
US Patent 6,576,464 – Differentiated Cells Suitable For Human Therapy
US Patent 6,921,665 – Selective Antibody Targeting of Undifferentiated Stem Cells
US Patent 7,732,199 – Process for Making Transplantable Cardiomyocytes from Human Embryonic Stem Cells
US Patent 7,763,464 – Differentiation Protocol for Making Human Cardiomyocytes
US Patent 7,452,718 – Direct Differentiation Method for Making Cardiomyocytes from Human Embryonic Stem Cells
US Patent 7,897,389 – Direct Differentiation Method for Making Cardiomyocytes from Human Embryonic Stem Cells
US Patent 7,851,167 – Differentiation Protocol for Making Human Cardiomyocytes

US Patent Application 13/561,296 – Neural Cell Populations from Primate Pluripotent Stem Cells
US Patent Application 12/170,219 – Culture System for Rapid Expansion of Human Embryonic Stem Cells
US Patent Application 12/710,078 – Culture System for Rapid Expansion of Human Embryonic Stem Cells
US Patent Application 13/323,567 – Culture System for Rapid Expansion of Human Embryonic Stem Cells
US Patent Application 11/917,993 – Suspension Culture of Human Embryonic Stem Cells
US Patent Application 12/277,136 – Protocols for Making Hepatocytes from Embryonic Stem Cells
US Patent Application 13/558,078 – Neural Progenitor Cell Populations
US Patent Application 11/359,341 – Differentiated Cells Suitable For Human Therapy
US Patent Application 11/471,916 – Differentiation of Primate Pluripotent Stem Cells to Cardiomyocyte-Lineage Cells

Field of Use

The Licensee is a biotechnology company focused on the emerging field of regenerative medicine, with core technologies centered on stem cells capable of becoming all of the cell types in the human body, a property called pluripotency.

License Grant

Licensor hereby grants to Licensee, and Licensee hereby accepts, subject to the terms and conditions hereof, a royalty bearing, exclusive license in the Territory in the Field and under the Licensed Technology to (a) research, develop, make, have made, use, sell, offer for sale, import and export Licensed Products, (b) research, develop, use, practice, sell, offer for sale, import and export Licensed Processes and (c) develop, use, perform, sell, offer for sale, import and export Licensed Services. By way of example, but not in limitation, Licensee shall have the right to use Licensed Technology within the Field to produce mammalian embryonic stem (ES) cells and to produce from those mammalian embryonic cells, differentiated cells for human therapeutic purposes or for commercial research purposes, including drug screening assays, and to produce pluripotent cells including ES cells, differentiated human cells for human diagnostic and therapeutic purposes and/or for commercial research purposes, including drug screening assays.

License Property

60/382,616 Nuclear Transfer-Generated Stem Cells for Transplantation Having Homozygous MHC Alleles, and Methods for Making and Using Such a Stem Cell Bank

09/736,268 Transfer to De-Differentiate Recipient Cells

Field of Use

Field shall mean (1) the research, development, manufacture and selling of human and non-human animal cells for commercial research use, including small molecule and other drug testing and basic research and (2) the manufacture and selling of human cells for therapeutic and diagnostic use in the treatment of human (a) diabetes and (b) liver diseases; but Field shall exclude applications involving the use of cells in the treatment of tumors where the primary use of the cells is the destruction or reduction of tumors and does not involve regeneration of tissue or organ function.