Royalty Report: Drugs, Cancer, Pharmaceuticals – Collection: 27630

License Grant

University hereby grants to Licensee an exclusive license in the territory and in the Licensed Field Of Use, which shall include the right to grant sub-licenses, under University collective patent rights in accordance with the specific rights granted below

For University’s Patent Rights I, II, III & IV
University hereby grants to Licensee an exclusive license along with the right to use related Technology and know-how, to develop, have developed, make, have made, market, import, sell, and otherwise use Licensed Products and to practice the licensed methods under University’s Patent Rights I, University’s Patent Rights II, University’s Patent Rights III and University’s Patent Rights IV.

For University's Patent Rights V
University hereby grants to Licensee an option to obtain a license hereunder to each individual compound that is claimed in or covered by University’s Patent Rights V, which license shall be an exclusive license in the Territory and in the Licensed field of Use, including the right to grant sub-licenses, along with the right to use related University Collective Patent Rights, Technology and Know-How, to develop, have developed, make, have made, market, import, sell, and otherwise use related Licensed Products and to practice the related licensed methods for a specified individual compound that is claimed in or covered by University’s Patent Rights V. The Option shall be exercisable on a compound-by-compound basis by written notice given within six-months of the day Licensee receives notification and enabling disclosure from University in accordance with the due-diligence requirements in this Agreement, of each new compound definable by University’s Patent Rights V. Upon exercise of any Option in accordance with the provisions, such compound and related University Patent Rights V, Technology and Know-How shall be licensed to Licensee hereunder as provided above for the consideration set forth herein.

License Property

Certain inventions, generally characterized as a family of drugs known under the name “combretastatins”, collectively referred to as the “TECHNOLOGY”,.

University’s Patent Rights I or University Patent Rights I shall mean patent rights to any subject matter claimed in or covered by any of the following

Under University Case No. 224  
U.S. Patent No. 4,996,237 entitled Combretastatin A-4.
  
Under University Case No. 700
U.S. Patent No. 5,561,122 entitled Combretastatin A-4 Prodrug and any corresponding extensions or foreign applications or patents, if any.

University’s Patent Rights II or University Patent Rights II shall mean patent rights to any subject matter claimed in or covered by any of the following
Under University Case No. 98-014  
PCT Patent Application Serial No. US99/00419, entitled Synthesis of Combretastatin A-4 Prodrugs and Trans-isomers Thereof and any corresponding extensions or foreign applications or patents.

University’s Patent Rights III or University Patent Rights III shall mean patent rights to any subject matter claimed in or covered by any of the following
Under University Case No. 206  
U.S. Patent Nos. 5,409,953 & 5,569,786, entitled Isolation, Structural Elucidation and Synthesis of Novel Antineoplastic Substances Denominated Combretastatins.

Under University Case No. 516  
U.S. Patent No. 4,940,726, entitled Cell Growth Inhibitory Macrocyclic

Lactones Denominated Combretastatin D-1 and Combretastatin D-2 and any corresponding extensions or foreign applications or patents.

University’s Patent Rights IV or University Patent Rights IV shall mean patent rights to any subject matter claimed in or covered by continuing applications deriving from University Patent Rights I or University Patent Rights II or University Patent Rights III including all additions, renewals, divisions, substitutions, continuations and continuation-in-part applications; any patents issuing on said applications or continuing applications including reissues; and any corresponding extensions or foreign applications or patents. For the purposes of this agreement, this definition shall include only patent rights deriving from research conducted using funding from either University internal funds, philanthropic funds or funds from the United States Government. Inventions which are made exclusively under funding from third party for-profit entities or Agencies are excluded. Also excluded are inventions that are made under funding from third party for-profit entities or Agencies in combination with funding sources other than the United States Government.
University’s Patent Rights V or University Patent Rights V shall mean patent rights to any subject matter directed at any compound or group of compounds which are Combretastatins as defined herein and that is not claimed in or covered by University Patent Rights I, University Patent Rights II, University Patent Rights III or University Patent Rights IV. For the purposes of this agreement, this definition shall include only patent rights deriving from research conducted using funding from either Licensee or University internal funds, philanthropic funds or funds from the United States Government. Inventions which are made exclusively under funding from third party for-profit entities or Arizona State Agencies are excluded. Also excluded are inventions that are made under funding from third party for-profit entities or Agencies in combination with funding sources other than the United States Government.

Field of Use

Licensed Field of Use shall mean all uses of Licensed Products or Licensed Methods.

License Grant

University hereby grants to Licensee and Licensee hereby accepts from University the License.  License shall mean the exclusive worldwide license to practice the Research Technology (as hereinafter defined) for the research, development, manufacture, use and sale of Licensee Products.

License Property

The University has made certain inventions (the Pre-Existing Inventions) with respect to Receptors used in the products.

Patent Application US Serial # 07/551,270 -Novel Receptor-Type Phosphotyrosinc Phosi1hatases
Patent Application US Serial # 07/654,188 – Novel Rcccptor-lype Phospholyrosine PhosEltatases

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

Licensee Product shall mean any product for the diagnosis, treatment or prevention of human disease which contains or comprises
              (i)   any Receptor (as hereinafter defined); and/or (ii)  any substance which activates or prevents activation or otherwise modulates activation of a Receptor; and/or (iii) any substance which induces, prevents or otherwise modulates intracellular activity of either the activated or resting Receptor and/or (iv)  any substance otherwise  physically interacts with a Receptor and/or (v)  DNA or RNA encoding any of said substances, including probes, vectors or cells modified to contain such DNA or RNA; provided that an Investigational New Drug (IND) application is filed for such Licensee Product within 4 years from the end of the Research Period.  Licensee Product shall not include any product that is licensed by Licensee from a third party other than MPG,  provided that such product  does not act by activating, preventing activation, or otherwise modulating a Validated Target.

MPG shall mean Max-Planck-1 Institut fur Biochemie, Abteilung Molekularbiologie (Director Prof. Dr. Axel Ullrich), located in Am Klopferspitz 18a, W-8003 Martinsreid, an institute of the Max-Planck-Gesellschaft zur Forderung der Wissenschaften e.V., located in Residenzstrasse 1a, W-8000 Munchen 2, or any scientist affiliated with Max-Planck-1 Institut fur Biochemie, and/or Garching Intrumente Gesellschaft zur industriellen Nutzung von Forschungsergebnissen m.b.h. located in Koniginstrabe 19, W-8000 Munchen 22.

University Patents shall mean Universitys share in 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 (x) which claim Pre-Existing Inventions and which are identified on Appendix I hereto; or (y) which claim  inventions that are made, in whole or in part, by students or employees of University (including the University Scientist) during the term and in the course of the University Research Project (as hereinafter defined). For the avoidance of doubt, University Patents shall  include any such inventions that are made during the term and in the course of the University Research Project, whether funded by Licensee or by United States government agencies under Section 4( c) hereof.

University Know-How shall mean the Pre-Existing Inventions and any information and materials (including, but not limited to, pharmaceutical, chemical, biological and biochemical products, information, trade secrets, know-how, technical and non-technical data, materials, methods and processes and any drawings, plans, diagrams,  specifications and/or other documents containing such information) discovered, developed or acquired by or on behalf of students or employees of University (including The University Scientist) during the term and in the course of the University Research Project (as hereinafter defined).  For the avoidance of doubt, University Know-How shall include any of the foregoing that are developed during the term and in the course of the University Research Project whether funded by Licensee or by United States government agencies wider Section 4( c) hereof.

Receptor shall mean
(i) receptor tyrosine kinases, intracellular tyrosine kinases, or receptors that directly or indirectly activate non-receptor tyrosine kinases; and/or (ii) receptor serine/threonine kinases, intracellular serine/threonine kinases, or receptors that directly or indirectly activate serine/threonine kinases and/or (iii) receptor tyrosine phosphatases, intracellular tyrosine phosphatases, or receptors that directly or indirectly activate tyrosine phosphatases; and/or (iv) molecules that regulate the signaling of the above receptors.

Field of Use

The field of use is for human diseases relating to the diagnosis, treatment or prevention of these human diseases primarily cancer and diabetes.

The Licensees objective is to discover and develop new classes of small molecule drugs which interact in a specific manner with different members of the tyrosine kinase, serine-threonine kinase and tyrosine phosphatase families of signal transduction pathways.  These pathways are involved in a number of human diseases including cancer and diabetes as well as disorders of the bodys immune defenses and neurological systems.

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

University hereby grants to Licensee an exclusive license with the right to grant sublicenses, both subject to the terms and conditions of this Agreement, in the Field of Use and the Territory to make, have made, import, use, market, offer for sale and sell Licensed Products and to practice Licensed Processes.  University reserves the right to practice the Patent Rights for research, public service, internal (including clinical) and/or educational purposes, and the right to grant the same limited rights to other non-profit research institutions.  This Agreement shall extend until expiration of the last to expire of the licensed Patent Rights, unless sooner terminated as provided in another specific article of this Agreement.  Licensee agrees that Licensed Products used, leased or sold in the United States shall be manufactured substantially in the United States.  To the extent that the following grant may be required by research funding agreements between University and the United States Government, University reserves the right to grant to the United States Government nonexclusive, nontransferable, irrevocable, paid-up licenses to practice or haveb practiced for or on behalf of the United States Patent Rights throughout the world.

License Property

Patent Rights means University's legal rights under the patent laws of the United States or relevant foreign countries for all of the following  (a) the following United States and foreign patent(s) and/or patent application(s), and divisional, continuations (except continuations-in-part), and foreign counterparts of the same  5,453,500  5,668,168  5,677,286  5,693,767  5,932,709  6,093,805  6,103,884  6,462,182  6,720,307.

Field of Use

Field of Use means all fields.