Royalty Report: Drugs, Cancer, Diagnostic – Collection: 279311

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Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 5

Description

This collection of transactions and supporting information was developed using our AI algorithm to curate similar royalty reports into a cohesive collection to support your licensing, transfer pricing or other transaction scenarios where documented royalty rates and/or deal terms are important.
Category: Technology Licenses
Created On: 2022-04-28
Record Count: 5

Primary Industries

  • Drugs
  • Cancer
  • Diagnostic
  • Diabetes Treatment

IPSCIO Report Record List

Below you will find the records curated into this collection.  This summary includes the complete licensed property description so that you can review and determine if this collection covers the topics, technology or transaction type that is relevant for your needs.  The full report will include all relevant deal data such as the royalty base, agreement date, term description, royalty rates and other deal terms.  For reference, here is a sample of a full IPSCIO curated royalty rate report: Sample Report

IPSCIO Record ID: 279311

License Grant
University grant to Licensee, and Licensee hereby accepts, a royalty-bearing, exclusive license under Licensed Subject Matter to make, have made, manufacture, have manufactured, use, import, offer to sell, sell and/or have sold products within Licensed Territory for use within Licensed Field. This grant is subject herein below, the payment by Licensee to University of all consideration as provided herein, and is further subject to the following rights retained by University to
(a) publish the general scientific findings from research related to Licensed Subject Matter, subject to the terms of Article XI-Confidential Information and Publication; and
(b) use Licensed Subject matter solely for its own internal, non-commercial research, teaching, and other educationally-related purposes; and
(c) request that the Licensee transfer Licensed Subject Matter to academic or research institutions for non-commercial research use or for purposes of collaboration upon terms reasonably acceptable to the Licensee and such third party; provided, however, that Licensee will not unreasonably withhold consent to University’s use of the Licensed Subject Matter in collaborations between University, and/or the National Cancer Institute (NCI).
License Property
Licensed Subject Matter means Patent Rights, Improvements and Technology Rights within Licensed Field.

Patent Rights means University’s rights in information or discoveries described in invention disclosures below or in the subsequent reductions to practice of such information or discoveries (so long as such subsequent reductions to practice are not obligated to a third party), or claimed in any patents, and/or patent applications, whether domestic or foreign, based on such invention disclosures and such reductions to practice (that are not obligated to a third party) and all domestic and foreign divisionals, continuations, continuations-in-part, reissues, reexaminations or extensions thereof, including any foreign counterparts thereto and any letters patent that issue thereon, including but not limited to (a) Provisional Application entitled, “Compounds and Methods for the Treatment of Cancer” filed July 16, 2004; (b) U.S. Application Serial Number 60/346,492 filed January 7, 2002; (c) WO 2003/057012 filed January 7, 2003; (d) U.S. Application Serial Number 10/337,969 filed January 7, 2003; and (e) national stage filings for MDA01-063 in Europe, Japan, Canada and Australia.

MDA01-063 “New Organic Arsenic Derivatives as a Treatment for Cancer,” Srdan Verstovsek, M.D., Ph.D., Ralph A. Zingaro Ph.D., Emil J. Freireich, M.D., Hatice Duzkale, M.D., Hagop M. Kantarjian, M.D.

MDA04-076 “Arsenic-Lipid Derivatives as a Treatment for Cancer,” Srdan Verstovsek, M.D., Ph.D., Ralph A. Zingaro Ph.D., Hagop M. Kantarjian, M.D., M. Gao

Licensed Products means any product or service that is covered in whole or in part by a valid claim contained in the Patent Rights in the country in which the product is made, used, leased or sold.

Field of Use
Patent applications and related improvements and know-how) are for the manufacture and commercialization of two classes of organic arsenicals (water- and lipid-based) for human and animal use. The class of water-based organic arsenicals includes ZIO-101.

ZIO-101 is an organic arsenic compound covered by an issued U.S. patent and applications internationally. A form of commercially available inorganic arsenic (arsenic trioxide (Trisenox®) or ATO) has been approved for the treatment of acute promyelocytic leukemia (APL), a precancerous condition, and is on the compendia listing for the therapy of multiple myeloma as well as having been studied for the treatment of various other cancers.

IPSCIO Record ID: 367328

License Grant
Canadian University grants to the Canadian Licensee a worldwide, exclusive license to use and sublicense the Technology, University Improvements and any Joint Improvements and to manufacture, have made, distribute, and sell the Products on the terms and conditions set out in this Agreement.

The license granted under this Agreement is granted only to the Licensee and not to any Affiliated Companies. The Licensee will not cross-license the Technology or any Improvements without the prior written consent of University, which consent will not be unreasonably withheld.

The Licensee will not grant sublicenses of the Technology, University Improvements or any Joint Improvements to Affiliated Companies or other third parties without the prior written consent of University which consent will not be unreasonably withheld.

License Property
The technology relates to Hsp27 antisense and its use in the treatment of cancer.

Technology  means the Patents and all knowledge, know-how and/or technique or techniques invented, developed and/or acquired, before the Effective Date by University or the Licensee relating to, and including, the technology and materials described, as amended from time to time, including, without limitation all related research, data, specifications, instructions, manuals, papers or other related materials of any nature at all, whether written or otherwise, and University’s Confidential Information.
U.S. Provisional filed
April 18, 2003, Serial No.
60/463,952 Hsp27 Antisense to Treat Prostate and other Solid Tumours.

Patents mean collectively the rights in and to any and all inventions which are disclosed in the U.S., Canadian and foreign patents and patent applications identified and all
(i)            counterparts, continuations, divisionals, continuations-in-part, continuing prosecution applications, and requests for continued examinations, extensions, term restorations, renewals, reissues, re-examinations, or substitutions thereof;
(ii)           corresponding international patent applications;
(iii)          corresponding foreign patent applications, including supplementary protection certificates and other administrative protections; and
(iv)          international and foreign counterpart patents resulting therefrom, all of which will be deemed added, from time to time.
U.S. Provisional filed October 2, 2002, Serial
No. 60/415,859 Hsp27 Antisense to Treat Prostate and other Solid Tumours.

Product(s) means goods or services manufactured or provided in connection with the use of all or some of the Technology and/or any Improvements.

Field of Use
Field of use is for the treatment of cancer relating to Hsp27 antisense technology.

IPSCIO Record ID: 223109

License Grant
Board, through University, hereby grants to Licensee a royalty-bearing, exclusive license under Licensed Subject Matter to manufacture, have manufactured, use, import, offer to sell and/or sell Licensed Products covered by the `512 Patent Rights within Licensed Territory for use within Licensed Field. Board, through University, hereby grants to Licensee a royalty-bearing, non-exclusive license under Licensed Subject Matter to manufacture, have manufactured, use, import, offer to sell and/or sell Licensed Products covered by the `027 Patent Rights within Licensed Territory for use within Licensed Field
License Property
Patent Rights means Boards rights in information or discoveries claimed in the patents, and/or patent applications and any letters patent that issue thereon, whether domestic or foreign, listed below.

512 Patent Rights means Boards rights in information or discoveries claimed in U.S. Patent Application No. 10/301,512 and any letters patent that issue thereon.
027 Patent Rights means Boards rights in information or discoveries claimed in U.S. Patent Application No. 10/236,027 and any letters patent that issue thereon.

MDA02-085 (UTSC764) entitled 'Methods and Compositions for Detection of Breast Cancer'.
Inventors Herbert A. Fritsche and Henry M. Kuerer
Serial No. 10/236,027
Filing Date September 5, 2002

MDA03-098 (UTSC828US) entitled Proteomic Methods for Diagnosis and Monitoring of Breast Cancer'.
Inventors  Herbert A. Fritsche, Henry M. Kuerer, Ira L. Goldknopf and Helen R. Park.
Serial No. 10/301,512
Filing Date November 20, 2002

Licensed Subject Matter means inventions and discoveries covered by Patent Rights or Technology Rights within Licensed Field.

Licensed Products means any product or service sold by Licensee comprising Licensed Subject Matter pursuant to this Agreement.

Field of Use
This agreement pertains to the drug industry relating to Methods for Diagnosis and Monitoring of Breast Cancer as well as Methods and Compositions for Detection of Breast Cancer in all fields of use.

IPSCIO Record ID: 311746

License Grant
University grants to Licensee an exclusive, worldwide license under the Licensed Patents in the Field of Use to (a) make, have made, use, offer for Sale, import, and Sell Licensed Products and Licensed Services, and (b) to practice Licensed Methods.

University grants to Licensee a nonexclusive, royalty bearing, worldwide license for Licensed Technical Knowledge to manufacture, have made, use, offer for Sale, import, and Sell Licensed Products and Licensed Services.

License Property
Licensed Patents means (a) the United States and foreign patents and/or patent applications identified; (b) any and all patents issuing from the foregoing; (c) any and all claims of continuation-in-part applications that claim priority to the United States patent applications identified, but only where such claims are directed to inventions disclosed in the manner provided in 35 U.S.C. § 112(a) in the United States patent applications identified, and such claims in any patents issuing from such continuation-in-part applications; (d) any and all foreign patent applications, foreign patents or related foreign patent documents that claim priority to the patents and/or patent applications identified; and (e) any and all divisionals, continuations, reissues, reexaminations, renewals, substitutions, and extensions of the foregoing.

*
United States Provisional Patent Application no. 62/575,858 (abandoned); Compounds, their preparation, related compositions, and uses thereof; Filing date October 23, 2017; University ref. #17036 and #16069.
*
United States Provisional Patent Application no. 62/669,926 (converted); Compounds, their preparation, related compositions, and uses thereof; Filing date May 10, 2018; University ref. #17036 and #16069.
*
PCT Patent Application no. PCT/US19/31885 (pending); Inhibitors of the ras oncoprotein, methods of making, and methods of use thereof; Filing date May 10, 2019; University ref. #17036 and #16069.

Invention(s) means a valuable invention or inventions as described in University Case Nos. 16069 and 17036, was/were developed during the course of research conducted at University by the individuals hereinafter listed in this Agreement.

Licensed Product means any product, material, kit, or other article of manufacture or composition of matter, the making, use, Sale, or offer for Sale, or import of which, absent the license granted pursuant to this Agreement, infringes, induces infringement, or contributes to infringement of a Licensed Patent and/or embodies, contains, uses, is used or made through the use of, or was in whole or part derived from Licensed Technical Information.

Licensed Technical Knowledge means proprietary data and information which are not generally known that are acquired and controlled by ULRF and are provided to Licensee by ULRF in order to practice the Licensed Patents. Technical Knowledge shall be limited only to those proprietary data and information to which ULRF has an ownership or other interest during the term of this Agreement; all to the extent and only to the extent that ULRF has the right to grant licenses or other rights thereunder.

Licensed Service means a service provided using Licensed Products or Licensed Methods, including, without limitation, any such service provided in the form of contract research or other research performed by Licensee on behalf of a third party.

Licensed Method means any process or method, the use or practice of which, absent the license granted pursuant to this Agreement, infringes or contributes to or induces the infringement of a Licensed Patent or relies on Licensed Technical Knowledge.

The University is a research institution for the purpose of promoting and supporting research projects, investigations, and other activities relating to the educational, scientific, literary, artistic, health care and public service missions of the University.

The RAS oncogenes comprise the most frequently mutated class of genes in human cancers, which is why targeting RAS has been fiercely pursued for decades.

Cells can proliferate uncontrollably when hyper-activating mutations occur in one of the three human RAS gene isoforms (KRAS, HRAS or NRAS). These RAS mutations are present in approximately one-third of all cancers, including a high percentage of pancreatic, colorectal and lung cancers. Although drugs that target downstream signaling of RAS are available, they have shown limited clinical activity (most likely because RAS acts like a hub that activates multiple effectors). As such, blocking any single pathway, or even two, typically provides disappointing clinical effect. By contrast, the RAS-F small molecules' intended mechanism of action is to inhibit or block the binding of mutated RAS to their effector proteins, thereby leaving the proteins from mutated RAS unable to cause further harm.

Field of Use
Intellectual property covers the 'RAS-F' family of RAS oncogene protein-protein interaction inhibitor small molecule drug candidates. Licensee will evaluate these patent-pending compounds in order to identify a lead drug candidate for further development against one or more cancers.

Licensee is a biotechnology company focused on developing novel therapeutics for the treatment of cancer and infectious diseases.

IPSCIO Record ID: 362445

License Grant
Swiss Licensor, a public research university, grants Licensee an exclusive License in the Territory, under the Patents to research, develop, make, have made, use, sell, offer for sale, have sold, export and import Licensed Products in the Field of Use.

Licensor retains the right to use the Patents and consent to the use of the Patents by academic and research institutions for non-commercial purposes, free of charge. Licensor is further allowed to use the Patents for non-commercial collaborations with commercially oriented third parties. In case of any commercialization by said third party, this party has to negotiate an agreement with Licensor/Licensee or the Licensee directly, as the case may be. For purpose of clarification, non-commercial purposes does not include human clinical trials. Licensee gets a free, non-exclusive license on Blocking Inventions held by Licensor if this is required to commercialize the Patents and only to the extent that no third party rights existing as of the Effective Date are in conflict with such a non-exclusive license.

Licensee is obliged to use diligent and reasonable efforts to develop and commercially exploit the Patents in connection with at least one Licensed Product to the maximum extent worldwide and throughout the Territory.

Licensee has the right to grant Sub-licenses within the scope of this Agreement.

License Property
Licensor has developed certain Technology and owns certain Patents relating to oligonucleotides targeting miRNAs for the treatment of insulin resistance and type 2 diabetes.

Patent(s) shall mean (1) patent (application) [US 61/180,024 and US 61/322,878 (Licensor internal reference number T-08-084), any members of the patent family claiming priority of these original patent applications, including any patent application or granted patent, whether domestic or foreign, including all provisionals, and all divisionals, continuations, continuations-in-part, reissues, reexaminations, renewals, extensions, and supplementary protection certificates of any such patents and patent applications, and (ii) any patent issuing therefrom.

Patent rights related to the use of anti-miR therapeutics targeting miR-103/107 for the treatment of metabolic disorders, including type 2 diabetes.

Field of Use
Field of use is for the treatment of insulin resistance and type 2 diabetes. All fields of use covered by the Patent.
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