Royalty Report: Diagnostic, Drugs, Medical – Collection: 279313

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 12

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: 12

Primary Industries

  • Diagnostic
  • Drugs
  • Medical
  • Device
  • Test/Monitoring
  • Cancer
  • Antibody
  • Therapeutic
  • Technical Know How
  • Drug Discovery
  • Alzheimer’s disease
  • Disease
  • Delivery
  • Biotechnology
  • Respiratory
  • Viral Infection
  • Education

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: 279313

License Grant
University hereby grants and Licensee hereby accepts an Exclusive license under the Licensed Patents and Licensed Materials to make, have made, import, use, lease, sell and offer for sale and otherwise commercialize and exploit Licensed Products in the Licensed Territory, and practice any method process or procedure within the Licensed Patents in the Licensed Territory.  Said license is Exclusive, including the right to sublicense  in the Licensed Field of Use for a term commencing as of July 1, 1997 and ending on the expiration of the last to expire of the Licensed Patent(s).  University shall have the right to practice the Invention(s) and use the Technology for its own bona fide research, including sponsored research and collaborations. University shall have the right to publish any information included in Licensed Materials and Licensed Patent(s).
License Property
Licensed Product(s) means any product or part thereof in the Licensed Field of Use, the manufacture, use, or sale of which

(a)I s covered by a valid claim of an issued, unexpired Licensed Patent(s) directed to the Invention(s). A claim of an issued, unexpired Licensed Patent(s) shall be presumed to be valid unless and until it has been held to be invalid or unenforceable by a final judgment of a court of competent jurisdiction from which no appeal can be or is taken or is disclaimed, or rejected or found invalid or unenforceable in a reissue application or re- examination proceeding or otherwise;
  
(b) Is covered by any claim being prosecuted in a pending application directed to the Invention(s); or

(c) Incorporates any of the Licensed Materials.

Licensed Patent(s) means any (i) U.S. patent application Serial Number 270,631 filed July 1, 1994 (issued on July 22, 1997 as U.S. Patent Number 5,650,135), (ii) all divisions, substitutions, and continuations in whole or part of any of the preceding, (iii) all foreign patent applications corresponding to or claiming priority from (including International Application Number PCT/US95/15040 and all national applications claiming priority therefrom), and (iv) all U.S. and foreign patents issuing on any of the preceding, including patents of addition, reexaminations, reissues and extensions.

5,650,135 – Non-invasive localization of a light-emitting conjugate in a mammal

Licensed Materials means those biological materials listed, and such other agreed materials as University may provide to Licensee during the term of this Agreement, which shall be added.
– Individual components of light systems (Vectors, genes and gene fragments)
– Bacteria
– Tumor cells
– Indicator cells for HIV
– Transgenic mouse lines

Field of Use
Licensed Field of Use means all uses.

IPSCIO Record ID: 290553

License Grant
The parties amend certain terms of the License Agreement that includes but not limited to royalty description, sublicense section, address for notices, field of use, and the warranties section.

University furthermore grants to Licensee the right to make, have made, distribute and sell clinical diagnostic products. Licensee shall continue to have the right to commercially exploit the licensed inventions as related to diagnostic laboratory services.

The original agreement states
University hereby grants Licensee the exclusive right to conduct various technical, pre-clinical, marketing, patent, and other studies on Products in the field of use during a six (6) month period commencing on the effective date of this Agreement (the option period). The option period may be extended by mutual written agreement of the parties.

In consideration of the royalties, and subject to the terms and conditions, as set forth in this Agreement and effective upon the earlier to occur of (i) written notification to University during the option period that Licensee desires to license the Patent(s), or (ii) expiration of the option period with no written notification given, University hereby grants to Licensee i. the exclusive worldwide license in the field of use to use the Patent to make, have made, use distribute, and sell the Product(s); and ii. the right to grant sublicenses to any Patent licensed hereunder, provided that any sublicensee agrees to be bound by the terms and conditions of this Agreement applicable to sublicensees.

License Property
The term Patent or Patents shall mean any and all patent applications listed while, and to the extent, said applications remain pending, and any and all pending or unexpired patents issued thereon and any continuation, division, extension or reissue thereof, and any and all pending or unexpired foreign patents issuing from any application filed which corresponds to claims contained in any of the foregoing patents or applications.
USC#2860, filing date 12/15/1999

Product or Products shall mean any article, composition, apparatus, substance, chemical, material, method or service which is made, used, distributed or sold by Licensee which
i. is covered in whole or in part by one or more pending or unexpired claims contained in a Patent in the country in which the Product(s) is made, used, distributed or sold;
ii. is manufactured using a method or process which is covered in whole or in part by one or more pending or unexpired claims contained in a Patent in the country in which (a) the Product(s) is made, use, distributed or sold, or (b) the method or process is used or sold;
iii. the use of which is covered in whole or in part by one or more pending or unexpired claims contained in a Patent in the country in which (a) the Product(s) is made, used, distributed or sold, or (b) the method or process is used or sold; or
iv. incorporates Information transferred to Licensee pursuant to the confidential disclosure agreement dated January 7, 2000 between University and Licensee (as the term Information is defined in said agreement).

Field of Use
The patents are for RGI-1 and related technology, for use in human and veterinary diagnostic laboratory services, the sale of clinical diagnostic products, and the sale of research products to the research community.

RGI-1 enables Licensee to rapidly and reliably isolate RNA and DNA from FFPE tissues.  RGI-1 generates molecular-based tumor analyses for use in guiding chemotherapy treatment for cancer patients.

IPSCIO Record ID: 238995

License Grant
Licensor grants to Licensee a worldwide, exclusive sublicense under the Regents License to make, have made, use, sell, offer for sale and import the Sublicensed Products in the Sublicensed Field of Use and the Sublicensed Territory for the life of the last to expire patent under the Licensed Patent Rights.
License Property
Licensed Patent Rights shall have the same meaning as Regents Patent Rights under the Regents Option, namely

          (i)   The U.S. Continuation-in-Part application entitled 'Blockade of T Lymphocyte Down-Regulation Associated with CTLA-4 Signaling,' serial number 08/566,853 (U.C. Case No. B96-002-2) filed on December 4, 1995, by Drs. James P. Allison, Dana R. Leach and Matthew Krummel of the University of California at Berkeley and assigned to Regents, that claims priority to Serial Number 08/506,666 (U.C. Case No. B96-002-1, now abandoned) filed on July 25, 1995,

          (ii)  The U.S.. Continuation-in-Part application entitled, 'Blockade of T Lymphocyte Down-Regulation Associated with CTLA-4 Signaling,' serial number 08/646,605 (U.C. Case No. B96-002-3) filed May 8, 1996, by Drs. James P. Allison, Dana R. Leach and Matthew Krummel of the and assigned to Regents and issued as U.S. Patent No. 5,811,097, that is a CIP of Serial Number 08/566,853, which is a U.S. CIP of 08/506,666,

          (iii) The U.S. Continuation-in-Part application entitled, 'Blockade of T Lymphocyte Down-Regulation Associated with CTLA-4 Signaling,' serial number 08/760,288 (U.C. Case No. B96-002-4) filed December 4, 1996, by Drs. James P. Allison, Dana R. Leach and Matthew Krummel of the University of California at Berkeley and assigned to Regents,

          (iv)  PCT International Patent application, Serial Number US96/19375 filed on December 4, 1996, by Drs. James P. Allison, Dana R. Leach and Matthew Krummel and assigned to Regents (U.C. Case No. B93-002/PCT) that claims the convention priority benefits of U.S. Patent Application Serial No. 08/566,853 dating from the U.S. filing date of December 4, 1995, and U.S. Patent Application Serial No. 08/646,605 dating from the U.S. filing date of May 8, 1996, and

          (v)   All other international patents and patent applications, and/or any divisions, continuations, reissues and claims in continuations-in-part that are (a) entitled to the priority filing date of Serial Numbers 08/506,666, 08,566,853, 08/646,605 or 08/760,288 and (b) are claimed or described in Serial Numbers 08/506,666, 08/566,853, 08/646,605 or 08/760,288.

Sublicensed Products means within the Sublicensed Field of Use  

(i)   Any product produced using a Licensed Method, or for use in the practice of a Licensed Method,
(ii)  Any method, process, material or product the manufacture, use or sale of which would be an infringement of any pending claim (were it to issue) or issued claim of the Licensed Patent Rights, or
(iii) Any material, method, process or product, or part thereof, that
      (A) Is covered by a valid claim of any issued, unexpired patent within Licensed Patent Rights. A claim within the Licensed Patent Rights shall be presumed to be valid unless and until it has been held to be invalid by a final judgment of a court of competent jurisdiction from which no appeal can be or is taken, or
      (B) Is covered by any claim being prosecuted in a pending application directed to the Invention (were it to issue).

Invention means the inventions described in 'Blockade of T-Lymphocyte Down-Regulation Associated with CTLA-4 Signaling' as described in Regents Case No. B96-002.

Field of Use
Sublicensed Field of Use means use of the Sublicensed Products that are antibodies (including without limitation, bispecific antibodies, single chain antibodies and/or immunoconjugated antibodies) for all human therapeutic uses permitted by the Regents License.

IPSCIO Record ID: 291175

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.

IPSCIO Record ID: 249703

License Grant
The University grants the Israeli Licensee, a license under the Licensed Patents and Technology in the Licensed Field of Use to make, use, offer for sale, sell and import Licensed Products in the Licensed Territory.
License Property
HCV Monoclonal Antibodies Recognizing Divergent HCV Genotypes

Licensed Patents means any Letters Patent issued upon Universitys U.S. Patent Application, Serial Number 09/430489, filed October 29, 1999, continuation-in-part US Serial Number 09/728720 filed December 21, 2000, and/or any additional patent applications, divisions, continuations, foreign applications, counterparts or reissues of any of the foregoing.

Licensed Products means any product or part thereof in the Licensed Field of Use, the manufacture, use, offer for sale, sale or import of which
(a) Is covered by a valid claim of an issued, unexpired Licensed Patent (Valid Claim) directed to the Inventions. A claim of an issued, unexpired Licensed Patent shall be presumed to be valid unless and until it has been held to be invalid by a final judgment of a court of competent jurisdiction from which no appeal can be or is taken;
(b) Is covered by any claim being prosecuted in a pending application directed to the Inventions; or
(c) Incorporates any of the Technology.

Licensed Antibodies are the E2 Antibodies CBH2, CBH4D, CBH4B, CBH4G, CBH 5 (Antibody 65), CBH7, CBH8C, CBH8E, CBH9, CBH11, and, CBH17.  And the E1 Antibodies H111, and, H114.

Field of Use
The Licensed Field of Use means use of the Licensed Patents for human therapeutics other than active immunization.

Ab65 is a human monoclonal antibodies for the treatment of chronic HCV.

IPSCIO Record ID: 115864

License Grant
The University grants to the Licensee a worldwide license under Licensors Patent Rights to make, have made, use, sell, and distribute Licensed Products and to practice Licensed Method.  The Licensor also grants to the Licensee the right to issue sublicenses to third parties to make, have made, use, sell, and distribute Licensed Products and to practice the Licensed Method.
License Property
The license is for certain inventions, generally characterized as a noninvasive continuous iontophoretic blood monitor/drug delivery system.  Patents relates to devices for iontophoretic non-invasive sampling of substances.

The Licensed Product is any material that is either covered by Licensor’s Patent Rights or any product manufactured using the Licensed Method, in either event to the extent the manufacture, use or sale of which in a particular country infringes an unexpired valid claim of a patent or a pending claim of a patent application under Patent Rights in that country in which such patent has issued or application is pending.

The Licensed Method is any method that is covered by the claims of Licensor’s Patent Rights in the country in which such method is used, or the use or practice of which would constitute, but for the license granted to the Licensee pursuant to this Agreement, an infringement of any unexpired, valid issued claim or pending claim under Patent Rights in that country in which the Licensed Method is used or practiced.

(a) U.S. Patent Application serial no. 150,159, filed 29 Jan 88,(abandoned) by Dr. Richard Guy, et al., and assigned to The Regents;

(b) U.S. Patent Application serial no. 299,397, filed 24 Jan 89, as a continuation-in-part application of (a), (abandoned) by Dr. Richard Guy, et al., and assigned to The Regents;

(c) U.S. Patent Application serial no. 771,483, filed 04 Oct 91, as a continuation-in-part of (b) (now allowed) by Dr. Richard Guy, et al., and assigned to The Regents;

(d) U.S. Patent No. 5,279,543, issued 18 Jan 94, which was a file wrapper continuation application of (b), by Dr. Richard Guy, et al, and assigned to The Regents; and continuing applications thereof including divisions and substitutions but including continuation-in-part applications only to the extent that the claim was supported in the original disclosure; any patents issuing on said application or continuing applications including reissues and extensions; and any corresponding foreign applications or patents.

Field of Use
This agreement pertains to drug delivery systems.  The Licensee, GlucoWatch system is designed to measure glucose frequently, automatically and non-invasively through the ease and convenience of a device worn like a wristwatch.

IPSCIO Record ID: 291168

License Grant
Licensor hereby grants to Licensee a worldwide, exclusive (even as to Licensor), royalty-bearing license in the Field, under the Licensor Patent Rights, the Licensor ownership interest in Joint Patent Rights and Joint Inventions, Licensor Know-How and Licensor Inventions to make, have made, have used, sell, have sold, offer for sale, and import Licensed Products in the Field throughout the world. This grant includes the right for Licensee to grant sublicenses to Licensee Affiliates without consent, either directly or through one or more intermediaries.
License Property
Licensed Product shall mean the component of an in vitro diagnostic device containing Biological Material for use within the Field, the manufacture, use or sale of which, but for the license granted herein, would infringe at least one Valid Claim of Licensor Patent Rights or Joint Patent Rights in any country. For purposes of clarity, component means the consumable portion of the diagnostic device comprising  biologic material (e.g. antibody) and inert material (e.g. plastic vessel) but does not include the hardware (e.g., fluorometer) or sample acquisition device (e.g., nasal swab) used with the component. In addition, Licensed Product includes any Biological Material whose development or manufacture used or uses Licensor Know How.

Licensor Patent Rights shall mean  (a) the claims of the patent and patent applications listed hereto; (b) all patent applications heretofore or hereafter filed or having legal force in any country owned by or licensed to Licensor (and which Licensor has the right to sublicense to Licensee) or to which Licensee otherwise acquires sublicenseable rights, which claim a composition (including but not limited to, Biological Materials), method or process, which are necessary to practice any process or method claimed in the patent and patent applications in the Field or are necessary, to make, have made, have used, sell, have sold, offer for sale, and import any Licensed Product, together with any and all patents that have issued or in the future issue therefrom, including utility, model and design patents and certificates of invention, and (c) patents and patent applications claiming Licensor Inventions; (d) patents and patent applications added; and (e) all divisionals, continuations, continuations-in-part, continued prosecution applications, requests for continued examination, reissues, renewals and extensions of the patents and patent applications and any foreign counterparts to those patents and patent applications, to the extent and only to the extent that Licensor has or hereafter will have the right to grant licenses and sublicenses thereunder.

US 5,886,151 – Candida albicans integrin-like protein
US 6,346,411 – DNA encoding–candida albicans integrin-like protein
US 6,774,219  – Candida albicans gene, integrin-like protein, antibodies, and methods of use

Joint Patent Rights shall mean (a) all claims of patents and patent applications having legal force in any country which claim a Joint Invention, together with any and all patents that issue therefrom, including utility, model and design patents and certificates of invention, and (b) all divisionals, continuations, continuations-in-part, continued prosecution applications, requests for continued examination, reissues, renewals, and extensions or additions to any such patents and patent applications and any foreign counterparts to those patents and patent applications.

Joint Invention shall mean an Invention made or conceived jointly by one or more employees or others acting on behalf of Licensee and by one or more employees or others acting on behalf of Licensor during and in the course of a Development Collaboration Program or in the course of work done under the Prior Agreements. The parties agree that Joint Inventions shall be owned jointly by Licensor and Licensee in accordance with US law, whereby each joint owner shall have the right to use, pledge, practice, license, assign and otherwise transfer and enjoy its rights to and interests in joint inventions without permission of or accounting to the other joint owner(s)), subject to the licenses granted.

Field of Use
Field shall mean in vitro diagnostic devices containing Biological Material for use in detection of Targets in humans and in food.  'Target' shall mean a given species and genus of microorganism detected using Licensed Product. (Staphylococcus aureus and Staphylococcus epidermidis are two distinct Targets.)

IPSCIO Record ID: 4174

License Grant
University hereby grants to Company and Company hereby accepts from University i. Exclusive right under the Patent Rights to make have made use, import, export, put into use, distribute, subLicense, sell and have sold Licensed Products in the Field in the territory during the term of this Agreement; and ii. Non-exclusive right under the Patent Rights to make, have made, use, import, export, put into use, distribute, sell and have sold Licensed Products for Gene Therapy in the Field and in the territory during the term of this Agreement.
License Property
Company shall be entitled to grant subLicenses to the exclusive License described in this section 2.a.i. under the License on terms and conditions not inconsistent with this Agreement (except that the rate of royalty may be at higher rates than those set forth in this Agreement).

The License shall be subject to i. a non-exclusive license in favor of the U.S. Government to the extent required by Title 35 U.S.C.A. § 200 et seq., or as otherwise required by virtue of use of federal funding in support of inventions claimed within the Patent Rights and ii. a right and license retained by University on behalf of itself and its faculty, students and academic collaborators to practice the Patent Rights for its own bona fide research, including sponsored research and collaborations. The retained rights granted in this Section 2e shall not give University the right to offer or grant rights in the Field under the Patent Rights to third parties.

Patent Rights shall mean any issued patent or any patent to be issued pursuant to any United States or foreign patent application owned, by University, listed in this subclause 1.k. together with any continuations in whole, divisional or substitute patents, any reissues or re-examinations of any such application or patents, and any extension of the term of any such patent in the Field. The issued patents and patent applications referred to in the preceding sentence are

i. US Provisional patent application 60/381.617 filed 05/17/02
ii. US Provisional patent application 60/444,851 filed 02/04/03
iii. PCT application PCT/US03/15658 filed 05/19/03

Licensed Product(s) shall mean any material or product or kit, or any service, process, or procedure that  i. Either is covered by the Patent Rights or whose discovery, development, registration manufacture, use or sale would constitute, but for the license granted to Company pursuant to this Agreement, an infringement of any pending or issued claim within the Patent Rights or  ii. Is discovered, developed, made, sold, registered or practiced using Licensed Method or which may be used to practice the Licensed Method, in whole or in part or  iii. Is a kit, reagent or material which comprises, contains or makes use of Biological Material in its manufacture, testing use or sale.

Gene Therapy shall mean the introduction of genes into cells to modify the behavior of such cells.

Field of Use
Field shall mean the use of the Patent Rights for in vitro drug screening assays, predictive toxicology and efficacy assays, drug-related pharmacology assays, genomics and proteomics studies, and developing human and animal therapeutic and diagnostic products. Field shall not mean Cell-Based Therapy.

IPSCIO Record ID: 314368

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-fee bearing, worldwide license for Licensed Technical Knowledge to manufacture, have made, use, offer for Sale, import, and Sell Licensed Products and Licensed Services. In furtherance of the foregoing, University will not grant a license to the Licensed Technical Knowledge to any third party to commercialize a product in the Field of Use that would be competitive with the Licensed Patents or Licensee’s use or proposed use of the Licensed Patents and/or Licensed Technical Knowledge, absent Licensee’s prior written consent.

License Property
United States Provisional Patent Application no. 63/001,308; Methods of Inhibiting or Treating a Coronavirus Infection; Filing date March 28, 2020; University ref. #20050.

Licensed Patents means (a) the United States and foreign patents and/or patent applications identified in the Agreement; (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 in the Agreement, 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 in the Agreement, 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 in the Agreement; and (e) any and all divisionals, continuations, reissues, reexaminations, renewals, substitutions, and extensions of the foregoing. Any claim of a pending or of an issued and unexpired Licensed Patent is presumed to be valid unless it has been held to be invalid by a final judgment of a patenting authority or a court of competent jurisdiction from which no appeal can be or is taken.

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 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.

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

Field of Use
The License granted is for the use in all medical fields relating to the treatment of diseases, including the Coronavirus Infection.

Coronaviruses are a group of related RNA viruses that cause diseases in mammals and birds. In humans and birds, they cause respiratory tract infections that can range from mild to lethal.

IPSCIO Record ID: 290552

License Grant
The parties amend the royalty section of the original agreement; in all other respects, the License Agreement is hereby ratified and confirmed.

The original License Agreement grant is as stated
University hereby grants Licensee the exclusive right to conduct various technical, pre-clinical, marketing, patent, and other studies on Products in the field of use during a six (6) month period commencing on the effective date of this Agreement (the option period). The option period may be extended by mutual written agreement of the parties.

In consideration of the royalties, and subject to the terms and conditions, as set forth in this Agreement and effective upon the earlier to occur of (i) written notification to University during the option period that Licensee desires to license the Patent(s), or (ii) expiration of the option period with no written notification given, University hereby grants to Licensee i. the exclusive worldwide license in the field of use to use the Patent to make, have made, use distribute, and sell the Product(s); and ii. the right to grant sublicenses to any Patent licensed hereunder, provided that any sublicensee agrees to be bound by the terms and conditions of this Agreement applicable to sublicensees.

License Property
The term Patent or Patents shall mean any and all patent applications listed while, and to the extent, said applications remain pending, and any and all pending or unexpired patents issued thereon and any continuation, division, extension or reissue thereof, and any and all pending or unexpired foreign patents issuing from any application filed which corresponds to claims contained in any of the foregoing patents or applications.
USC#2860, filing date 12/15/1999
Field of Use
The patents are for RGI-1 and related technology, for use in human and veterinary diagnostic laboratory services, the sale of clinical diagnostic products, and the sale of research products to the research community.

RGI-1 enables us to rapidly and reliably isolate RNA and DNA from FFPE tissues.

IPSCIO Record ID: 293547

License Grant
The Research Foundations for the universities grant the right to Licensee.
Licensee shall, in the Field, in the Territory and during the Term, have
(a)
an exclusive license under Patent Rights; and
(b)
a nonexclusive license to use Know-How;
to make, manufacture, use, sell, have sold, lease, have leased, and offer for sale Licensed Products, including the right to grant Sublicenses as set forth in agreement. This license shall include the right to have Licensed Product made, manufactured or imported by Third Parties solely and exclusively for sale or use by Licensee, Sublicensees, Designees, and Affiliates of any of the foregoing. This license may be subject to the overriding obligations to the U.S. Government set forth and any future amendments thereto, and applicable governmental implementing regulations, including but not limited to those described herein.
License Property
Licensed Products means Patented Products and/or Other Products.

Patented Product means any products or service (or component thereof) that (i) if made, manufactured, used, offered for sale, sold, imported, leased or otherwise transferred within the Territory, but for the license granted herein, would infringe Patent Rights, or (ii) are made by using a Licensed Service, or (iii) when used, practice a Licensed Service. As used within this Agreement, the term 'Patented Products' includes 'Licensed Services'.

Other Products means any product or service (or component thereof), specifically excluding any product or service that is a Patented Product, the discovery, development, manufacture, use, sale, offering for sale, importation, exportation, distribution, rental or lease of which involves the use or incorporation, in whole or in part, of Know-How.

Inventions means any and all patentable inventions described in the provisional patent applications listed or in the invention disclosures NTD 2031-110 and NTD 2032-110, whether such Inventions are owned by one or both Licensors, or such Inventions are owned jointly by Licensee and one or both Licensors.

NTD 2031-110 means Foundation New Technology Disclosure 110-2031, entitled 'Method of normalizing epigenetic sequencing data to account for temporal variations,' and the counterpart disclosure to PSRF, Invention Disclosure 2017- 4601.

NTD 2032-110 means Foundation New Technology Disclosure 110-2032, entitled 'Method of identifying brain injuries and symptom duration through epigenetic analysis,' and the counterpart disclosure to PSRF, Invention Disclosure 4571, entitled 'Salivary microRNA Diagnostic/Prognostic Concussion Test'.

Patent Rights means Licensors rights to any subject matter that is claimed in, could be claimed in, or is otherwise Covered By one or more Valid Claims in any Licensed Patent.

Licensed Service means (i) any method, process, procedure or service that, but for the license granted herein, would infringe Patent Rights or is otherwise Covered By a Valid Claim in Patent Rights or (ii) any method, process, procedure, or service that results in the manufacture of a Patented Product.

Licensed Patents means any patent application filed claiming Inventions, including the patent applications, and continuing applications thereof including divisions, substitutions, and continuations-in-part (but only to extent a claim thereof is enabled by disclosure of the parent application), and any patents issuing on said applications including reissues, reexaminations and extensions, and any corresponding foreign applications and issued patents.

Field of Use
Field means diagnostic methods, services and devices for traumatic brain injury.

IPSCIO Record ID: 169073

License Grant
Licensor hereby grants to Licensee an exclusive, world-wide right and license in the field of use to use the licensed trade secrets and know how only in  connection with Licensees research, development, testing, marketing, promotion, manufacture, use, offer, sale and distribution of Licensed products and methods.

In consideration of the terms and conditions set forth in this Agreement, Licensor hereby grants to Licensee an exclusive, world-wide right and license under the Licensed Patent Rights in the field of use to make, have made, use, offer, sell and distribute Licensed Products and Methods.  Licensee shall have the right to sublicense others under the Licensed Patent Rights in the field of use.

License Property
Licensed Products and Methods shall mean and include any apparatus, product, service, method or process made by, made for, used, offered, sold or distributed by Licensee that falls within the scope of any valid claim (as hereinafter defined) of the Licensed Patent Rights and/or uses or is otherwise based in whole or in part on any of the Licensed Trade Secrets and Knowhow.

Licensed Patent Rights shall mean and include Licensors United States Patent Application No. 08/733,808 (titled Methods and Apparatus for Translating between Languages), filed October 18, 1996, naming Julius Cherny as inventor, any divisions, continuations or continuations-in-part  thereof, any patent or patents that issue on any of the foregoing, together with any reissues, reexaminations, renewals or extensions of any such patent or patents, together with any foreign patents or applications for foreign patents that correspond in whole or in part to any of the foregoing.

Licensed Trade Secrets and Knowhow shall mean and include trade secrets, knowhow and other confidential research, development and commercial information owned, possessed or developed by Licensor in the field of language translation relating to apparatus and methods for translating words, phrases and sentences in oral or written  form from a source language to other target languages using advanced telecommunications and computer technologies, including, without limitation, the apparatus and methods described and claimed in Licensors United States Patent Application No. 08/733,808, which will remain confidential trade secrets and knowhow until a patent issues and those trade secrets and that knowhow are disclosed to the public.

Valid Claim shall mean and include any issued, unexpired claim of the Licensed Patent Rights that Licensor has not expressly admitted in writing to be invalid or unenforceable, or that has not been held invalid or unenforceable by a court, tribunal or governmental agency of competent jurisdiction, or that has not been held invalid or unenforceable as a result of an opposition proceeding, reissue, reexamination, dedication, disclaimer or otherwise, and, in the case of a holding or decision, cannot be appealed or has not been appealed within the time allowed for appeal.

Field of Use
This agreement pertains to the educational industry relating to the Field of Use that shall mean and include the field of translating words, phrases and sentences in oral or written form from a source language to other target languages.
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