Royalty Report: Drugs, Cancer, Vaccine – Collection: 279375

License Grant

The license granted by Licensor to Licensee shall be an exclusive license as to the agreed upon Field of Use, with a right to grant sublicenses, during the Term, to use, develop, make, have made, practice, import, carry out, manufacture, have manufactured, offer for sale, sell, offer for sale and/or have sold Products in the Field of Use in the Territory.

License Property

Products shall consist of any substance, device, apparatus or method covered in whole or in part by a Valid Claim useful to the diagnosis or treatment of disease or disorders utilizing a dendritic cell based vaccine for brain tumors and other cancers.

Field of Use

Field of Use is certain provisional patents and other proprietary intellectual property, relating to the work of Dr. John Yu with cellular therapies or diagnostics utilizing cellular therapies, including dendritic cell based vaccines for brain tumors and other cancers.  License is for a cancer vaccine therapy.

License Grant

For the Grant of Exclusive Rights, Licensor, nonprofit public benefit corporation, grants the exclusive, worldwide license, with the right to grant sublicenses, to conduct research in the Field of Use using the Patent Rights and the Technical Information and to develop, use, make, have made, practice, import, carry out, manufacture, have manufactured, offer for sale, sell and/or have sold Products in the Field of Use in the Territory using the Patent Rights and the Technical Information.

This agreement includes non-exclusive grants back from Licensee to Licensor.

License Property

The license is for certain technology for use as cellular therapies, including dendritic cell-based vaccines.

Field of Use

The Field of Use shall mean cellular therapies or diagnostics utilizing cellular therapies, including dendritic cell-based vaccines for neurological disorders including brain tumors and neurodegenerative disorders and other cancers.

License Grant

This amendment revises the listed patents.  Per the restated agreement, Licensor grants and agrees to grant to Licensee, upon the terms and conditions set forth in this Agreement, the exclusive rights under the Licensed Intellectual Property to make, have made, use and sell Licensed Products and Licensed Processes throughout the world and otherwise to exploit the Licensed Intellectual Property commercially throughout the world.

License Property

With this amendment, the patents are expanded and include Whole Recombinant Yeast Vaccine Activates Dendritic Cells and Elicits Protective Cell-Mediated Immunity, and, Yeast Dendritic Cell Vaccines and Uses Thereof, and, Yeast-Antigen Compositions And Methods Of Making The Same.

Field of Use

Per the restated agreement, the field of use is research and investigation for cancer therapies.

License Grant

Licensor grants the exclusive license, with the right to grant sublicenses, under and to the Patent Rights during the term of this Agreement to conduct research in the Field of Use and to make, have made, use, import , offer for sale, sell and/or have sold Products in the Field of Use in the Territory.

License Property

The patent is titled Use of Toll-like receptor Ligands as adjuvants to vaccination therapy for brain tumors.

Field of Use

The Field of Use shall mean the therapeutic treatment thereof in patients suffering from cancer, including glioblastoma.

License Grant

University hereby grants to Licensee the worldwide non-exclusive right and license in the Field, with the right to sublicense subject to this agreement, to make, have made, use, sell, offer for sale and import Licensed Products and to practice under the Patent Rights until the expiration of the last to expire claim of the Patent Rights, unless this Agreement is terminated sooner as provided herein.

License Property

7,297,337 – EphA2 T-cell epitopes and uses therefor
8,114,407 – EphA2 T-cell epitopes and uses therefor

Field of Use

Field shall mean use of Licensed Product or Patent Rights in or packaged with Licensee’s Proprietary Vaccine for administration to humans for the diagnosis, prevention and treatment of diseases and tumors of the brain. For the avoidance of doubt the Field specifically excludes use of Licensed Products and/or Patent Rights in the development of therapeutic vaccines or diagnostic tests for breast, ovarian, liver, pancreatic, colon and lung cancers.

Proprietary Vaccine shall mean a vaccine which is developed or being developed for a therapeutic indication based on biological activity that is solely-owned or in-licensed by Licensee from third parties and which is not covered by the Patent Rights and which is not Licensed Product hereunder. For the avoidance of doubt, the Il-13 Alpha2 Peptide Analogues licensed under the Exclusive Patent License Agreement shall constitute a Proprietary Vaccine.

License Grant

Licensor grants to a non-exclusive, sublicensable license to Licensors Intellectual Property in the Territory solely to use and import in the Field nucleic acid sequences encoding for one or more of the Initial Antigens, and to make, have made, use, sell, offer to sell and import Licensees Product(s) in the Field containing a nucleic acid sequence encoding for one or more of the Initial Antigens.

Licensor grants a non-exclusive, sublicensable license to Licensors Intellectual Property in the Territory solely to use and import nucleic acid sequences encoding for such Additional Antigen in the Field, and to make, have made, use, sell, offer to sell and import Licensee Product(s) containing a nucleic acid sequence encoding for such Additional Antigen in the Field.

For the Licensors Applicator and/or Licensors Custom Components,  Licensor grants an exclusive, sublicenseable license under the Licensors Patent Rights and Device Custom Know-How to use, sell, offer to sell and import Licensors Applicators and Licensors Custom Components solely for use with a Licensee Product in the Field.

For the Trademark License, Licensor grants a non-exclusive, sublicensable license in the Field in the Territory to use such trademarks and/or trade names Controlled by Licensor, to the extent that such trademarks and/or trade names relate to Licensors Technology, solely in connection with the use, sale, offer to sell and/or import of Licensee Product.

License Property

Licensors Intellectual Property shall mean Licensors Patent Rights and Technology,  meaning any and all patents and patent applications in the Territory (which for the purposes of this Agreement shall be deemed to include certificates of invention and applications for certificates of invention) which are Controlled by Licensor during the Term,  relating to  administration of vaccines by means of or with the assistance of electroporation; or claim or cover Licensors Device Modifications, Licensors Information and Inventions or Joint Information and Inventions; or are divisions, continuations, continuations-in-part, reissues, renewals, extensions, supplementary protection certificates, and the like of any such patents and patent applications, and any foreign equivalents thereof.

Field of Use

The Field shall mean the Licensors Device-assisted delivery of a DNA vaccine for prophylactic and/or therapeutic use in diseases or medical conditions in animals or humans involving hyper plastic and/or hypertrophic cell growth (including oncology) or infectious disease.

A single Indication shall include the primary disease and variants or sub-divisions or sub-classifications within such primary disease.  For example, for purposes of the Agreement, breast cancer is a single Indication; treatment of and first line treatment of refractory metastatic breast cancer shall be treated as sub-classifications within the single Indication of breast cancer.  Treatment and prophylaxis of the same disease (e.g. breast cancer) shall be treated as the same Indication.

License Grant

Pursuant to the Agreement, Licensee obtained an exclusive license under Licensor patent rights and know-how to develop, make, have made, use and sell Licensed Products in the Territory.

With this amendment the parties wish to amend the Agreement to provide for the reversion of rights to Licensor under the Licensor patent rights and know-how for Influenza vaccine, HPV vaccine and HSV vaccine.

As of the Amendment Effective Date, the license granted to Licensee, and the rights and obligations of Licensee and Licensor arising therefrom, shall no longer apply to Influenza vaccine, HPV Vaccine and HSV Vaccine, and these vaccines shall no longer be deemed to be Licensed Products under the Agreement.

Hereby amended Licensor grants to Licensee an exclusive license, even as to Licensor, under Licensor know-how and patent rights to develop, make, have made, use and sell Licensed products in the Territory with the right to grant sub licenses to Affiliates of Licensee and those persons or entities through whom Licensee, in the normal course of its business collaborates in the manufacture and sale of its products; provided however, that nothing in this Agreement shall prohibit Licensor from utilizing the Licensor know-how and/or patent rights, exclusive of Licensee know-how, to develop, make, have made, use and sell, either by itself or with one or more third parties, products for the treatment of infectious diseases provided, further, notwithstanding the preceding proviso, that Licensor shall not have any right to develop, make, have made, use, or sell, either by itself or with one or more third parties, Treatment Vaccines.

Licensor grants an option to obtain a license under theLicensor patent rights and know-how to make, have made, use, sell, offer to sell and import Cancer Vaccines in the Territory for up to three (3) Cancer targets. Such Cancer target license shall be exclusive, even as to Licensor, for each Cancer Target so licensed, and shall be sublicenseable by Licensee pursuant to the terms applicable to Licensed Products.

License Property

This amendment includes Amended Definitions Relating to Cancer targets, and, Licensed Product means a bulk or finished AIDS Vaccine, or other vaccine for the prevention of human infectious disease if licensed hereunder, which utilizes the Technology or technology which is developed by Licensor during and as a result of the research collaboration program; and upon the exercise of an Option for a Cancer vaccine, such bulk or finished Cancer vaccine for the prevention of Cancer Indications, provided, however, that if any vaccine is also capable of being used for treatment of the same human infectious disease or Cancer indication, then such therapeutic use of such vaccine shall also be considered a Licensed Product for purposes of the license being granted by Licensor to Licensee under this Agreement; and Treatment vaccines.

Treatment vaccines means a bulk or finished vaccine.

Field of Use

The field of use is for the treatment of Human Immunodeficiency Virus (HIV-1) and/or diseases caused by infection with HIV-1 in humans;  Hepatitis Virus (HBV) and or diseases caused by infection with HBV in humans; and Cancer vaccines for the treatment, but not prevention or prevention and treatment, of Cancer Indications.

License Grant

Licensor hereby grants to Licensee and exclusive license. Subject to any rights of the U.S. government specified in this agreement, in the Territory for the Field of Use, with the right to sublicense, under the Patent Rights, to make, have made for its own use and sale, use and sell Licensed Products and Licensed Processes.  

Licensor also hereby grants to Licensee an exclusive license to make. use. and/or sell the Licensed Materials in the Territory for Field of Use.  At Licensee’s request, Licensor shall provide Licensee with a reasonable amount of Licensed Materials so that Licensee may reproduce such Licensed Materials for the purpose of making, selling, or using Licensed Products or Licensed Processes.

Licensor grants to Licensee a six (6) month exclusive option to negotiate a worldwide royalty-bearing, exclusive license with right to sublicense for any Improvement.

License Property

The Podack Cancer Vaccine (UM97-14) technology shall mean the technology relating to a cell-based vaccine for treating cancer patients utilizes human cancer cells that have been engineered to secrete gp96.  The presently preferred version of the vaccine uses the AD100 human lung adrenocarcinoma cell line transfected with constructs that encode III.A-AI and gp96-Ig (heat shock protein gp96 fused to Fe region of IgGI).  In a presently preferred protocol, NSCLC patients are intradermermally administered several injections of 5×107 vaccine cells each at two week intervals.

Licensed Product shall mean any product or part thereof which
(a) is covered in whole or in part by an issued, unexpired, and not adjudicated unenforceable claim or a pending claim contained in the Patent Rights
(b) is manufactured by using a process which is covered in whole or in party by an issued, unexpired, and not adjudicated unenforceable claim or a pending claim contained in the Patent Rights or
(c) incorporated or comprises the Podack Cancer Vaccine (UM97-14) or the cell line “AD100-gp96/III.A”.

Patent Rights shall mean the following United States Patent applications  U.S. provisional patent application serial number 60/075.358 entitled “Modified Heat Shock Protein-antigenic Peptide Complex” and filed on February 20, 1998  U.S. patent application serial number 09 253.439 entitled “Modified Heat Shock Protein-Antigenic Peptide Complex” and filed on February 19, 1999  U.S. patent  application serial number 11/878.460 entitled “Recombinant Cancer Cell Secreting Modified Heat Shock Protein-antigenic Peptide Complex” and filed on July 24, 2008  all United States patents and foreign patents and patent applications based on these U.S. applications  all divisionals, continuations of the foregoing  and those claims in continuations-in-part of the foregoing that are described in sufficient detail in U.S. provisional patent applications serial number 60/075.358.  U.S. Patent application serial number 09 253.439, or U.S. patent application serial number 11/878.460 to meet the requirements of 35 U.S.C. 112¶1; and any re-examinations or reissues of the foregoing.  â€œPatent Rights” shall not include Excluded Patent Rights.

Licensed Materials shall mean any modified AD100 cell lines that have been engineered to secrete gp96.

Field of Use

Field of Use is for treating cancer patients and shall mean all human healthcare and research applications.