Royalty Report: Diagnostic, Medical, DNA – Collection: 280824

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 20

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: 20

Primary Industries

  • Diagnostic
  • Medical
  • DNA
  • Device
  • ribonucleic acid
  • Assay
  • Drugs
  • Disease
  • Scientific & Technical Instruments
  • Drug Discovery
  • Test/Monitoring
  • Genome
  • Software
  • Medical Info
  • Cancer
  • HIV / AIDs
  • Bacterial Infection

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: 280824

License Grant
Licensor grants a non-exclusive, world-wide, non-transferable license in the Field under the Patent Rights to make, have made, import, use, offer to sell and sell Disposable Licensed Products and Instrument Licensed Products, to practice Licensed Processes and to pass on to Licensees direct and indirect purchasers of Disposable Licensed Products and Instrument Licensed Products the right to practice Licensed Processes in the Field.
License Property
Disposable licensed product shall mean any probe array, substrate, reagent, kit or component or combination thereof in the Field, the manufacture, use or sale of which, but for the licenses granted under this Agreement, would infringe a claim in the Patent Rights.

Instrument licensed product shall mean any instrument, system or component or part thereof in the Field, the manufacture, use or sale of which, but for the licenses and rights granted under this Agreement, would infringe a claim in the Patent Rights.

Field of Use
The Field shall mean systems for detecting hybridization of target DNA/RNA to known DNA/RNA, PNA or other nucleic acid probes. The system will be used only for high and/or low resolution sequence determination and will consist of a micro-fabricated semiconductor device designed to be used with an array of probes attached to a solid support, means for exposing the array of probes to target DNA/RNA (the sample), means for detecting whether or not (and where) hybridization has occurred and means for reporting the results.

IPSCIO Record ID: 248334

License Grant
Licensor hereby grants to Licensee the right and license in the territory for the field of use to practice under the patent rights and, to the extent not prohibited by other patents, to make. have made, use, lease, sell and import Licensed products and to practice the licensed processes, until the end of the term for which the patent rights are granted unless this Agreement shall be sooner terminated according to the terms hereof.
License Property
Patent Rights shall mean all of the following Licensor, HARC (the Houston Advanced Research Center), and BCM (Baylor College of Medicine) intellectual property

U.S. Patent  M.I.T. Case No. 5722L 'Genosensors For DNA Decoding'
including patent applications
USSN 07/794.036 (* ABANDONED*) 'Method and Appararus for Molecule Deteetion'
USSN 08/353.957 (Divisional of 07/794.036) 'Multi-Site Molecule Detection Apparatus'
USSN 08/457,096 (Divisional of 07/794.036) 'Multi-Site Molecule Detection Method'
M.I.T. Case No. 6838L 'Optical and Electrical Methods and Apparatus for Molecule Detection (formerly part of 5722L)'
USSN 07/872.582 (CIP of 07/794,036) 'Optical and Electrical Methods and Apparatus for Molecule Detection'
USSN 08/511.649 (Divisional of 07/872.582) 'Optical and Electrical Methods and Apparatus for Molecule Detection'

Field of Use
Field of Use shall mean all fields of use except the field of use of a Genosensor System previously licensed to Beckman Instruments. Inc. pursuant to the  Licensor patent license agreement dated May 28, 1993, which term 'Genosensor System' is defined in a Collaboration Agreement among Licensor,  Beclcman Instruments. Inc , Licensee and certain others, dated May 28, 1993 and amended November 5, 1993 to read 'the system developed by the parties as generally described in the Award proposal for detecting hybridization of target DNA/RNA to known DNA/RNA. PNA or other nucleic acid analog probes. The system will be used only for high and/or low resolution sequence determination and will consist of a microfabricated semiconductor device ('Genosensor Chip' or 'Chip') designed to be used with an array of probes attached to a solid support, means for exposing the array of probes to target DNA/RNA {the sample). means for detecting whether or not (and where) hybridization has occurred and means for reporting the results. The solid support can be the Genosensor Chip itself or a separable support.'

IPSCIO Record ID: 263967

License Grant
This license agreement is Included with an asset purchase agreement between this Licensee/Seller and a Third Party Buyer.

University hereby grants to Licensee a right and license to make, have made, use, lease, offer to sell, sell, otherwise commercially dispose of, export and import Licensed Products,  to practice Licensed Processes, in each case directly or by sublicense and only for commercial purposes, including providing services to third parties and for Licensees research and/or development in the Field of Use within the Territory during the Term.  

For the Option,  University hereby grants Licensee an option to acquire a non-exclusive, worldwide, royalty-bearing license within the Field of Use under the Optioned Patent Rights to make, have made. use, sell and offer for sale products, processes and services within the Field of Use.

License Property
The intellectual property relates to Sequencing of Biopolymers by Mass Spectrometry.

The Products associated with the Claimed Technologies are specifically SpectroCHlPs; QGE Software;  and,  QGE assays sold through Assays by Licensee. The Products may be amended from time to time.

Field of Use
The field of use is all uses.

IPSCIO Record ID: 144892

License Grant
Licensor grants a non-exclusive, non-transferable license under Patent Rights to practice Licensed Methods in the Field within Licensors laboratories and to make, have made, use, and export Licensed Products solely for use byLicensee, in the practice of Licensed Methods in the Field. License grant shall not include the right to sell Licensed Product and/or Licensed Method to third parties.
License Property
Licensor owns certain patents covering compositions and processes for detecting ribosomal nucleic acid subsequences belonging to groups of non-viral organisms.

The patents refer to Methods for Detection. Identification and Quantification of NonViral Organisms.

Field of Use
The Field shall mean the performance of human, clinical diagnostic Assays and Assay Series using one or more nucleic acid probes, including peptide nucleic acid probes and probes with modified sugar or phosphate groups, which are designed to detect whether or not bacteria are present in a sample by hybridizing to one or more pan-bacterial regions of ribosomal nucleic acid, whether ribosomal RNA or ribosomal DNA, in order to determine the presence or amount of bacteria which may be present in a human sample. 'Field' shall not include Assays and Assay Series only to detect, quantitate or identify any group of organisms less than or different than that encompassing all bacteria.

IPSCIO Record ID: 243464

License Grant
For the Conditional Non-Exclusive License to Licensee for Instruments, Licensor grants to a nonexclusive, world-wide license under Licensors interest in the Intellectual Property to make, have made, and import, Instruments outside of the Collaboration Field.

For the Non-Exclusive License to Licensee for Instruments Developed Outside the Joint Development Program, Licensor grants a non-exclusive, world-wide license under Licensors interest in Collaboration Licensors Intellectual Property to make, have made, use, import, offer to sell, and sell instruments outside the Collaboration Field.

For the Non-Exclusive License to Licensee for Instruments,  Licensor grants to a non-exclusive world-wide license under Licensors interest in the Intellectual Property to use, offer to sell, and sell Instruments outside of the Collaboration Field.

This agreement also includes exclusive grants from Licensee to Licensor.

License Property
Licensee has certain skills, proprietary technology and know-how related to the manufacture, design and use of Assembled Arrays.

Licensor has certain skills, proprietary technology and know-how related to the development of bioanalytical instrumentation systems and associated reagents and the marketing, sales and support of products incorporating such systems.

Licensor has DNA Synthesis and Purification Patents  referred to as the Caruthers Process and Caruthers Reagents, and related patents.

Field of Use
Collaboration Field means the field of Zip Code Chemistry used in combination with Assembled Arrays.

Nucleic Acid Analysis Field means the field of characterization of a nucleic acid sample including but not limited to the determination of the relative abundance of the nucleic acid, all or part of a sequence of the nucleic acid, or variations in the sequence of the nucleic acid. The Nucleic Acid Analysis Field excludes the Collaboration Field.

The Parties are designing product based on the Array of Arrays for SNP genotyping. The first SNP genotyping assay format that Licensee intend to commercialize will be PE Biosystems' proprietary OLA ZipCode assay format. This assay format enables the creation of a universal Array of Arrays that can be used to analyze any set of SNPs.

IPSCIO Record ID: 240580

License Grant
Licensor, subject to the terms and conditions of this Agreement hereby grants to Licensee and Licensee accepts a non-exclusive, royalty-bearing. world-wide, non-transferable license under the Licensed Patents to make, have made, import, use, offer to sell . and sell Licensed Products, to practice Licensed Processes and to pass on to Licensees direct and indirect purchasers of Licensed Products the right to practice Licensed Processes.
License Property
U.S. Patent No. 5,653,939 – Optical and electrical methods and apparatus for molecule detection.

Licensed Product shall mean and include any Instrument Licensed Product or Disposable Licensed Product.

Disposable Licensed Product shall mean that probe, array, substrate, reagent, kit or component or combination thereof in the Licensed Field, the manufacture, use or sale of which, but for a license granted under this Agreement, would infringe a claim in the Licensed Patents.

Field of Use
Licensed Field shall mean all fields of use except the field of use of a Genosensor System licensed to Beckman Instruments, Inc. pursuant to the license agreement between MIT and Beckman dated May 28, 1993, and shall have the same meaning as now stated in the MIT/Genometrix Agreement.

IPSCIO Record ID: 203553

License Grant
Licensor grants a worldwide, non-exclusive, non-transferable, license under Licensed Patents and Licensed Know-How, to make (not including have made), import, export, use, offer to sell, and sell Licensed Products in the Licensed Field.
License Property
The licensed patents relate to Hybridization assay using self-quenching fluorescence probe.

'Licensed Patents' means U.S. Patent Nos. 6,030,787; 5,723,591; and 5,876,930, including any Related Patent

'Licensed Product' means any product for use in the Licensed Field, (A) that does not comprise a nucleic acid probe that is susceptible to the 5'-nuclease activity of a polymerase and, (B) (a) which, but for the license granted herein, manufacture, use or sale thereof would infringe at least one Valid Claim of a Licensed Patent, and/or (b) which otherwise uses, incorporates or was developed or manufactured using Licensed Know-How.

Licensed Know-How means any Confidential Information transferred by Licensor to Licensee in connection with activities performed pursuant to the Collaboration Agreement.

'Authorized Oligonucleotide Synthesizer' means an Instrument whose use for automated oligonucleotide synthesis is covered by the up-front fee component of a license under the Process Patents. That up-front fee component may be obtained through the purchase of Instruments bearing a valid label conveying that up-front component, such Instruments being available from Licensor (all Licensor's synthesizers are Authorized) or from other suppliers who have contracted with Licensor to pay that up-front fee component on behalf of their customers. Alternatively, that up-front fee component may be purchased from Licensor.

'Cleavage Assay' means an assay in which the detection of a nucleic acid sequence includes the cleavage of a nucleic acid probe, including, but not limited to, the TaqMan assay.

Field of Use
The Licensed Field means nucleic acid analysis techniques that do not comprise a Cleavage Assay.

Epoch's Eclipse(TM) probe assays, scheduled for release this summer, will allow affordable, reproducible and sensitive measurement of gene expression and detection of genetic polymorphisms for academic, biotech, diagnostic and pharmaceutical researchers.

IPSCIO Record ID: 299242

License Grant
English Licensor hereby grants to Licensee and Licensee accepts, a non-exclusive, royalty-bearing, worldwide sub-license under the Licensor Patent Rights to manufacture, have manufactured and use Nucleic Acid Arrays for internal purposes only, to create and contribute to the creation of Licensee Ratio-based Databases, and to Supply and offer for Supply Royalty-Bearing Services, in each case in all fields other than the Excluded Fields.
License Property
Nucleic Acid Array means an array of nucleic acids attached to a solid support.

Licensee Ratio-Based Database means a Database containing relative levels of expressed genes within or between cells wherein such Database may be built from data where measurements from one RNA sample are compared with those from another RNA sample; provided, however, a Licensee Ratio-based Database shall in no event include an Incyte Expression Database.

Resolver Software means Licensees software package with features.

Instrument means readers, fluids stations, hybridization devices, sample logging, handling and processing systems, detection and measurement equipment, computer work stations (and associated software) and other instruments or systems used in the preparation or use of Nucleic Acid Arrays or the extraction or processing of data from Nucleic Acid Arrays.

Patent Rights means U.S Patents #5,700,637 and 5,436,327 and International Application No. PCT/GB/89/00460 and PCT/GB/89/01114 and all continuations, continuations-in-part, divisionals, re-examinations and reissues, and any patents issuing therefrom or claiming common priority thereto, together with any other patents which issue to Licensor, or which otherwise come into the ownership or under the control of Licensor during the Term and which Licensor has the right to license, and which relate, but only to the extent that they relate, to the general use of Nucleic Acid Arrays, including methods for making or analyzing Nucleic Acid Arrays and for creating Licensee Ratio-based Databases, but excluding therefrom any such patents that relate but only to the extent that they relate to instrumentation for the reading of Nucleic Acid Arrays, the design of probes for use on Nucleic Acid Arrays, particular sequences used on Nucleic Acid Arrays, software used in instrumentation for reading Nucleic Acid Arrays or in probe design, microfluidics or the control or assurance of the quality of Nucleic Acid Arrays.
5,700,637 – Apparatus and method for analyzing polynucleotide sequences and method of generating oligonucleotide arrays
5,436,327 – Support-bound oligonucleotides

Licensed Product means a Nucleic Acid Array and any component thereof, an Instrument, kit, reagent, computer software or other product, apparatus or composition of matter of whatever nature which is Covered by a Valid Claim, but not including a Database or other information (other than a Database or information which is an integral part of a product).

In-Situ Inkjet Synthesis means a method for the fabrication of Nucleic Acid Arrays on a solid support by synthesizing by chemical means individual nucleic acids directly on such solid support at specific locations on the Nucleic Acid Array using an inkjet printing device to deliver to defined locations on the surface of the solid support precursors for or reagents which allow mononucleotide additions.

Incyte Expression Database means a Database consisting entirely or substantially of gene expression data and containing at least five hundred data points, where a single data point is data relating to the level of expression of one gene in one sample.

Database means a collection of information derived from one or more Nucleic Acid Arrays, which is licensed for value to multiple third parties, but does not include a database for internal use exclusively by an Entity.

Field of Use
This agreement pertain to the drug industry in all fields other than the Excluded Fields.

Excluded Fields means any of the following activities
            (a)   the use of a Nucleic Acid Array for or in connection with any activity other than gene expression profiling or non-commercial genotyping;
            (b)   the exercise of any of the rights licensed under this Agreement for the purposes of the manufacture, having manufactured, use, Supply, creation or contribution to the creation of Incyte Expression Databases; and
            (c)  [the manufacture or having manufactured of Nucleic Acid Arrays by a method other than In-Situ Inkjet Synthesis.

Licensee is  a leader in the emerging field of informational genomics. Informational genomics involves acquiring, storing, and analyzing gene expression information gathered from throughout a cell to identify a majority of the medically important drug targets and gene functions. Licensee combines the power of informatics and genomics to create a proprietary platform that accelerates and enhances the drug discovery process for pharmaceutical and biotechnology companies and improves agricultural products.

IPSCIO Record ID: 237217

License Grant
For the Grant of Research License, Licensor grants to French Licensee a non-exclusive, non-transferable license under the Licensed Patents, without the right to grant sublicenses except to its Affiliates, to conduct research activities,  in the Field in the Territory and, in connection therewith, to practice the Licensed Methods on the Potential Targets for the limited purpose of evaluating the possibility of selecting such Potential Targets as Targets and pursuing the commercial development of Licensed Products directed to such Targets.

For the Grant of Commercial License Option, Licensor grants the Commercial License Option.  The term Commercial License Option shall mean the non-exclusive, nontransferable option, exercisable only in accordance with the terms and conditions of this Agreement, granted to Licensee to exercise the license rights to commercialize Licensed Products.

For the Grant of Commercial License, Licensor grants a non-exclusive, non-transferable, license under the Licensed Patents, without the right to grant sublicenses except to Affiliates, to develop, have developed, to make, have made, use, offer for sale, sell, have sold, export or otherwise commercialize Licensed Products in the Field in the Territory solely under Licensees name and labels and, in connection with such Licensed Products, to practice the Licensed Methods.

License Property
Licensed Patents shall mean, collectively, the Hybrid Patents, RNA Patents and the Sequence Patents.  Licensor owns certain patents covering compositions, kits and processes for determining the presence or amount of nucleic acid derived from an organism or members of a group of target organisms.

Licensed Product shall mean Real Time NASBA Assays that may be developed by or for Licensee or its Affiliates for the detection or quantification of Targets in the Field and for operation solely on the Licensees Instrument.

Licensees Instrument shall mean the GeneXpert Instrument.  GeneXpert Instrument shall is the proprietary Licensee diagnostic system and related components, currently known as the GeneXpert System, which reads a fluorescence signal from reaction tubes utilizing· molecular beacons in specific assays.

NASBA shall mean Nucleic Acid Sequence Based Amplification, Licensees proprietary nucleic amplification method.

Field of Use
Field shall mean the field of clinical testing of human specimens for the purpose of diagnosis, prognosis or monitoring the progress of disease in the human from whom the specimens were taken and safety testing of finished food products for human consumption to detect the presence of harmful organisms, but excluding testing of food production processes and quality control methods in food production processes. For the avoidance of doubt, the Field specifically does not include (y) nucleic acid probe-based testing of human blood, plasma or other blood products intended for direct transfusion or administration to humans or (z) clinical diagnostic testing to measure the sensitivity of an organism to antimicrobial agents.

Potential targets.
Streptococcus pneumoniae**
2. Haemophilus influenzae
3. Escherichia coli
4. Mycoplasma pneumoniae**
5. Chlamydia pneumoniae**
6. Legionella spp**
7. Campylobacter
8. Staphylococcus
9. Neisseria meningitiidis
10. Candida spp*'
11. Aspergillus**
12 Mycobacterium Tubercu.losis**

IPSCIO Record ID: 237227

License Grant
For the Exclusive License, Licensor grants a world-wide exclusive license under Licensed Patents and Licensed Know-How to make, use, offer to sell, sell and import Licensed Products in the Exclusive Licensed Field.

For the Non-Exclusive License, Licensor grants a world-wide nonexclusive license under Licensed Patents and Licensed Know-How to make, use, offer to sell, sell and import Licensed Products in the Non-Exclusive Licensed Field.

License Property
Licensed Patent means U.S. Patent titled Covalently Linked Oligonucleotide Minor Groove Binder Conjugates.

Licensed Product means any product for use in the Exclusive Licensed Field or the Non-Exclusive Licensed Field which, but for the license granted hereunder, manufacture, use or sale thereof would infringe at least one Valid Claim of a Licensed Patent, or which otherwise uses, incorporates or was developed or manufactured using Licensed Know-How.

Licensor has rights under certain patents pertaining to oligonucleotides having a minor-groove binding moiety covalently attached thereto (MGB Oligonucleotide), and methods for making and using such MGB Oligonucleotides.

Licensor has certain know-how relating to the synthesis of MGB Oligonucleotides, and the design of sequence-specific probes comprising such oligonucleotides.

Field of Use
Exclusive Licensed Field means  the  5-Nuclease Assay Field.

Non-Exclusive Licensed Field' means (1) use of MGB Oligonucleotides as ligation probes in an oligonucleotide ligation assay, generally as described in U.S. Patent No. 4,883,750; (2) use of MGB Oligonucleotides in an assay employing a sequence-specific hybridization pull-out step subsequent to a litigation and/or primer extension reaction; (3) use of MGB Oligonucleotides as primers in a primer extension reaction, including but limited to a PCR reaction or a DNA sequencing reaction, and (4) use of MGB Oligonucleotides in the Real-Time Nucleic Acid Monitoring Field, to the extent that (1), (2), (3) and (4) are practiced outside of the Exclusive Licensed Field and practiced outside of the HIVD Field.

Human In Vitro Diagnostics Field (HIVD Field) means products and processes for the measurement of attributes, characteristics, diseases, traits or other conditions of a human being for the medical management of that human being.

IPSCIO Record ID: 10553

License Grant
Licensor grants to German Licensee a world-wide and non-exclusive, except regarding Desk Top Synthesizers, license to use the Technology only within the Field only for the purposes of (i) developing Content for Catalogue Arrays and Catalogue Cassettes and (ii) marketing, distributing, selling and having sold Licensed Products, in the Territory to End Users, together with a non-exclusive right to sublicense; provided that as a condition to marketing, distributing, selling, having sold, disposing or otherwise transferring any applicable Licensed Product to any End User,  The license granted for the marketing, distribution, sale, disposal or transfer from Licensee or its Affiliates of Desk Top Synthesizers shall be co-exclusive.

For the Trademarks, Licensor grants a non-exclusive, right and license in the Territory to use and refer to the Licensor names, trademarks, logos, symbols, designs, and other designations used in connection with the Licensed Products in order to advertise and market same to End Users.

Licensor agrees to grant a limited, non-exclusive right and license to manufacture the-Failed Product for use, sale and distribution in accordance with Licensee's rights under this Agreement.

License Property
Chips are used in pharmaceutical and genetic research.  The microchips contain synthetic sequences of DNA or proteins.

Licensor is the owner of intellectual property rights including Know-How and various patents, patent applications. copyrights and trademarks in the field of array technology including its proprietary micro array-technology.

Array(s) shall mean semiconductor-based Licensor supplied biochip(s) having nucleic acid biological probe arrays synthesized thereon contained in Cassettes in sets per Cassette of up to ten Arrays ready for introduction of RNA or DNA samples prepared from biological specimens.

Cassette(s) shall mean Licensor carrier(s) capable of holding multiple Arrays; when used without qualification, this term shall refer to Blank, Custom and Catalogue Cassettes without distinction. Custom Cassette(s) shall mean Cassettes containing Custom Arrays. Catalogue Cassettes shall mean Cassettes containing only Catalogue Arrays. Blank Cassettes shall mean Cassettes containing only Blank Chips.

Licensed Product(s) shall mean Catalogue Cassettes, Catalogue Arrays, Custom Cassettes, Custom Arrays, Blank Chips, Blank Cassettes, Hybridizer/Reader(s) together with Hybridizer Software, Desk Top Synthesizers, the Phone Booth Synthesizer provided for in Section 3.l(c), Web Services, consisting of Probe Design Software and Image Capture Software initially, and related Software, in each case, for applications only in the Field.

Desk Top Synthesizer shall mean a biochip synthesis unit for synthesizing Content onto Blank Chips that are arranged in a Cassette, as more fully described in and to be developed under the R&D Agreement.

Patents include
Electromechanical Solid Phase Synthesis of Polymers;
Electromechanical Solid Phase Synthesis;
Overlying Electrode in a biochip microarray;
A method of control of and display from devices for biological and chemical processing;
A method for selecting Oligonucleotides having low cross hybridization;
Automated system and process for custom designed biological array design and analysis;
Microarrays of peptide affinity probes for analyzing gene products and methods for analyzing products; and,Method for generating Ultre-fine spotted arrays.

Field of Use
Field shall mean assays and uses of Licensed Products relating to genetic analysis, testing and research of nucleic acid based genetic materials, and the creation, maintenance and/or commercialization of nucleic acid sequence based genetic databases for research purposes (including pharmaceutical research) and all diagnostic purposes and applications.

IPSCIO Record ID: 204355

License Grant
This amendment clarifies certain definitions and modifies the royalty rates.

In the original restated license, Licensor grants a world-wide exclusive license under Licensed Patents and Licensed Know-How, to make, use, offer to sell, sell and import Licensed Products in the Exclusive Licensed Field.

License Property
Licensor has certain know-how relating to the synthesis of MGB Oligonucleotides, including MGB Oligonucleotides containing modified bases, and the design of sequence-specific probes comprising such oligonucleotides.  MGB Oligonucleotide means Licensed Product comprising an oligonucleotide having a minor-groove binding moiety covalently attached.

The licensed know-how includes chemical structures, manufacturing methods and Algorithms, object code, source code and any other embodiments of methods or processes useful for predicting the melting temperature of MGB Oligonucleotides, whether patented, copyrighted, or not.

Field of Use
The Exclusive Licensed Field means the 5’-Nuclease Assay Field.  The 5’-Nuclease Assay Field means the detection of a nucleic acid sequence based on the cleavage of a nucleic acid probe that is hybridized to the nucleic acid sequence by a 5’ to 3’ nuclease activity of a polymerase enzyme.

IPSCIO Record ID: 291157

License Grant
Licensor shall (A) grant to Licensee a non-exclusive, non-transferable, royalty-free license to exploit such TAG Improvement for Licensees internal use, and (B) shall include internal use rights to use such TAG Improvement within the licenses granted to Product customers.

The purpose of the Collaboration is to develop, manufacture, market and sell (i) Products, and (ii) software applications for Approved Instruments all as set forth in this agreement. The purpose of the Collaboration may be modified and/or extended upon mutual agreement of the Parties in writing. If Licensee is the Party proposing the development of a new Generic Kit or Standard Kit, and Licensor does not, within sixty (60) days after receipt of such New Kit Notice expressly agree to co-develop the new Generic Kit or Standard Kit described therein, then Licensee may pursue development of the new Generic Kit or Standard Kit independently of Licensor and the result is a combination kit then a royalty will be paid.

License Property
TAG Array means a tag array GeneChip probe array. Each set of probes consists of four probes with the following relationship to a defined target sequence — a perfect match to target sequence, a single base mismatch to target sequence, a perfect match to the complement of target sequence, and, a single base mismatch to the complement of target sequence. For the avoidance of doubt, TAG Arrays include no license (express or implied) authorizing use for any purpose except genotyping with GBA.

TAG Assay means any assays for hybridization to a TAG Array.

TAG improvement is any improvements to TAG Assays.

Product means any of a Standard Kit, a Custom Kit and/or a Generic Kit.

Combination Kit means any Custom Kit that contains Primers more than 50% of which are identical to Primers contained in any part of any Standard Kits existing at the time of launch of such Custom Kit, or any combination of Standard Kits existing at the time of launch of such Custom Kit.

Custom Kit means a kit consisting of certain Reagents, certain Primers that have been customized by Licensee or Licensees subcontractors for use in the Field of Use and an End User License, and shall not include use of or refer to any use of TAG Arrays other than for genotyping with GBA.

Standard Kit means a kit consisting of Reagents, CMC Approved Primers for use in the Field of Use and an End User License.

Generic Kit means a kit consisting of Reagents and an End User License.

Primer means GBA primers (a synthetic oligonucleotide of a sequence known to be complementary with the oligonucleotide sequence immediately adjacent, 5, to a SNP) or either PCR primers or information to generate PCR primers.

Reagent means buffers, enzymes and terminators (but not Primers) useful in GBA.

GBA means Genetic Bit Analysis, or single nucleotide primer extension methods designed to detect the identity of a single nucleotide at a predetermined location in the DNA of a sample.

SNP means Single Nucleotide Polymorphism.

Technology means and includes all inventions, discoveries, improvements, trade secrets and proprietary methods and materials, whether or not patentable, including but not limited to, samples of, methods of production or use of, and structural and functional information pertaining to, chemical compounds, proteins or other biological substances; other data; formulations; techniques; and know-how; including any negative results.

TAG Array means a tag array GeneChip probe array. Each set of probes consists of four probes with the following relationship to a defined target sequence — a perfect match to target sequence, a single base mismatch to target sequence, a perfect match to the complement of target sequence, and, a single base mismatch to the complement of target sequence. For the avoidance of doubt, TAG Arrays include no license (express or implied) authorizing use for any purpose except genotyping with GBA.

TAG Assay means any assays for hybridization to a TAG Array.

Field of Use
The first products to be commercialized by the alliance will include reagent kits for use with Licensor's new universal array designed to perform thousands of user-defined SNP analyses. The companies expect to follow this product launch with additional genotyping products that incorporate additional universal arrays and GBA reagents. Licensee will develop and manufacture GBA primer extension reagent kits that are directed to defined sets of SNPs and that can be customized by the end user. Licensor will develop and manufacture the universal GeneChip arrays.

Field of Use means the use of Product to practice GBA in Tag Array format in Approved Instruments for Research Purposes and clinical reference laboratories where work is performed under the Clinical Laboratory Improvements Act and explicitly excludes Products that have received marketing approval from the FDA.

IPSCIO Record ID: 291119

License Grant
Licensor offers to the polymerase chain reaction (PCR) process users commercial and non commercial license rights under these patents and patent applications for automated performance of the PCR process for research and certain other fields that include, inter alia, an up-front fee component based on the capacity of thermal cyclers used to perform the process.

Licensor grants to the Thermal Cycler Supplier the following personal, non-transferable, non-exclusive rights in the Territory under the Amplification Patent Rights
—  Thermal Cycler Supplier is hereby authorized to sell and distribute to end users under Thermal Cycler Suppliers name and trademarks the specific thermal cyclers and temperature cycling instruments, i.e. the Smart Cycler(R) System, Smart Cycler(R) XC System and GeneXpert(TM) Prototype, in the configurations described) and any thermal cycler or temperature cycling instrument containing one or more I-CORE(TM) modules manufactured by Thermal Cycler Supplier, but not otherwise to sell or distribute to thermal cycler suppliers, with a label conveying to end users, including Thermal Cycler Supplier itself, in the Fields the up-front rights of PCR process licenses under the Amplification Patent Rights, that  is, with an Authorized Thermal Cycler label; and
—  Thermal Cycler Supplier may advertise and promote such thermal cyclers and temperature cycling instruments and so labeled as Authorized Thermal Cyclers for PCR.

Licensor grants to Thermal Cycler Supplier a personal, non-transferable, non-exclusive right under the Amplification System Patent Rights to convey to end-user customers, including Thermal Cycler
Supplier itself, of Thermal Cycler Suppliers Authorized Thermal Cyclers a non-exclusive license to use the same in the Fields in the Territory.

License Property
The patents include
—  describing and claiming gene amplification processes including, among others, a process known as the polymerase chain reaction (PCR) process, which are owned by Roche Molecular Systems, Inc., and amplification process claims in corresponding counterpart patents and patent applications in other countries, and,
—  automated apparatus suitable for performing the PCR process, and apparatus claims in corresponding counterpart patents and patent applications, and,
—  improvements in thermal cycling apparatus for- PCR, including a pressing heated cover, and corresponding counterpart patents and patent applications in other countries,and,
—  describing and claiming an amplification system comprising PCR reagents and a thermal cycler programmed to carry out a PCR protocol,and,
—  claim automated performance of the PCR process using certain programmed thermal cyclers.
Field of Use
Licensee has received a license from Licensor for thermal cycling limited to the fields of life sciences research, industrial testing, aspects of identity testing and forensics. Licensee will require a license for thermal cycling in additional fields, such as clinical diagnostics.

Licensee's I-CORE module is a low-cost, self-contained instrument for performing and continuously monitoring chemical reactions such as PCR. Each module can optically measure up to four separate reactions. The I-CORE module rapidly and accurately controls the heating and cooling of the sample, which allows for fast reactions and accurate results. I-CORE modules can be configured into a variety of DNA analysis instruments or can be sold to manufacturers of large clinical and research instruments for incorporation into their instrument platforms. The I-CORE module is a key component in both our Smart Cycler and GeneXpert families of products.

The discovery of PCR and other amplification techniques dramatically improved the turnaround and time sensitivity of DNA probe assays. PCR acts on a target molecule to generate a million or more copies of the target nucleic acid sequence through repeated cycles of heating and cooling. Originally, this thermal cycling was accomplished by manually moving the sample between hot and cold water baths. Detection is typically accomplished by tagging the DNA with fluorescent dyes and manually placing the amplified sample on a gel to read it. Later, thermal cyclers were developed to automate the heating and cooling functions, and fluorimeters were developed to read the fluorescent signal.

Fields shall mean research and development, quality assurance or control, environmental testing, plant diagnostics, identity testing (other than parentage testing for humans) and forensics.  The Fields specifically exclude human and veterinary diagnostics.

IPSCIO Record ID: 233461

License Grant
The Swiss Licensor grants a non-exclusive license under the Licensed Patents as follows
– to make, have made, import, use, offer to Sell and Sell Licensed Products in the In Vitro Human Diagnostics Field in the Territory, and authorize End-Users to perform Diagnostic Services using such Licensed Products in processes covered by the Licensed Patents in accordance with the label license provided with the purchase of such Licensed Products.
– to grant a limited, non-transferable, royalty free sublicense under the Licensed Patents to Research Collaborators of Licensee and/or its Affiliates to practice PCR under their respective contracts with Licensee and/or its Affiliates, in accordance with the terms and conditions of this Agreement, solely for purposes of doing applied research and development for Licensee and/or its Affiliates of Licensed Products to be Sold in the In Vitro Human Diagnostics Field in accordance with the other terms and conditions of this Agreement; and
– to use PCR technology for the research, development, improvement and quality control and quality assurance of Licensed Products, in each case by Licensee and its Affiliates, internally, for Sale in the In Vitro Human Diagnostics Field.

For Label Licenses on Licensed Products Sold in the In Vitro Human Diagnostics
– Licensees right to sublicense is limited to the right to convey use rights pursuant to a Label License under process claims and composition of matter claims,not apparatus, device or system claims, only to End-User customers, and only through the Sale of Licensed Products.
– Licensee agrees that it shall mark conspicuously all Complete Diagnostic Kits made by or for it,
– Licensee agrees that it shall mark conspicuously all Component Systems for amplification made by or for it
– Licensee agrees that it shall mark conspicuously all Component Systems for detection made by or for it
– Licensee agrees that it shall mark conspicuously all Component Systems for amplification and detection made by or for it
– Licensee agrees that it shall mark conspicuously all Royalty Products other than Complete Diagnostic Kits, Component Systems for amplification, Component Systems for detection and Component Systems for amplification and detection made by or for it and Sold in the In Vitro Human Diagnostics Field.

License Property
The Complete Diagnostic Kit means a product dedicated for use in connection with the practice of PCR in the In Vitro Human Diagnostics Field, it being understood that a product shall be deemed to be so dedicated if it is either  a product having a package insert indicating its use primarily in connection with the practice of PCR; or a product which by virtue of its design, operation or construction has no other substantial practical utility, and which product is comprised of, at a minimum, the essential active reagents for amplification and detection of a target nucleic acid in the In Vitro Human Diagnostics Field. For purposes of this Agreement, Licensee shall only convey the necessary rights for End-Users to perform PCR in the In Vitro Human Diagnostics Field with the Sale of a Complete Diagnostic Kit.

Licensed Product means a product for use in the In Vitro Human Diagnostics Field, the manufacture, importation, use, offer for Sale or Sale of which would infringe a Valid Claim of Licensed Patents, made by or specifically for Licensee or any of its Affiliates only pursuant to Licensees or its Affiliates specifications, which is any of the following or a combination of any of the following
(a) Complete Diagnostic Kit;
(b) A reagent, accessory, device or system which is used or Sold to be used by End-Users in connection with the practice of PCR, including the steps of sample preparation, amplification and detection;
(c) A Component System; and/or
(d) Reagents Sold to be used by End-Users as replacement components in regard to a Component System.

PCR means the polymerase chain reaction process and technology.

Patents relate to Process for Amplifying, Detecting, and/or Cloning Nucleic Acid Sequences.

Field of Use
This agreement is for the purpose of developing and commercializing PCR based in vitro human diagnostic products for use in clinical diagnostic testing;

The Human Identity Field means the field of use comprising products and processes utilizing PCR for the sole purpose of determining human identity or distinguishing among human beings, whether living or dead. The Term Human Identity Field shall included parentage testing to determine if two or more human beings are biologically related as parent and child and forensic testing for use in, or in preparation for, death investigations or other legal proceedings, but such term shall specifically exclude testing for tissue typing.

In Vitro Human Diagnostics Field means the field of use comprising products and processes utilizing PCR for the measurement, observation or determination of attributes, characteristics, diseases, traits or other conditions of a human being for the medical management of that human being, including without limitation
(a) genetic testing, including determinations of genetic predisposition;
(b) oncology and cancer predisposition testing;
(c) testing for tissue typing (excluding the Human Identity Field);
(d) infectious disease detection, screening, confirmation and monitoring; and
(e) therapeutic drug monitoring.

For purposes of this Agreement, the term 'In Vitro Human Diagnostics Field' shall not include the Human Identity Field.

“PCR” means the polymerase chain reaction process and technology involving the amplification of a nucleic acid sequence and the complement of that sequence by repeated cycles of oligonucleotide mediated, template directed synthesis involving the extension of a component primer oligonucleotide by incorporation of monomeric nucleotide triphosphates whereby the sequence, its complement and subsequent synthetic copies thereof are repeatedly separated and used as templates for further cycles of synthesis.

IPSCIO Record ID: 211873

License Grant
For TMA Qual Assays for Existing Instruments, Licensor grants a worldwide, non-exclusive, non-transferable, right and license, with no right to grant any sublicense to any Third Party, to research, develop, make, have made, use, import, offer to sell and sell Licensed Products for Existing Instrumentation.

For TMA Qual Assays for Future Instruments, Licensor grants a worldwide, non-exclusive, non-transferable right and license, with no right to grant any sublicense to any Third Party,

For the Option to Extend License{s), Licensor grants an option to extend the period(s) of these license rights granted.

License Property
The property include instrumentation, assays and patents.

bDNA means the fundamental branched nucleic acid method of signal amplification of nucleic acids.

bDNA Nucleic Acid Assays means Nucleic Acid Assays with respect to which bDNA is the sole method of amplification.

Blood Screening means (i) the screening of blood, plasma or blood components intended for transfusion or for use in blood products (e.g., immunoglobulins), and (ii) the screening of any biological materials intended for transfusion or transplantation, in each case, from any donor, including autologous donors.

HCV means hepatitis C virus.
HIV means human immunodeficiency virus.

Field of Use
Licensed is for nucleic acid test (NAT) for the detection of human immunodeficiency virus type 1 (HIV-1) and hepatitis C virus (HCV) in donated blood.

IPSCIO Record ID: 286033

License Grant
Licensor grants the following licenses for the Licensed Field only, which shall be exclusive, for the Bacteriology Field and non-exclusive for the balance of the Licensed Field
—  A worldwide license under the Patent Rights, Know-How and Copyrights included in Licensor Licensed Core Technology and Licensor Collaboration Technology to import, use, distribute and sell Licensed DNA Probe Arrays, and to incorporate or cause the incorporation of such Licensed DNA Probe Arrays, through processes of manufacture, into Licensed Diagnostic Assays, and to manufacture and have manufactured Licensed Diagnostic Assays, and to use, import, distribute and sell Licensed Diagnostic Assays.

With respect to Other Licensed Diagnostic Products that are to be used solely with a DNA Probe Array that has 10 or fewer Probes/cm(2) and is not included as a High Density Probe Array (Low Density  Probe Array), Licensor agrees to grant a nonexclusive, worldwide license in the Licensed Field under the Patent Rights included in the Licensor Licensed  Core Technology and the Licensor Collaboration Technology to make, have made,  use, import, distribute and sell and  under the Know-how and Copyrights included in the Licensor Licensed Core Technology and the Licensor Collaboration Technology to make, have made, copy, display, distribute, use, import and sell, all such Other Licensed Diagnostic Products for use with such Low Density Probe Arrays solely for use in the Licensed Field.

In addition to the foregoing license, Licensor grants with respect to Licensor Collaboration Technology, a nonexclusive, worldwide, research-use only license to use the Licensor Collaboration Technology outside of the Licensed Field for Licensees own research purposes pertaining to Clinical Diagnostics, and for the Licensed Field for Licensees purposes pertaining to this Collaboration and research and development in furtherance thereof.

For the option for non-exclusive Licenses in the Virology and HLA Fields, subject to pre-existing agreements, Licensor grants non-exclusive options to enter into non-exclusive licenses under Licensor Licensed Core Technology to expand Licensees products that would use Licensed DNA Probe Arrays to include categories of products for viral agents and products for the testing of human leukocyte antigens (HLA Class I and Class II allelic polymorphis) any condition, except for the diagnosis of cardiopulmonary disease to the extent that such rights have been previously granted on an exclusive basis to a third party (HLA option).

License Property
Licensed Diagnostic Product means a Licensed Diagnostic Assay or any Other Licensed Diagnostic Product.

Licensed Diagnostic Assay means a disposable diagnostic assay or reagent kit for use in Clinical Diagnosis,  which assay or kit incorporates a Licensed DNA Probe Array supplied by Licensor to Licensee pursuant to the Manufacturing Agreement or permissibly manufactured by Licensee in accordance with the Manufacturing Agreement.
    
Licensed DNA Probe Array means any High Density DNA Probe Array developed in the Collaboration, or based on specifications derived from prototypes so developed.

The Viral Agent Candidates include Adenovirus, Rotavirus, Herpes Simplex Virus Type II (when done in an STD panel), Enterovirus, Viral Influenza, Respiratory Syncytial Virus (as part of a respiratory panel), Viral encephalitis and Viral meningitis.

GeneChip system is the platform of choice for acquiring, analyzing and managing complex genetic information in order to improve the diagnosis, monitoring and treatment of disease.

GeneChip system consists of four integrated parts disposable DNA probe arrays containing genetic information on a chip housed in a cartridge, a fluidics station for introducing the test sample to the probe arrays, a scanner to read the data from the probe arrays, and software to control the instruments and to analyze and manage the genetic information. The GeneChip system is designed for use by pharmaceutical and biotechnology companies, academic research centers and reference laboratories.

Field of Use
The collaboration agreement is to develop GeneChip probe arrays for clinical diagnostic kits for bacterial identification and antibiotic resistance analysis.

The Licensed Field means the field which encompasses only the Bacteriology Field and the field of detection, identification and/or determination of resistance to treatment of four viral agents commonly included in bacteriology testing, to be elected by Licensee for use only in Clinical Diagnosis.

Bacteriology Field means the field of only detection and/or identification of bacterial and fungal microorganisms, and the determination of antibiotic resistance of such bacterial and fungal microorganisms, both for use in the Clinical Diagnosis of human disease.

IPSCIO Record ID: 282834

License Grant
Licensor grants to the Licensee (an affiliate) a non-exclusive, world-wide right and license under the Patent Rights to make, have made, import, use, sell, lease and otherwise dispose of Licensed Products in all fields, uses and applications except for the Bacteriology Field, to practice Licensed Processes, and to pass on to its direct and indirect customers of Licensed Products the right to practice Licensed Processes on any instrument or system distributed by Licensee under a Licensee trademark.
License Property
Licensed Product shall mean any Licensee Array Chip or component thereof or any product, kit, instrument or system which, but for the licenses and rights granted herein, would infringe any valid claim in an unexpired and non-lapsed patent in the Patent Rights.

Licensed Process shall mean any process, method or procedure the practice or use of which, but for the licenses and rights granted herein, would infringe any valid claim in an unexpired and non-lapsed patent in the Patent Rights.

Array Chips shall mean a series of polynucleotides arranged on a substrate to perform quantitative or qualitative analyses.

Licensee Array Chip shall mean an Array Chip which is sold or used by Licensee and, but for the licenses and rights granted herein, would infringe any valid claim in an unexpired and non-lapsed patent in the Patent Rights.

Gene shall mean a nucleic acid sequence or set of sequences encoding a distinct messenger nucleic acid and protein as well as polymorphic variants of such sequence.

Field of Use
The field of use is all fields except Bacteriology field.  Bacteriology Field shall mean and be limited to detection and or identification of bacterial and fungal microorganisms, and/or the determination of antibiotic resistance of such bacterial and fungal microorganisms, in each case limited to use in the Clinical Diagnosis of human disease.

IPSCIO Record ID: 383575

License Grant
Licensor of Switzerland grants a non-exclusive and non-transferable license, without the right to sublicense, under the Licensed Patents in the Territory with the rights to
—  incorporate Licensed Products into Licensee’s Complete Diagnostic Kits,
—  make, offer to sell and sell such Complete Diagnostic Kits in the Licensed Field, and
—  convey with the sale of such Complete Diagnostic Kits the right to use the Complete Diagnostic Kits under the Licensed Patents in the Licensed Field. Licensee’s right to use Complete Diagnostic Kits includes the right to perform evaluations and validations of Complete Diagnostic Kits, but specifically does not include the right to use Complete Diagnostic Kits for the performance of diagnostic services or testing, except that Licensee may use Complete Diagnostic Kits as End Users.
License Property
Licensor owns or controls certain Licensed Patents relating to chemically modified thermostable DNA polymerases, also known as Hot Start Enzymes, for use in polymerase chain reaction, or PCR, technology.

Licensed Product means a chemically modified thermostable DNA polymerase, the manufacture, use or sale of which is covered by one or more Valid Claims of the Licensed Patents, sold by Licensor, directly or through its distributor, or made and sold by a supplier licensed to make and sell the same.

Complete Diagnostic Kit means a Licensee manufactured and trademarked kit covered by one or more Valid Claims of the Licensed Patents, not covered by any Licensor patents other than the Licensed Patents and dedicated for use for PCR in the Licensed Field, and which Licensee manufactured and trademarked kit is comprised of, at a minimum, the essential active reagents used in the practice of PCR for nucleic acid testing in the Licensed Field. For the avoidance of doubt and for the sake of clarification, ASRs, Analyte Specific Reagents, are not Complete Diagnostic Kits.

U.S. Patent No. 5,677,152 — Issued October 14, 1997 (process and kit claims only) Nucleic Acid Amplification Using a Reversibly Inactivated Thermostable Enzyme

U.S. Patent No. 5,773,258 — Issued June 30, 1998 (process and kit claims only) Nucleic Acid Amplification Using a Reversibly Inactivated Thermostable Enzyme

U.S. Patent No. 6,127,155—Issued October 3, 2000 (reaction mixture claims only) Stabilized Thermostable Nucleic Acid Polymerase Compositions Containing Non-Ionic Polymeric Detergents

Field of Use
The Licensed Field means the field of use consisting of products or processes for the measurement, observation or determination of a disease, disease state or genetic predisposition to a disease, by detecting, quantitating, distinguishing and/or monitoring nucleic acids in samples of material originating from a human being for the medical management for that human being, but excluding
—  human identity testing, and
—  the following human disease targets Hepatitis A Virus, Hepatitis B Virus, Hepatitis C Virus, Human Immunodeficiency Virus, Human Papilloma Virus and Parvovirus B19; provided, however, that the said exclusions for the Human Papilloma Virus and Parvovirus B19 disease targets shall be limited to 3 years from the Effective Date after which time the Human Papilloma Virus and Parvovirus B19 disease targets shall be included within the Licensed Field subject to the royalty and other terms and conditions of this Agreement.

IPSCIO Record ID: 324667

License Grant
German Licensor grants to Licensee and its Affiliates a worldwide, non-exclusive license (without the right to sublicense) under the Licensed Patents (i) to make, to have made, to use, to have used, to import, to have imported, to offer to sell, to have offered to sell, and to sell and to have sold Licensed Products and to pass on to direct and indirect purchasers of Licensed Products the right to use such purchased Licensed Products and (ii) to perform Licensed Services.
License Property
The term Licensed Patent(s) shall mean those patents and patent applications which are listed below as well as any reexamination certificate, reissue, substitution, renewal, extension, addition, utility model or other patent right, U.S. or foreign, which has now issued or in the future may issue from any continuation, continuation in part or divisional application of such patents and patent applications.
US Patent #5,185,243 – Method for detection of specific nucleic acid sequences
US Patent #5,516,641 – Method for detection of specific nucleic acid sequences

The term Licensed Product(s) shall mean any human vitro diagnostic testing product and any other product whose manufacture, use, or sale would, but for the license granted under this Agreement, infringe any claim of a Licensed Patent which claim has not been held unpatentable, invalid or unenforceable by a decision of a  competent tribunal from which no appeal has or can be taken or which claim has not been admitted by the patentee to be invalid or unenforceable.

The term Licensed Services shall mean any services performed by using Licensed Products and any services the performance of which would in the absence of the license granted herein infringe any claim of a Licensed Patent which claim has not been held unpatentable, invalid or unenforceable by a decision of a competent tribunal from which no appeal has or can be taken, or which claim has not been admitted by the patentee to be invalid or unenforceable.

Licensor is a leading manufacturer and distributor of in vitro diagnostics, or IVD, products worldwide with a strong market position in each of the core product markets, which include chemistry/immunochemistry, hemostasis, microbiology and infectious disease diagnostics.

Field of Use
Field of Use is for human vitro diagnostic testing.

In Vitro diagnostics (IVDs) are diagnostic tests that that can detect diseases, conditions, or infections. In vitro diagnostics test a sample of tissue or bodily fluids, as opposed to testing inside the body

Licensee develops products for applications in the life sciences, oncology, reproductive health and other segments.

Disclaimer: The information gathered from RoyaltySource® database was sourced from the U.S. Securities and Exchange Commission EDGAR Filings and other public records. While we believe the sources to be reliable, this does not guarantee the accuracy or completeness of the information provided. Further, the information is supplied as general guidance and is not intended to represent or be a substitute for a detailed analysis or professional judgment. This information is for private use only and may not be resold or reproduced without permission.