Royalty Report: Medical, Device, Surgical – Collection: 280958

License Grant

University foundation hereby grants to Licensee and its Affiliates an exclusive (even as to University), worldwide, fully transferable, sublicensable, irrevocable, non-terminable and cost-free (except for the Royalty and other remuneration provisions as provided hereof) license, continuing uninterrupted for the life of the Licensed Patents in the Licensed Territory to make, have made, use, offer for sale, import and sell Licensed Products and/or Licensed Processes claimed in the Licensed Patents for the Licensed Field.

University hereby grants to Licensee and its Affiliates a non-exclusive, license, in the Licensed Territory and the Licensed Field under the all Intellectual Property Rights (other than patent rights) in the Enabling Technology to make, have made, use, offer for sale, copy, disclose, and sell Licensed Products and/or Licensed Processes. Upon request of Licensee, University will deliver, or caused to be delivered, any Enabling Technology within the possession of the Inventors.

License Property

Licensed Patents shall refer to and mean all of the following patents and patent applications  U.S. Patent Application Serial No. 11/684,514, filed March 9, 2007, and the corresponding international PCT application (application number not yet assigned), filed March 9, 2007, titled Prosthetic Device and System and Method for Implanting Prosthetic Device; and all U.S. and foreign patent applications claiming priority to these applications or disclosing or claiming any Improvements, including without limitation divisional, continuation, and reissue applications and any patent(s)/patent application(s) claiming inventions resulting from the Research Agreement, whether or not such inventions are Improvements.

Field of Use

The invention relates to orthopedic joint replacement and, more particularly, to a prosthetic device for use in orthopedic joint replacement and a system and method for implanting the same.

License Grant

The parties agree to amend the original agreement in connection with the proposed assignment of the Agreement of Party A. This amendment refers to the Licensor granting and does hereby grant to Licensee an exclusive, worldwide license (with right to sublicense) upon the terms and conditions hereinafter specified to evaluate, make, have made, use and sell in the Territory the Surgical Clip Technology, the Licensed Products, Licensed Processes and the Technical Information and including, without limitation, Improvements, Patents and Improvement Patents.  Licensor shall retain the right to permit the Inventors to use any of the Surgical Clip Technology, the Licensed Products, Licensed Processes and Technical Information, and including, without limitation, Improvements, Patents and Improvement Patents for human, neurosurgical procedures performed only by them in their existing neurosurgical practice and only until Licensee has developed a potential Royalty Product for clinical field testing. Such usage shall be without compensation to or liability on the part of Licensee; but all of the same shall be treated by Licensor as confidential Information of Licensee during the term of this Agreement.

License Property

Licensed Product means any apparatus, product, or device within the Surgical clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Surgical Clip Technology means all of the patented or unpatented, patentable or unpatentable, scientific and technical information and know-how created and developed by the inventors during or previous to this Agreement relating to arrangements and techniques for surgical clips and applicators therefor, and includes, but is not limited to, the technology shown, described, and claimed in the patents and patent applications set forth and incorporated herein.
4,586,503 – Surgical microclip
4,733,664 – Surgical clip, applier, and method
4,983,176 – Deformable plastic surgical clip

Patent or Patent Rights are equivalent terms and shall mean any patent issuing on a patent application existing as of the effective date drawn to an invention within the Surgical Clip Technology and covering a Licensed Product Licensed Product, a Licensed Process or Technical Information including, without limitation, the patents and patent applications set forth and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on any later filed continuation-in-part application directed to substantially the same type of invention as that claimed in any patent or patent application listed.

Royalty Products mean products sold by Licensee and by any affiliate and/or sublicensee which are either (a) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents; or (b) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents, in combination with one or more Licensee Inventions.

The terms Micro Clip, Mezzo Clip, and Macro Clip and relate only to sizes and dimensions of surgical clips.

Improvement Patent means any patent issuing on a patent application which comes into existence on or after the effective date drawn to an invention within the Surgical Clip Technology covering a Licensed Product, a Licensed Process or Technical Information and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on a later filed patent application which is a continuation in part of any of the aforesaid patent applications and directed to substantially the same type of invention as that claimed in any such patent application.

Licensee Improvement Patent shall mean any Improvement Patent filed following the assignment date that is not a Post-Assignment Licensor Improvement Patent.

Post-Assignment Licensor Improvement Patent shall mean any Improvement Patent filed following the Assignment Date and containing at least one claim pertaining to an invention conceived in whole or in part by Licensor following the assignment date.

Licensed Process means any process, method, or technique within the Surgical Clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Field of Use

This agreement pertains to the medical industry relating to surgical clips for joining vessels and other surgical products, including wound closure products.

License Grant

Licensor agrees to grant and does hereby grant to Licensee an exclusive, worldwide license (with right to sublicense) upon the terms and conditions hereinafter specified to evaluate, make, have made, use and sell in the Territory the Surgical Clip Technology, the Licensed Products, Licensed Processes and the Technical Information and including, without limitation, Improvements, Patents and Improvement Patents.  Licensor shall retain the right to permit the Inventors to use any of the Surgical Clip Technology, the Licensed Products, Licensed Processes and Technical Information, and including, without limitation, Improvements, Patents and Improvement Patents for human, neurosurgical procedures performed only by them in their existing neurosurgical practice and only until Licensee has developed a potential Royalty Product for clinical field testing. Such usage shall be without compensation to or liability on the part of Licensee; but all of the same shall be treated by Licensor as confidential Information of Licensee during the term of this Agreement.

License Property

Licensed Product means any apparatus, product, or device within the Surgical clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Surgical Clip Technology means all of the patented or unpatented, patentable or unpatentable, scientific and technical information and know-how created and developed by the inventors during or previous to this Agreement relating to arrangements and techniques for surgical clips and applicators therefor, and includes, but is not limited to, the technology shown, described, and claimed in the patents and patent applications set forth and incorporated herein.
4,586,503 – Surgical microclip
4,733,664 – Surgical clip, applier, and method
4,983,176 – Deformable plastic surgical clip

Patent or Patent Rights are equivalent terms and shall mean any patent issuing on a patent application existing as of the effective date drawn to an invention within the Surgical Clip Technology and covering a Licensed Product Licensed Product, a Licensed Process or Technical Information including, without limitation, the patents and patent applications set forth and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on any later filed continuation-in-part application directed to substantially the same type of invention as that claimed in any patent or patent application listed.

Royalty Products mean products sold by Licensee and by any affiliate and/or sublicensee which are either (a) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents; or (b) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents, in combination with one or more Licensee Inventions.

The terms Micro Clip, Mezzo Clip, and Macro Clip and relate only to sizes and dimensions of surgical clips.

Improvement Patent means any patent issuing on a patent application which comes into existence on or after the effective date drawn to an invention within the Surgical Clip Technology covering a Licensed Product, a Licensed Process or Technical Information and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on a later filed patent application which is a continuation in part of any of the aforesaid patent applications and directed to substantially the same type of invention as that claimed in any such patent application.

Licensed Process means any process, method, or technique within the Surgical Clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Field of Use

This agreement pertains to the medical industry relating to surgical clips for joining vessels and other surgical products, including wound closure products.

License Grant

The Company and the University entered into a license agreement granting the Company an exclusive, worldwide right and license to use and sell products that utilize technology protected by the University of Pennsylvania’s patent rights for use in medical, dental and veterinary fields for growth of bone cells, fixing human prosthetic devices, coating human prosthetic devices, including bone growth onto or into modified human prosthetic device and/or producing human prosthetic devices.

License Property

The University owns and is a proprietor of certain intellectual property developed relating to novel materials and techniques for improving orthopedic implants.

Field of Use

Field of Use means the use of Penn Technical Information and/or Penn Patent Rights  for use in medical, dental and veterinary fields for growth of bone cells, fixing human prosthetic devices, coating human prosthetic devices, inducing bone growth onto or into modified human prosthetic devices, and/or producing human prosthetic devices.

License Grant

HOSPITAL hereby grants to COMPANY in the LICENSE FIELD in the LICENSE TERRITORY for the LICENSE TERM
  (i) an exclusive, royalty-bearing license under PATENT RIGHTS to make, have made, use, have used, sell, offer to sell, have sold, and TRANSFER PRODUCTS and to use, have used, otherwise practice and have practiced and TRANSFER PROCESSES;

  (ii) the nonexclusive right to disclose, use and transfer TECHNOLOGICAL INFORMATION disclosed by HOSPITAL to COMPANY hereunder; and

  (iii) the right to grant sublicenses under the rights granted.

License Property

This product has achieved FDA clearance, to market CoolSculpting, for the selective reduction of fat.

The Licensee is a medical technology company focused on developing and commercializing products utilizing the proprietary controlled-cooling technology platform.

The first commercial product, the CoolSculpting System, selectively reduces stubborn fat bulges that may not respond to diet or exercise. CoolSculpting is based on the scientific principle that fat cells are more sensitive to cold than the overlying skin and surrounding tissues.

CoolSculpting utilizes precisely controlled cooling to reduce the temperature of fat cells in the treated area, which leads to fat cell elimination through a natural biological process known as apoptosis, without causing scar tissue or damage to the skin, nerves, or surrounding tissues. Our clinical studies demonstrate that a single CoolSculpting procedure safely, noticeably, and measurably reduces the fat layer within a treated fat bulge without requiring the patient to diet or exercise.

PATENT RIGHTS  1. US Utility Patent Application, Serial
No. 10/391,221, filed on March 17th, 2003,
claiming priority from US Provisional Application, Serial No. 60/365,662, filed on March 15th, 2003.  2. US Utility Patent Application, Serial No. 11/016,196, filed
on December 17th, 2003, a continuation in part of US
Utility Patent Application, Serial No 10/391,221.  3. PCT Patent Application, Serial No. US03/08014, filed on March 17, 2003.
4. Australia Patent Application No. 2003220311, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
5. Brazil Patent Application No. 0308642.9, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
6. Canada Patent Application No. 2,478,887, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
7. China Patent Application No. 03810938.7, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
8. Israel Patent Application No. 164115, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
9. Japan Patent Application No. 2003-576590, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
10. Mexico Patent Application No. 2004-008992, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
11. EPO Patent Application No. 03711609.7, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.

Field of Use

License Field shall mean removal of cutaneous, subcutaneous or subdermal fat, treatment or removal of cellulite, andany therapy or procedures (including without limitation aesthetic therapies or procedures) to the tissues and structures of the skin (including without limitation sweat glands and hair follicles), subcutaneous tissue, and tumors, lesions and adipose tissue of the skin and of subdermal tissue

The Licensee shall itself or through an Affiliate or sublicensee make a first commercial sale within the following countries and regions within the following number years after the effective date of the Agreement
United States of America – Six years
Japan – Seven years
Latin America – Seven years
EPO – Seven years

License Grant

University hereby irrevocably and unconditionally grants to Sponsor an exclusive and cost-free option (the Option) to license the University’s Interest in and to any and all Novel Intellectual Property (in each case, a Novel IP License), which Option shall apply to any and all such Novel Intellectual Property immediately upon the conception, making and/or creation of such Novel Intellectual Property (whichever is sooner), and shall be exercisable exclusively by Sponsor in its sole discretion for a period of one year beginning upon that date upon which Sponsor received (or should have received) a Novel IP Notice. every Novel IP License shall be exclusive (even as to University), worldwide, fully transferable, sublicensable, irrevocable, non-terminable and cost-free (except for the Royalty and other remuneration provisions out lined in this agreement) continuing uninterrupted for the life of the underlying patent.

License Property

Novel Intellectual Property shall mean
6,081,336 – Microscope calibrator
5,987,960 – Tool calibrator
5,999,837 – Localizing and orienting probe for view devices

Patent application WO20040371 l 9 A, Modular femoral component for a total knee joint replacement for a minimally invasive implantation.

Field of Use

This agreement pertains to the medical field.