Description
Created On: 2020-07-15
Record Count: 3
Primary Industries
- Drugs
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: 281188
Licensor hereby grants to Licensee a non-exclusive, worldwide, license, to make, use, sell, offer for sale, import and otherwise exploit products incorporating Licensed Compounds for applications outside the Field (as may be modified) under Know-How and Patents Controlled by Licensor related to such Licensed Compounds (including formulations and methods of manufacture thereof). Prior to the exercise of such license with respect to particular Know-How or Patents Controlled by Licensor, Licensee shall provide written notice to Licensor. Upon such notice, the Parties shall negotiate in good faith the consideration to be paid by Licensee for each such license. Notwithstanding the foregoing, Licensee shall not have the right to exercise the licenses granted with respect to Know-How or Patents in a manner that can reasonably be expected to (i) create a risk of substitutability of the type contemplated hereof, or (ii) otherwise compete with Licensor products in the ophthalmic, otic and nasal fields.
If Licensor electively terminates this Agreement in its entirety or either Party terminates this Agreement then: Licensor hereby grants Licensee, effective upon the notice of termination by Licensee, a non-exclusive, worldwide, irrevocable, license, under (i) any Patent Controlled by Licensor or its Affiliates covering Licensed Products for which any human clinical trial or other human testing had been initiated or that were being Commercialized by or under authority of Licensor; provided, however if any such Patent Controlled by Licensor is subject to payment obligations to a Third Party, Licensor shall promptly disclose such obligations to Licensee in writing and such Patents shall be deemed to be Controlled by Licensor only if Licensee agrees in writing to reimburse all amounts owed to such Third Party as a result of Licensee’s exercise of such license, and (ii) any Know-How disclosed to Licensor under this Agreement or developed or utilized by Licensor in connection with such Licensed Products; in each case to the extent necessary to make, have made, use, sell, offer for sale and import Licensed Compounds and such Licensed Products.
Licensee will have the right to appoint one Third Party (each, a “Co-Marketing Partnerâ€) to market each Licensed Product for applications in the Otic Sub-Field or Sinus Sub-Field in each of the People’s Republic of China, Republic of China, South Korea, India and Japan, and such other Asian countries as Licensee shall request and Licensor shall not unreasonably refuse. Licensee shall, unless otherwise agreed by the Parties, only have the right to grant such appointments if all conditions are satisfied.
Patent shall mean any of the following, whether existing now or in the future anywhere in the world: (i) any issued patent, including without limitation inventor’s certificates, substitutions, extensions, confirmations, reissues, re-examination, renewal or any like governmental grant for protection of inventions; and (ii) any pending application for any of the foregoing, including without limitation any continuation, divisional, substitution, continuations-in-part, provisional and converted provisional applications.
Aganocide Compound shall mean any chemical entity (i) having bactericidal, antibacterial, anti-infective, antimicrobial, antifungal, anti-parasitic, sporicidal, antiviral, immunomodulatory or anti-inflammatory activity, and (ii) consisting of either hypochlorous acid or consisting of a chemical formula outlined in the agreement.
Development Compound shall mean any Licensed Compound that is designated as a Development Compound by the Coordination Committee.
Licensed Compound shall mean any Aganocide Compound that: (i) is Controlled by Licensee as of the Effective Date, including NVC-101, NVC-422 and the compounds NVC-521, NVC-524, NVC-530, NVC-539, NVC-546; (ii) is Discovered by Licensee during the Exclusivity Period; or (iii) is Controlled by Licensee during the Exclusivity Period.
Licensee Patents shall mean any and all Patents Controlled by Licensee during the Term claiming the composition or use of a Development Compound or that are otherwise necessary for the Development, Manufacture or Commercialization of Licensed Products incorporating such Development Compound, in each case within the Field in the Territory.
Ophthalmic Sub-Field shall mean any pharmaceutical product or medical device incorporating a Licensed Compound for applications in or on the eye in humans, including without limitation contact lens solutions and ophthalmic solutions containing a Licensed Compound as a preservative.
Otic Sub-Field shall mean any pharmaceutical product or medical device incorporating a Licensed Compound for the prevention or treatment of infections in the ear in humans and solutions containing a Licensed Compound as a preservative for the ear in humans. For clarity, such pharmaceutical products or medical devices indicated for the treatment of otitis externa, including acute otitis externa (AOE), are considered products for the prevention or treatment of infections in the ear and thus a part of the Otic Sub-Field. (For purposes of this Agreement: “infections†shall include any infection, whether bacterial, viral, fungal or any combination thereof; and “treatment†of an infection shall include the reduction or elimination of biofilm associated with such infection.)
Sinus Sub-Field shall mean any pharmaceutical product or medical device incorporating a Licensed Compound for the prevention or treatment of infections in the paranasal sinuses in humans and solutions containing a Licensed Compound as a preservative for the paranasal sinuses in humans, but excluding products for the treatment or prevention of infections of the nares.
IPSCIO Record ID: 280932
Licensor hereby grants to Licensee a non-exclusive license to make, use and otherwise exploit subject matter within the Licensor Technology to the extent necessary to conduct the activities assigned to Licensee under the Discovery Research Plan or otherwise cooperate with Licensor hereunder. The license granted shall not include the right to sublicense; provided, however, that the use by Licensee of subcontractors or delegation of responsibilities to an Affiliate shall not be construed as a sublicense.
Licensor Technology shall mean the Licensor Patents and Licensor Know-How, including without limitation any Know-How and Patents covering (i) inventions made by Licensor in the course of performing activities under the Discovery Research Program and any Development Program, and (ii) formulations of Aganocide Compounds developed by Licensor for use outside the Field.
Aganocide Compound shall mean any chemical entity (i) having bactericidal, antibacterial, anti-infective, antimicrobial, antifungal, anti-parasitic, sporicidal, antiviral, immunomodulatory or anti-inflammatory activity, and (ii) consisting of either hypochlorous acid or consisting of a chemical formula outlined in the agreement.
Development Compound shall mean any Licensed Compound that is designated as a Development Compound by the Coordination Committee.
Licensed Compound shall mean any Aganocide Compound that: (i) is Controlled by Licensor as of the Effective Date, including NVC-101, NVC-422 and the compounds NVC-521, NVC-524, NVC-530, NVC-539, NVC-546; (ii) is Discovered by Licensor during the Exclusivity Period; or (iii) is Controlled by Licensor during the Exclusivity Period.
Field shall mean, collectively, the Ophthalmic Sub-Field, Otic Sub-Field and Sinus Sub-Field. The Ophthalmic Sub-Field, Otic Sub-Field and Sinus Sub-Field may each be referred to herein, individually, as a “Sub-Fieldâ€.
Ophthalmic Sub-Field shall mean any pharmaceutical product or medical device incorporating a Licensed Compound for applications in or on the eye in humans, including without limitation contact lens solutions and ophthalmic solutions containing a Licensed Compound as a preservative.
Otic Sub-Field shall mean any pharmaceutical product or medical device incorporating a Licensed Compound for the prevention or treatment of infections in the ear in humans and solutions containing a Licensed Compound as a preservative for the ear in humans. For clarity, such pharmaceutical products or medical devices indicated for the treatment of otitis externa, including acute otitis externa (AOE), are considered products for the prevention or treatment of infections in the ear and thus a part of the Otic Sub-Field. (For purposes of this Agreement: “infections†shall include any infection, whether bacterial, viral, fungal or any combination thereof; and “treatment†of an infection shall include the reduction or elimination of biofilm associated with such infection.)
Sinus Sub-Field shall mean any pharmaceutical product or medical device incorporating a Licensed Compound for the prevention or treatment of infections in the paranasal sinuses in humans and solutions containing a Licensed Compound as a preservative for the paranasal sinuses in humans, but excluding products for the treatment or prevention of infections of the nares.
Licensor Patents shall mean any and all Patents Controlled by Licensor during the Term claiming the composition or use of a Development Compound or that are otherwise necessary for the Development, Manufacture or Commercialization of Licensed Products incorporating such Development Compound, in each case within the Field in the Territory.
IPSCIO Record ID: 291164
Licensor hereby grants to Licensee the exclusive (except as to Licensor to permit it conduct its Co-Funded Development and/or Co-Commercialization activities and those activities under the ITMN-191 Transition Plan hereunder) license under the Licensor Know-How and Licensor Patent Rights and under Licensor’s rights in Joint Know-How and Joint Patent Rights to develop, make, have made, use, import, export, offer for sale and sell Licensed Compounds and Products in the Territory.
Macrocycle shall mean any cyclic macromolecule in the Field containing a substituted proline moiety and optional Pl and P3 groups as part of the backbone ring and supporting the attachment of Pl and P4 groups.
Licensee Patent Rights shall mean any and all patents and patent applications in the Field in the Territory which are Controlled by Licensor during the term of this Agreement which Cover any activity permitted under this Agreement, all to the extent that the subject matter claimed therein is used in the course of performing any activity permitted under this Agreement, including, but not limited to, the making, using, selling, offering to sell, exporting or importing Lead Compound, Licensed Compounds, Products, Passed Compounds or Reverted Compounds. For the purposes of this Agreement, “patents and patent applications†shall be deemed to include certificates of invention and applications for certificates of invention, as well as divisions, continuations, continuations-in-part, reissues, renewals, extensions, supplementary protection certificates, and the like of any such patents and patent applications and foreign equivalents thereof.
Joint Patent Rights shall mean any and all patents and patent applications in the Field in the Territory which are invented jointly during the term of this Agreement by employees of both Parties according to the U.S. laws pertaining to joint inventorship. For the purposes of this Agreement, “patents and patent applications†shall be deemed to include certificates of invention and applications for certificates of invention, as well as divisions, continuations, continuations-in-part, reissues, renewals, extensions, supplementary protection certificates, and the like of any such patents and patent applications and foreign equivalents thereof.
Licensed Compound shall mean (a) ITMN-191 and (b) Collaboration Compounds properly included by Licensee as Licensed Compounds; provided however, Licensee may substitute a Lead Compound for an existing Licensed Compound as set forth in this Agreement; provided further there shall not be more than two (2) Licensed Compounds at any time during the Term unless Licensee shall have exercised its option to expand the number of Licensed Compounds pursuant to this agreement.
Product(s) shall mean any pharmaceutical preparation containing a Licensed Compound for any and all uses in humans, including any Combination Product.
