Royalty Report: Drugs, Cancer, Pharmaceuticals – Collection: 28243

License Grant

The LIcensor grants the LIcensee an exclusive right and license in the Territory for the Licensed Field under the IP to develop, make, have made, use, offer for sale, and sell Licensed Products and to practice Licensed Processes in the field of cancer treatment. Licensee shall have the right to grant sublicenses.

License Property

The Licensor has developed a composition for treating an individual with a solid tumor comprising a combination of carmustine and temozolomide.

Carmustine (bis-chloroethylnitrosourea, BCNU, BiCNU) is a medication used mainly for chemotherapy and sometimes for immunosuppression before organ transplantation.  Carmustine is an anti-cancer ('antineoplastic' or 'cytotoxic') chemotherapy drug.

Temozolomide is an oral chemotherapy drug. It is an alkylating agent used as a treatment of some brain cancers.

Field of Use

The Licensee desires to obtain rights under the IP Rights to develop and commercialize certain of the inventions.

License Grant

Licensor hereby grants to Licensee and its Affiliates a sole and exclusive worldwide sublicense in all fields of use to practice under the Patent Rights and to utilize the Know-how, and to make, have made, use, lease and/or sell the Licensed Products and to practice the Licensed Processes, to the full end of the term for which the Patent Rights are granted, unless sooner terminated as hereinafter provided.

License Property

Patent(s) or Patent Application(s)

U.S. Application Serial No. 07/492,468 filed 3/13/90; “06-Substituted Guanine Compounds And Methods For Depleting 06-Alkylguanine-DNA Alkyltransferase Levels” Issued 2/25/92 U.S. Pat. 5,091,430

U.S. Application Serial No. 07/616,913 filed 11/21/90; “06-Benzylated Guanine, Guanosine and 2’-Deoxyguanosine Compounds Possessing 06-Alkylguanine-DNA Alkyltransferase Depleting Activity” CIP of ‘468 issued 10/4/94 U.S. Pat. 5,352,669

U.S. Application Serial No. 07/805,634 filed 12/21/91; “06-Substituted Guanine Compounds And Methods For Depleting 06-Alkylguanine-DNA Alkyltransferase Levels” DIV of ‘468, issued 10/25/94 U.S. Pat. 5,358,952

U.S. Application Serial No. 07/875,438 filed 4/29/92; “06-Substituted Guanine Compounds and Methods for Depleting Derivatives 06 Alkylguanine-DNA Alkyltransferase Levels” CIP of ‘634 Abandoned 8/19/94

U.S. Application Serial No. 08/255,190 filed 6/7/94; “06-Substituted Guanine Compounds And Methods For Depleting 06-Alkylguanine-DNA Alkyltransferase” CIP of ‘438, and ‘913 issued 11/25/97 U.S. Pat. 5691,307.

U.S. Application Serial No. 08/283,953 filed 8/1/94; “Substituted 06-Benzylguanines And 6(4) – Benzyloxpyrimidines” issued 6/11/96 U.S. Pat. 5,525,606, and PCT/US95/09702 filed 7/31/95 (based on parent application 08/283.953.  National Stage filed in Europe (EPO Application No. 9592837.7.  Validated in all countries, except Finland, under the European Patent Convention), Canada (Canadian Application No. 2,195,856), Japan (Japanese Application No. 506694/1996), Australia (Australian Serial No. 32079/95, Issued Patent No. 702711) and U.S. Application No. 08/849,223, Issued 9/28/99 as U.S. Patent No. 5,958,932).  Divisional of EP ‘837.7, Application No. 01108585.9 filed 4/5/01.

U.S. Application Serial No. 08/661,923 filed 6/11/96, issued 5/19/98 as 5,753,668; “Substituted  Benzyloxpyrimidines and Their Inactivation of 06-Alkylguanine-DNA Alkyltransferase” DIV of parent application 08/283.953.

U.S. Application Serial No. 08/927, 846 filed 9/11/97. Issued 6/29/99 as 5,916,894; “Substituted O6-Benzylguanines And 6(4) – Benzyloxpyrimidines” DIV of parent application 08/283,953.

U.S. Application Serial No. 08/318,238 filed 5/25/99. Issued 1/9/01 as 6,172,070; “Substituted O6-Benzylguanines And 6(4) – Benzyloxpyrimidines” DIV of parent application 08/283.953.

U.S. Application Serial No. 08/849,223 filed 7/31/95. Issued  9/28/99 as 5,958,932; “Substituted O6-Benzylguanines And 6(4) – Benzyloxpyrimidines” CIP of parent application 08/283,953.

U.S. Application  No. 09/590,187, filed 6/9/00, U.S Patent 6,303,604, issued 10/16/01U.S. Application Serial No. 09/333,047 filed 6/15/99 (Allowed) “Pharmaceutical Composition Comprising 2,4-Diamino-6-Benzyloxy-Triazine And Inactivation of O6-Alkylguanine-DNA-Alkyltransferase.”

U.S. Application No. 09/333,047, filed 6/15/99, U.S Patent 6,333,331, issued 12/25/01 “Substituted 06-Benzylguanines.”

U.S. Application No. 09/928,410; filed 8/14/01 “Substituted 06 Benzyl-8-Aza-Guanines” Pending.

Field of Use

The following will serve to outline License’s (the 'Sublicensee') plans for development of O6-Benzylguanine ('BG') as an intravenous chemotherapeutic potentiating agent used in combination with alkylating agents such as BCNU or Temozolomide (the 'Agent' or 'Agents') for the treatment of cancer.

License Grant

Licensor grants the Swiss Licensee an exclusive license, exclusive even as to Licensor, in the Territory under the Licensors Patent Rights, and to use the Know-How to develop, make, have made, import, export, use, distribute, market, promote, offer for sale and sell Licensed Product(s). Any Improvements relating to the Licensed Product, or otherwise relating to the use of the Drug Delivery System in combination with Temozolomide, developed prior to or during the Term of this Agreement by or on behalf of Licensor shall be included in Licensor Know-How or Licensor Patent-Rights, as the case may be, for all purposes of this Agreement.

License Property

Licensor has developed certain Know-How and has rights to the Licensed Patent Rights relating to Drug Delivery Systems.

'Licensed Product(s)' shall mean any form or dosage of pharmaceutical composition or preparation for parental administration, in final form for sale, which utilizes the Drug Delivery System and contains as an active ingredient Temozolomide.

Field of Use

Temozolomide is an oral chemotherapy drug. It is an alkylating agent used as a treatment of some brain cancers; as a second-line treatment for astrocytoma and a first-line treatment for glioblastoma multiforme.

License Grant

Licensor, government organization, hereby grants and Licensee accepts, subject to the terms and conditions of this Agreement, an exclusive license under the Licensed Patent Rights in the Licensed Territory to make and have made, to use and have used, to sell and have sold, to offer to sell, and to import any Licensed Products in the Licensed Fields of Use and to practice and have practiced any Licensed Processes in the Licensed Fields of Use.

License Property

Patent(s) or Patent Application(s)

U.S. Application Serial No. 07/492,468 filed 3/13/90; “06-Substituted Guanine Compounds And Methods For Depleting 06-Alkylguanine-DNA Alkyltransferase Levels” Issued 2/25/92 U.S. Pat. 5,091,430

U.S. Application Serial No. 07/616,913 filed 11/21/90; “06-Benzylated Guanine, Guanosine and 2’-Deoxyguanosine Compounds Possessing 06-Alkylguanine-DNA Alkyltransferase Depleting Activity” CIP of ‘468 issued 10/4/94 U.S. Pat. 5,352,669

U.S. Application Serial No. 07/805,634 filed 12/21/91; “06-Substituted Guanine Compounds And Methods For Depleting 06-Alkylguanine-DNA Alkyltransferase Levels” DIV of ‘468, issued 10/25/94 U.S. Pat. 5,358,952

U.S. Application Serial No. 07/875,438 filed 4/29/92; “06-Substituted Guanine Compounds and Methods for Depleting Derivatives 06 Alkylguanine-DNA Alkyltransferase Levels” CIP of ‘634 Abandoned 8/19/94

U.S. Application Serial No. 08/255,190 filed 6/7/94; “06-Substituted Guanine Compounds And Methods For Depleting 06-Alkylguanine-DNA Alkyltransferase” CIP of ‘438, and ‘913 issued 11/25/97 U.S. Pat. 5691,307.

U.S. Application Serial No. 08/283,953 filed 8/1/94; “Substituted 06-Benzylguanines And 6(4) – Benzyloxpyrimidines” issued 6/11/96 U.S. Pat. 5,525,606, and PCT/US95/09702 filed 7/31/95 (based on parent application 08/283.953.  National Stage filed in Europe (EPO Application No. 9592837.7.  Validated in all countries, except Finland, under the European Patent Convention), Canada (Canadian Application No. 2,195,856), Japan (Japanese Application No. 506694/1996), Australia (Australian Serial No. 32079/95, Issued Patent No. 702711) and U.S. Application No. 08/849,223, Issued 9/28/99 as U.S. Patent No. 5,958,932).  Divisional of EP ‘837.7, Application No. 01108585.9 filed 4/5/01.

U.S. Application Serial No. 08/661,923 filed 6/11/96, issued 5/19/98 as 5,753,668; “Substituted  Benzyloxpyrimidines and Their Inactivation of 06-Alkylguanine-DNA Alkyltransferase” DIV of parent application 08/283.953.

U.S. Application Serial No. 08/927, 846 filed 9/11/97. Issued 6/29/99 as 5,916,894; “Substituted O6-Benzylguanines And 6(4) – Benzyloxpyrimidines” DIV of parent application 08/283,953.

U.S. Application Serial No. 08/318,238 filed 5/25/99. Issued 1/9/01 as 6,172,070; “Substituted O6-Benzylguanines And 6(4) – Benzyloxpyrimidines” DIV of parent application 08/283.953.

U.S. Application Serial No. 08/849,223 filed 7/31/95. Issued  9/28/99 as 5,958,932; “Substituted O6-Benzylguanines And 6(4) – Benzyloxpyrimidines” CIP of parent application 08/283,953.

U.S. Application  No. 09/590,187, filed 6/9/00, U.S Patent 6,303,604, issued 10/16/01U.S. Application Serial No. 09/333,047 filed 6/15/99 (Allowed) “Pharmaceutical Composition Comprising 2,4-Diamino-6-Benzyloxy-Triazine And Inactivation of O6-Alkylguanine-DNA-Alkyltransferase.”

U.S. Application No. 09/333,047, filed 6/15/99, U.S Patent 6,333,331, issued 12/25/01 “Substituted 06-Benzylguanines.”

U.S. Application No. 09/928,410; filed 8/14/01 “Substituted 06 Benzyl-8-Aza-Guanines” Pending.

Field of Use

Licensed Fields of Use Development and administration of 06-Benzylated Guanine and Derivatives thereof to enhance chemotherapy treatments of tumor cells.