Royalty Report: Drugs, Pain, Therapeutic – Collection: 282861


Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 10


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: 10

Primary Industries

  • Drugs
  • Pain
  • Therapeutic
  • Gastrointestinal
  • Disease
  • Pharmaceuticals
  • Cancer
  • Delivery

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: 282861

License Grant
The Parties agree to collaborate and Licensor will provide product development services including analytical methods development and validation and formulation of a generic pharmaceutical product in the Territory.  Licensee will be responsible for the payment of costs and expenses incurred by the Collaboration Parties in connection with the  active pharmaceutical ingredients.
License Property
Product means the drug product to be mutually agreed upon by the parties that is a generic equivalent of a synthetic narcotic analgesic drug product.

Licensor is engaged in the research and development of generic pharmaceutical products and has accumulated  considerable knowledge in the field of pharmaceutical product development management services.

Field of Use
Narcotic agents are potent analgesics which are effective for the relief of severe pain. Analgesics are selective central nervous system depressants used to relieve pain. The term analgesic means 'without pain'.

IPSCIO Record ID: 279342

License Grant
Licensor hereby grants to the Puerto Rico Licensee in the Field an exclusive (even as to Licensor, other than as set forth in this agreement (Retained Rights)) license under the Licensor Technology and Joint Technology, with the right to sublicense as set forth in this agreement (Sublicenses), to make, have made, use, Develop, sell, offer to sell, have sold, import, export, and otherwise exploit and Commercialize the Compound and Products in the Territory. Licensee acknowledges that with respect to those Licensor Patent Rights that are Controlled by Licensor pursuant to the Third Party Agreements, the foregoing license is subject to the rights of the Third Party licensors under such Third Party Agreements.
License Property
Compound means R-methyinaltrexoun (R-MNTX) which is chemically defined as morphinanium, 17R, 17-(cyclopropylmethyl)-4, 5-epoxy-3,14-dihydroxy-17-methyl-6-oxo-, bromide, (5a)-(9C1), and its pharmacologically acceptable salts, together with their solvates, hydrates, hemihydrates, metabolites, pro-drugs, esters, and if applicable, any isomers or racemates thereof, but excluding any of the foregoing olecules whose primary mechanism of action is as an opioid agonist. The “Compound” does not include the Excluded Molecules.

Licensor Patent Rights are identified as
4,719,215 – Quaternary derivatives of noroxymorphone which relieve nausea and emesis
4,861,781 – Quaternary derivatives of noroxymorphone which relieve nausea and emesis
5,102,887 – Method for reducing emesis and nausea induced by the administration of an emesis causing agent

To relieve pain, narcotic medications such as morphine activate specific opioid receptors located in the central nervous system – the brain and spinal cord. Opioids, however, also interact with these receptors outside of the central nervous system, resulting in side effects, which can be debilitating, including constipation, urinary retention and severe itching. MNTX is designed to block peripheral opioid receptors whose activation causes these side effects. As MNTX does not cross the blood-brain barrier, it does not interfere with brain-centered pain relief.

Field of Use
The agreement is for the joint development and commercialization of methylnaltrexone (MNTX) for the treatment of opioid-induced side effects, including constipation and post-operative bowel dysfunction. These medical conditions are major therapeutic challenges in the management of gastrointestinal function in individuals treated with opioids for pain or in patients following serious or prolonged surgeries.

IPSCIO Record ID: 2939

License Grant
An exclusive License Agreement that grants the Licensee an exclusive License to develop and commercialize Opana® and Opana® ER in Canada, Australia and New Zealand.  Regulatory approval must be received prior to any sale of the Licensed products.
License Property
Opana is in a group of drugs called narcotic pain relievers. It is similar to morphine.  Opana is used to treat moderate to severe pain.  Opana ER contains oxymorphone, which is a morphine-like opioid agonist and a Schedule II controlled substance, with an abuse liability similar to other opioid analgesics.
Field of Use
The rights granted apply to the healthcare industry relating to the drug market.

IPSCIO Record ID: 3265

License Grant
The Licensor will grant the Licensee a non-exclusive, royalty-bearing future license to the Licensor Patent and other current and future Orange Book listable patents to market, manufacture and sell a generic version of Oxecta® in the United States.

The Licensee's license becomes effective January 1, 2022, approximately 23 months prior to the expected expiration of the Licensor Patent.

License Property
OXECTA is an immediate-release oral formulation of oxycodone HCl indicated for the management of acute and chronic moderate to severe pain where the use of an opioid analgesic is appropriate.

In June 2011, the U.S. Food and Drug Administration approved Oxecta® (oxycodone HC1 tablets) which incorporates the Aversion® technology. Oxecta® is an abuse-deterrent opioid analgesic formulation.

Field of Use
The Field of Use apply to the healthcare industry.

IPSCIO Record ID: 3297

License Grant
This Agreement settles the parties patent infringement litigation concerning Licensor's AVERSION® oxycodone product, previously marketed by Pfizer Inc. under its brand name Oxecta® (oxycodone HCI tablets).

In the suit, Licensor alleges that a generic AVERSION® oxycodone product for which Licensee is seeking approval to market in the U.S. pursuant to an Abbreviated New Drug Application filing with the U.S. Food and Drug Administration infringes a U.S. patent owned by Licensor .

Under the terms of the Settlement Agreement, Licensor will grant Licensee a non-exclusive, royalty-bearing license to the Licensor Patent and other current and future Orange Book listable patents to market, manufacture and sell a generic version of AVERSION® oxycodone in the United States. Licensee's license becomes effective 180 days following the first sale of a generic AVERSION® oxycodone

product in the United States by an entity that is entitled to the 180 day first-filer exclusivity provided in the Drug Price Competition.

The Settlement Agreement will remain in effect until the expiration of the term of the license granted by tbe Licensor to the Licensee.

License Property
AVERSION® oxycodone is a Schedule II narcotic indicated for the management of acute and chronic moderate to severe pain where the use of an opioid analgesic is appropriate.

IPSCIO Record ID: 279343

License Grant
Licensee is hereby exercising its option to acquire an exclusive license to make, use, and sell N-methylnaltrexone and any of its congeners under U.S. Patent 4,176,186.  In all other respects the agreement of May 8, 1985 shall remain in effect as previously agreed.
License Property
Patents shall mean U.S. Patent 4,176,186 as well as any patent application filed respecting other uses of the Compound, and corresponding foreign patents.

4,176,186 – Quaternary derivatives of noroxymorphone which relieve intestinal immobility

Compound shall mean N-methylnaltrexone having the chemical structure C21H26BrNO.

Field of Use
MNTX is a selective, peripheral, opioid-receptor antagonist that reverses certain side effects induced by opioid use. MNTX competes with opioid analgesics for binding sites on opioid receptors, but is unable to cross the blood-brain barrier. As a result, MNTX “turns off” the effects of opioid analgesics outside the central nervous system, including the gastrointestinal tract, but does not interfere with opioid activity within the central nervous system. Therefore, MNTX does not block the pain relief that the opioids provide. To date, patients treated with MNTX in addition to opioid pain medications have experienced a reversal of many of the side effects induced by the opioids and have reported no decline in pain relief. MNTX has been studied in numerous clinical trials. To date, MNTX has been generally well tolerated and highly active in blocking opioid-related side effects without interfering with pain relief.

IPSCIO Record ID: 356970

License Grant
For the Option Grant, Licensor of Canada grants the exclusive option. exercisable by Licensee during the Option Period, to obtain an exclusive license, with the right to sublicense through multiple tiers of sublicense, under the Licensors Technology and the Licensors Product Technology to make, have made, import, use, offer for sale, sell and have sold Licensed Products in the Field in the Territory.

Upon exercise of the option,  Licensor grants this exclusive license.

Licensee shall have the right to reference any Licensor DMFs applicable to the Licensed Product.

License Property
Patents relate to Cross-linked high amylase starch for use in controlled-release pharmaceutical formulations and processes for its manufacture, and, Misuse Preventative, Controlled Release Formulation.

Patents relate to the development of abuse deterrent formulation of hydrocodone for the treatment or relief of pain using Altus' Intellitabâ„¢ drug delivery platform.

Field of Use
Field shall mean the treatment or relief of pain, pain syndromes or pain associated with medical conditions or procedures in humans.

IPSCIO Record ID: 369385

License Grant
Licensor grants to Licensee a royalty bearing, worldwide, exclusive license under Licensed Technology to make, have made, use, or sell Licensed Technology and Licensed Product in the field of use defined above. This grant shall be subject to the payment by Licensee to Licensor of all consideration as provided in this Agreement, and shall be further subject to the rights retained by Licensor and University to a. publish the scientific findings, subject to agreed upon provisions, from research related to Licensed Technology; and, b. use any information contained in the Licensed Technology for research, teaching, and similar noncommercial activities and other education-related purposes. c. use the Licensed Technology and Licensed Products for commercial purposes, including licensing, in the area of smoking cessation management.
License Property
U.S. Patent Application entitled “Compounds and Pharmaceutical Compositions Thereof for Eliciting Analgesic Effects”
Field of Use
Field of use shall mean analgesia and applications related to pain control. University reserves the right to make, use, or sell the Licensed Technology and Licensed Products in the area of smoking cessation management.

Analgesics are medications that treat your pain by reducing inflammation or changing the way your brain understands pain. Many types of analgesics are available, and they range from pills and liquids, to gels and patches you apply to your body.

IPSCIO Record ID: 329681

License Grant
University hereby grants the License to the Licensee and its Affiliates  (i) an exclusive, worldwide right and license under the Patent Rights and (ii) a non-exclusive, worldwide right and license to the University Know-How to (a) make, have made, use, research, develop, have developed, lease, market, offer to sell, sell, have sold, distribute, improve, import and export Licensed Products and Licensed Processes in the Field; and (b) otherwise practice the Invention in the Field.
License Property
US Patent #6,248,744 – Method for the treatment of pain, including chronic and female specific pain.

Invention means University#98-14 Sex Related Deference in Pain Relief from Spinal Compound (RJR 2403)

VCU Patents  S Patent #5,914,337 – Compounds and pharmaceutical compositions thereof for eliciting analgesic effects

Field of Use
Field of use is for the treatment of pain relief.

TC-2696 for the treatment of chronic or female-specific pain.  TC-2696 is a novel small molecule that we are developing as an oral treatment for acute post-operative pain.

IPSCIO Record ID: 372509

License Grant
Licensor grants to the Licensee of Sweden during the Initial Term an exclusive, sub-licensable license, under the Licensed Technology to market, advertise, promote, distribute, offer for sale, sell and import the Licensed Product in the Territory, and,
grants during the Term a non-exclusive, sub-licensable license under the Licensed Technology to, on a Licensed Product-by-Licensed Product basis and effective only with respect to the development of a Licensed Product for a particular indication following Governmental Approval of such Licensed Product for such indication, research and develop such Licensed Product in the Territory.

During the term of this Agreement, Licensor shall not sell any Licensed Product or any Competing Product with respect thereto for use in the Territory, nor grant any right or license to any Third Party with respect to the Licensed Product or any Competing Product in the Territory.

For the Trademarks, Licensor grants an exclusive, sub-licensable license to use the Marks during the Term solely in connection with the promotion, marketing, distribution, offer for sale, and sale of the Licensed Product in the Territory.

License Property
Marks means BEMA.  BEMA means the proprietary bioerodible, mucoadhesive multi-layer polymer film technology.

The Licensed Product means individually and collectively the BEMA-based product which contains fentanyl as it sole API, is currently the subject of Phase III clinical trials being conducted by Licensor, would, but for the licenses granted under this Agreement, infringe one or more claims of the Licensed Patent Rights, and does not contain naloxone as an additional ingredient.  Fentanyl Product means any Licensed Product other than the Naloxone Product.

BEMA(TM) Fentanyl consists of a small, dissolvable, polymer delivery system, formulated with the opioid narcotic fentanyl, for application to the buccal (inner lining of cheek) membranes. BEMA(TM) Fentanyl has shown in Phase III clinical studies important patient advantages compared to competing products, especially fewer side effects.

BEMATM Fentanyl is a treatment for “breakthrough” cancer pain (i.e., episodes of severe pain which “break through” the medication used to control the persistent pain). BDSI believes there is a clear need and growing market for additional narcotic agents in alternative dosage forms to provide rapid pain relief. Fentanyl belongs to the group of medicines called narcotic analgesics, which are used to relieve pain

Field of Use
The field of use is for Breakthrough Pain In Opioid Tolerant Cancer Patients.
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