Royalty Report: Drugs, Disease, Viral Infection – Collection: 283093

The patent claimed invention is described as Antiviral Compounds and Methods of Making and Using Thereof.

Licensor in which Licensee holds approximately a 32% interest, grants to Licensee the exclusive right to screen Initial Targets (including New Targets  accepted into the Research Plan as Initial Targets) until the later of (I) the end of the Research Term or (ii) two and one-half years from the date that such New Target was accepted into the Research Plan (the 'Discovery Period'). Subject to the obligation of Licensor to perform screening under the Research Plan, Licensor also grants Licensee the exclusive right to utilize the Collaboration Technology pursuant to the terms of this Agreement during the Discovery Period for the sole purpose of screening New Targets to discover Collaboration Compounds.

Licensor grants to Licensee (a) the exclusive right to screen targets in the antibacterial or antifungal portion of the Licensee Field using Surrogate Genetics technology and Collaboration Technology for a period of ten (10) years from the Effective Date, and thereafter on a non-exclusive basis, subject to a royalty in the case of Licensee Targets included in the Research Plan (iii) of this Agreement, but otherwise royalty-free and (b) the non-exclusive perpetual right to screen targets in the non-antibacterial, non-antifungal and non-antiviral portion of the Licensee Field using Surrogate Genetics technology and Collaboration Technology on a royalty-free basis.

Licensor grants to Licensee a worldwide exclusive license to make, use and develop Collaboration Compounds for the purpose of developing Licensed Products for the period from the Effective Date until the earlier of (I) five years after the end of the Research Term or (ii) any time after one year from the end of the Research Term in the event that Licensee is not using reasonable commercial efforts as provided to pursue development of Licensed Products including without limitation, the selection of appropriate Reserved Drug Classes. After such period, Licensees right to make, use and develop Collaboration Compounds for the purpose of developing Licensed Products shall then become nonexclusive except with regard to Reserved Drug Classes.

Licensor grants to Licensee a worldwide license (with a right to sublicense) under all Know-How and Patent Rights in and to the Collaboration Technology, (I) on an exclusive, perpetual basis to develop, have developed, make, have made, use, sell, have sold, distribute, and have distributed Licensed Products and (ii) on an exclusive basis for a period of ten years from the Effective Date solely to develop, have developed, make, have  made, use, offer to sell, sell, have sold, distribute, and have distributed products in the field of infectious diseases caused by bacteria and fungi (the antibacterial and antifungal portion of the Licensee Field), and thereafter, on a non-exclusive basis, within and outside the Licensee Field, to develop, have developed, make, have made, use, offer to sell, sell, have sold, distribute, and have distributed products.

New Target shall have the meaning of a target identified within the field and is not an initial target.

Licensee Target shall have the meaning a target that Licensee identifies in the antibacterial or antifungal portion of the Licensee field for which Licensee seeks to utilize Surrogate Genetics to discover, develop or commercialize products.

Collaboration Technology shall mean all Know-How and Patent Rights that a Party owns or Controls, which is conceived, reduced to practice or otherwise developed by Licensor (or its agents) or Licensee (or its agents) or jointly by Licensor and Licensee (or their respective agents) during the Research Term arising out of the Research Program.

Collaboration Compound shall mean any compositions of matter to be used in the Field that incorporate, are derived from, developed using, or based upon the Initial Targets (i) discovered, identified, synthesized or acquired by or on behalf of Licensor or Licensee during the Research Term and meet the Validation Criteria during the Research Term or within 24 months after the end of the Research Term or (ii) contained within a chemical genus as defined in any issued patent or any patent application being prosecuted in good faith by Licensor or Licensee, for which one member or such chemical genus is defined in (i) above; provided, however, that compositions of matter that incorporate, are derived from, developed using or based upon the New Targets accepted into the Research Plan as Initial Targets shall be considered Collaboration Compounds for the purposes of this Agreement, only if such compositions are (a) discovered, identified, synthesized or acquired by or on behalf of Licensor or Licensee during the Discovery Period and meet the Validation Criteria during or within six months after the Discovery Period or (b) contained within a chemical genus as defined in any issued patent or any patent application being prosecuted in good faith by Licensor or Licensee.

Licensed Product means any product based upon or derived from a Collaboration Compound and approved for sale by the USFDA or its foreign equivalent.

Surrogate Genetics shall mean the use of genetically engineered recipient cells, such as, but not limited to  bacteria, fungi, worm, fly, or mamalian cells, to create heterologous systems useful for gene-based functional assays for any gene, in applications such as, but not limited to gene discovery, functional genomics, drug screening, phenoprinting and diagnostics.

Patent Rights shall mean all United States and foreign patents (including all reissues, extensions, substitutions, confirmations, re-registrations, re-examinations, revalidations and patents of addition) and patent applications (including, without limitation, all provisionals, continuations, continuations-in-part and divisions thereof) in each case, claiming an invention which is necessary or useful for the design, development, testing, use, manufacture or sale of (i) Licensed Products, in the case of Licensee or (ii) Licensor Products, in the case of Licensor.

Field shall mean viral therapeutics for human, animal and agricultural applications using small molecule approaches and viral disease diagnostic tools.

Licensee Field shall mean research and development of products for infectious diseases caused by bacteria, fungi, viruses, or other infectious agents, for use in viruses, or other infectious agents, for use in human health, animal health, agriculture, or other applications, which products may include but not be limited to, small molecules, vaccines, antisense, gene, antibody, protein, peptides, or diagnostics.