Description
Created On: 2020-07-15
Record Count: 17
Primary Industries
- Drugs
- Diagnostic
- Drug Discovery
- nucleic acid
- Cancer
- ribonucleic acid
- Disease
- Test/Monitoring
- Software
- Medical Info
- Therapeutic
- Antibody
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: 286054
University grants Licensee an exclusive (even as to University), worldwide, irrevocable, non-transferable license in the Biodiagnostics Field, with the right to sublicense, under the Joint Patent Rights, to make, have made, use, sell, offer for sale, export and import Licensed Products within the Biodiagnostics Field.
University grants Licensee a nonexclusive, worldwide, irrevocable, non-transferable license in the Biodiagnostics Field, with the right to sublicense, to use the Technical Information to design, develop, manufacture, have manufactured, sell, offer for sale, import, and export the Licensed Products within the Biodiagnostics Field.
Each party acknowledges that the other party is a co-owner of an equal and undivided interest in and to the Joint Patent Rights.
6,709,825 – Nanoparticles having oligonucleotides attached thereto and uses therefor
6,902,895 – Nanoparticles having oligonucleotides attached thereto and uses therefor
7,115,688 – Nanoparticles with polymer shells
Licensed Product(s) means individually or collectively, depending on the specificity of the reference, any product or process: (a) that is covered by a Valid Claim, infringes a Valid Claim, or would infringe but for the exception in 35 U.S.C. §271(e)(1), or similar exception in the U.S. or other countries; (b) the development, manufacture, use, sale, or importation of which incorporates, uses, or is derived from Technical Information; or (c) meeting the qualifications of both (a) and (b).
Joint Patent Rights means: (a) those patents and patent applications listed; (b) all divisionals, continuations, continuations-in-part (but only to the extent that they claim subject matter that is disclosed in the patents and applications listed sufficiently to fully support such claims under 35 U.S.C. §112), reexaminations, and reissues, and foreign counterparts of the patents and patent applications listed; (c) all patents issuing from the patents and patent applications referenced in clauses (a) and (b); and (d) any extensions of or supplementary protection certificates allowed on any of the foregoing.
6361944 – Nanoparticles Having Oligonucleotides Attached Thereto And Uses Therefore
Technical Information means all research and development information, technical data, inventions, trade secrets, know-how and supportive information that are: (a) not claimed in any patent or patent application; (b) necessary for the development, manufacture, or use of a Licensed Product; (c) owned and controlled by University and developed by or under the direct supervision of Chad A. Mirkin or Robert L. Letsinger at their laboratories; and (d) either (i) conceived, created or developed prior to the Effective Date if Nanoparticle Technology or Biobarcode Technology or (ii) conceived, created, or developed after the Effective Date if in the Biodiagnostics Field.
Biobarcode Technology means analysis where oligonucleotides act as surrogate targets or reporter molecules.
Nanoparticle Technology means any technology in the Biodiagnostics Field involving a particle where no single dimension is greater than 100 nm.
Biodiagnostics Field Subsets – Targets
Human and animal testing (Includes pharmaceutical and biotechnology discovery and development) –
Nucleic acids, proteins, peptides, amino acids, metabolites, therapeutic drugs, drugs of abuse, hormones, sugars, lipids and lipoproteins
Plants – Nucleic acids, proteins, peptides, phytotoxins
Environmental – Pathogens, toxins and biological contaminants
The Biodiagnostics Field excludes the following subject matter and all Biodiagnostics Field applications thereof:
(a) therapeutics (including in vitro and in vivo therapy and controlling, modulating, or otherwise affecting gene expression);
(b) technology relating to or derived from dip-pen nanolithography;
(c) environmental applications other than as set forth above;
(d) prismatic particles (including methods of manufacture and uses thereof); and
(e) coordination polymers (including methods of manufacture and uses thereof).
For purposes of clarity, other than with respect to Biobarcode Technology or an Invention where the Licensed Product itself is the surrogate for the target listed above, the term “detection†means the detection of the actual target listed above and not the detection of a surrogate, not listed above, for the target.
IPSCIO Record ID: 291130
Licensor hereby grants to Licensee the right and Licensee accepts and agrees to credit Licensor as the source of its Licensed Technology rights in Licensees promotional materials and any other materials intended for distribution to Third Parties as follows:
4,683,195 – Process for amplifying, detecting, and/or-cloning nucleic acid sequences
4,683,202 – Process for amplifying nucleic acid sequences
4,965,188 – Process for amplifying, detecting, and/or cloning nucleic acid sequences using a thermostable enzyme
Diagnostic Product shall mean an assemblage of reagents, including but not limited to reagents packaged in the form of a kit, useful in performing a Licensed Service.
Licensed Service(s) shall mean the performance by Licensee of an in vitro procedure within the Licensed Field which utilizes the Licensed Technology. Licensed Services include, but are not limited to, any combination of the steps of collecting a sample for analysis, isolating nucleic acid sequences from the sample, amplifying one or more desired sequences, analyzing the amplified material, including sequence analysis, and reporting the results.
Licensed Field shall mean the field of clinical laboratory services that detect the presence, absence and/or quantity of a nucleic acid sequence for the detection, diagnosis, confirmation, prognosis, management and/or treatment of a human disease or condition, including, but not limited to, such services: to identify predisposition to disease, disease susceptibility, confirm disease, predict therapeutic effectiveness or monitor disease progress; used in the course of human clinical trials; for Parentage Determination; and for tissue transplant typing, including testing performed on animal tissue intended for use in xenotransplantation. Licensed Field shall specifically exclude any services performed for the screening of blood and/or blood products.
IPSCIO Record ID: 291168
Licensor Patent Rights shall mean: (a) the claims of the patent and patent applications listed hereto; (b) all patent applications heretofore or hereafter filed or having legal force in any country owned by or licensed to Licensor (and which Licensor has the right to sublicense to Licensee) or to which Licensee otherwise acquires sublicenseable rights, which claim a composition (including but not limited to, Biological Materials), method or process, which are necessary to practice any process or method claimed in the patent and patent applications in the Field or are necessary, to make, have made, have used, sell, have sold, offer for sale, and import any Licensed Product, together with any and all patents that have issued or in the future issue therefrom, including utility, model and design patents and certificates of invention, and (c) patents and patent applications claiming Licensor Inventions; (d) patents and patent applications added; and (e) all divisionals, continuations, continuations-in-part, continued prosecution applications, requests for continued examination, reissues, renewals and extensions of the patents and patent applications and any foreign counterparts to those patents and patent applications, to the extent and only to the extent that Licensor has or hereafter will have the right to grant licenses and sublicenses thereunder.
US 5,886,151 – Candida albicans integrin-like protein
US 6,346,411 – DNA encoding–candida albicans integrin-like protein
US 6,774,219 – Candida albicans gene, integrin-like protein, antibodies, and methods of use
Joint Patent Rights shall mean: (a) all claims of patents and patent applications having legal force in any country which claim a Joint Invention, together with any and all patents that issue therefrom, including utility, model and design patents and certificates of invention, and (b) all divisionals, continuations, continuations-in-part, continued prosecution applications, requests for continued examination, reissues, renewals, and extensions or additions to any such patents and patent applications and any foreign counterparts to those patents and patent applications.
Joint Invention shall mean an Invention made or conceived jointly by one or more employees or others acting on behalf of Licensee and by one or more employees or others acting on behalf of Licensor during and in the course of a Development Collaboration Program or in the course of work done under the Prior Agreements. The parties agree that Joint Inventions shall be owned jointly by Licensor and Licensee in accordance with US law, whereby each joint owner shall have the right to use, pledge, practice, license, assign and otherwise transfer and enjoy its rights to and interests in joint inventions without permission of or accounting to the other joint owner(s)), subject to the licenses granted.
IPSCIO Record ID: 237263
Licensor grants a world-wide, non-exclusive, nontransferable license, without the right to sublicense, to make, use, sell, off er for sale and import Licensed Products for genotyping HAPâ„¢ Markers in all fields other than human and animal infectious diseases. Excluded from this grant is the right to make, sell, offer for sale or import the Licensors ProbeTecâ„¢ ET.
The patents include, but are not limited to, Nucleic Acid Target Generation, Oligonucleotides for amplification and detection of hemochromatosis, and, Methods for detecting nucleic acid sequence variations.
Licensed Products shall mean any device, instrument, service, kit, composition of matter, material, product or component thereof that utilizes Licensed Know-How.
Instrument shall mean the Licensors ProbeTecâ„¢ ET installed in Licensees HAPâ„¢ Typing facility in New Haven, CT.
HAPâ„¢ Marker shall mean a polymorphism or any ordered combination of two or more polymorphisms present at a locus on a single chromosome that is contained in the Licensee HAPâ„¢ Database during the term of this Agreement or that is discovered from any gene where such discovery was made solely by employees of Licensee or others acting on behalf of Licensee, or, jointly by employees of Licensees or others acting on its behalf and employees of a HAPâ„¢ Partner or others acting on its behalf or for which a HAPâ„¢ Partner requests Licensee to develop genotyping assays or provide genotype data.
Licensor ProbeTecâ„¢ ET shall mean the clinical platform for infectious disease testing owned by Licensor using Strand Displacement Amplification Technology or SDA Technology and real time detection means.
LICENSED PATENTS
1. US Patent No. 5,270,184, entitled 'Nucleic Acid Target Generation'
2. US Patent No. 5,422,252, entitled 'Simultaneous Amplification of Multiple Targets'
3. US Patent No. 5,455,166, entitled 'Strand Displacement Amplification'
4. US Patent No. 5,536,649, entitled 'Decontamination of Nucleic Acid Amplification Reactions'
5. US Patent No. 5,547,861, entitled 'Detection of nucleic acid amplification'
6. US Patent No. 5,648,211, entitled 'Strand Displacement Amplifcation Using Thermophilic Enzymes'
7. US Patent No. 5,624,825, entitled 'Simultaneous Amplification of Multiple Targets'
8. US Patent No. 5,691,145, entitled 'Detection of nucleic acids using G-quartets'
9. US Patent No. 5,712,124, entitled 'Strand Displacement Amplification'
10. US Patent No. 5,736,365 entitled 'Multiplex nucleic acid amplification'
11. US Patent No. 5,744,311 entitled 'Strand displacement amplification using thermophilic enzymes'
12. US Patent No. 5,840,487, entitled 'Internal controls for isothermal nucleic acid amplification reactions'
13. US Patent No. 5,863,736, entitled 'Method, apparatus and computer program products for determining quantities of nucleic acid sequences in samples'
14. US Patent No. 5,888,739, entitled 'Detection of nucleic acids using G-quartets and Itetraplexes'
15. US Patent No. 5,916,779, entitled 'Strand displacement amplification of RNA
targets'
16. US Patent No. 5,919,630, entitled 'Detection of nucleic acids by fluorescence quenching'
17. US Patent No. 5,928,869, entitled 'Detection of nucleic acids by fluorescence quenching'
18. US Patent No. 5,935,791, entitled 'Detection of nucleic acids by fluorescence quenching'
IPSCIO Record ID: 299289
Exclusive License. As of the Original Date, Licensor hereby grants, and agrees to grant, to Licensee an exclusive (even as to Licensor), royalty-bearing license in the Field of Use under the Licensor Intellectual Property used or required to be used in the Field of Use during the Term, (i) to conduct research, sample, develop (including clinical development), manufacture, make, use, market, promote, sell, offer for sale, have sold, distribute, import and export New Products in the Territory, and (ii) to use the Reagents in the Territory solely for the purpose of making New Products.
Limited Sublicense Rights. Licensee shall be entitled to grant full sublicenses to its Affiliates and limited sublicenses to its distribution, marketing and/or sales partners.
6,800,468 – UDP-galactose: .beta.-N-acetyl-glucosamine .beta.1,3galactosyltransferases, .beta.3Gal-T5
6,995,004 – UDP-N-ACETYLGLUCOSAMINE: GALACTOSE-.beta. 1,3-N-ACETYLGALACTOSAMINE-.alpha.-R / N-ACETYLGLUCOSAMINE-.beta. 1,3,-N-ACETYLGALACTOSAMINE-.alpha.-R (GLCNAC TO GALNAC) .beta.1,6-N-ACETYLGLUCOSAMINYLTRANSFERASE, C2/4GNT
6,635,461 – UDP-N-acetylglucosamine: galactose-.beta.1, 3-N-acetylgalactosamine-.alpha.-R/(GlcNAc to GalNAc) .beta.1,6-N-acetylglucosaminyltransferase, C2GnT3
Carved Factor IX Claims shall mean any Potential Carved Factor IX Claim with respect to which the parties have filed a separate patent application.
Potential Carved Factor IX Claims shall mean any composition-of-matter claims and any method of treatment claims that are supported by Patent Rights Controlled by Licensor that (i) do or could explicitly and solely recite and claim Licensee Materials, or (ii any Licensee Improvements made or reduced to practice by Licensor.
Reagents means the enzymes and sugar nucleotides required to use the Licensor Technology in the manufacture of New Products.
New Product shall mean the following: (a) any of the Licensee Materials modified using either (i) the Licensor Technology, (ii) any Licensor Improvements, or (iii) any combination of all or some of (i) and (ii) above, and (b) any Licensee Materials covered by any Carved Factor IX Claims (except to the extent such claims constitute Licensee Improvements).
Licensor Exclusive Compounds shall mean any and all forms of erythropoietin and granulocyte colony stimulating factor including, but not limited to, with respect to either of the foregoing: full length proteins, truncated proteins, fusion proteins, analogs, mutants, splice variants, and conjugates with other molecular entities such as proteins, peptides, organic or inorganic substances.
M1 Profile for the New Factor IX Product means the parameters for candidate selection required for PEG-F9, as amended from time to time.
Licensor Intellectual Property means Licensor Technology and the Licensor Improvements.
Licensor Technology means the Licensor Patents and any Know-How Controlled by Licensor relating to methods and processes for the glycosylation design and remodeling of proteins, peptides and antibodies, including, without limitation, its GlycoAdvance®, GlycoPEGylation™ and GlycoConjugation™ technologies, and other carbohydrate synthesis processes, and all Know-How resulting from work conducted by Licensor during the Term.
Licensor Improvements means any and all Improvements relating to the Licensor Technology made, conceived, or reduced to practice by (i) either Licensor or Licensee or both in the conduct of the Original Work Plan under the Original Agreement or the Work Plan under this Agreement, (ii) either Licensor or Licensee or both under this Agreement.
Patent Rights shall mean individually and collectively any and all patents and/or patent applications and provisional applications, all inventions disclosed therein, and any and all continuations, continuations-in-part, continued prosecution applications, divisions, renewals, patents of addition, reissues, confirmations, registrations, revalidations, revisions and re-examinations thereof, utility models, petty patents, design registrations and any and all patents issuing therefrom and any and all foreign counterparts thereof and extensions of any of the foregoing including without limitation extensions under the U.S. Patent Term Restoration Act, extensions under the Japanese Patent Law, and Supplementary Protection Certificates (SPCs) according to Counsel Regulation (EEC) No. 1768/92 and similar extensions for other patents under any applicable law in any country of the world.
IPSCIO Record ID: 299242
Licensee Ratio-Based Database means a Database containing relative levels of expressed genes within or between cells wherein such Database may be built from data where measurements from one RNA sample are compared with those from another RNA sample; provided, however, a Licensee Ratio-based Database shall in no event include an Incyte Expression Database.
Resolver Software means Licensees software package with features.
Instrument means readers, fluids stations, hybridization devices, sample logging, handling and processing systems, detection and measurement equipment, computer work stations (and associated software) and other instruments or systems used in the preparation or use of Nucleic Acid Arrays or the extraction or processing of data from Nucleic Acid Arrays.
Patent Rights means U.S Patents #5,700,637 and 5,436,327 and International Application No. PCT/GB/89/00460 and PCT/GB/89/01114 and all continuations, continuations-in-part, divisionals, re-examinations and reissues, and any patents issuing therefrom or claiming common priority thereto, together with any other patents which issue to Licensor, or which otherwise come into the ownership or under the control of Licensor during the Term and which Licensor has the right to license, and which relate, but only to the extent that they relate, to the general use of Nucleic Acid Arrays, including methods for making or analyzing Nucleic Acid Arrays and for creating Licensee Ratio-based Databases, but excluding therefrom any such patents that relate but only to the extent that they relate to instrumentation for the reading of Nucleic Acid Arrays, the design of probes for use on Nucleic Acid Arrays, particular sequences used on Nucleic Acid Arrays, software used in instrumentation for reading Nucleic Acid Arrays or in probe design, microfluidics or the control or assurance of the quality of Nucleic Acid Arrays.
5,700,637 – Apparatus and method for analyzing polynucleotide sequences and method of generating oligonucleotide arrays
5,436,327 – Support-bound oligonucleotides
Licensed Product means a Nucleic Acid Array and any component thereof, an Instrument, kit, reagent, computer software or other product, apparatus or composition of matter of whatever nature which is Covered by a Valid Claim, but not including a Database or other information (other than a Database or information which is an integral part of a product).
In-Situ Inkjet Synthesis means a method for the fabrication of Nucleic Acid Arrays on a solid support by synthesizing by chemical means individual nucleic acids directly on such solid support at specific locations on the Nucleic Acid Array using an inkjet printing device to deliver to defined locations on the surface of the solid support precursors for or reagents which allow mononucleotide additions.
Incyte Expression Database means a Database consisting entirely or substantially of gene expression data and containing at least five hundred data points, where a single data point is data relating to the level of expression of one gene in one sample.
Database means a collection of information derived from one or more Nucleic Acid Arrays, which is licensed for value to multiple third parties, but does not include a database for internal use exclusively by an Entity.
Excluded Fields means any of the following activities:
(a) the use of a Nucleic Acid Array for or in connection with any activity other than gene expression profiling or non-commercial genotyping;
(b) the exercise of any of the rights licensed under this Agreement for the purposes of the manufacture, having manufactured, use, Supply, creation or contribution to the creation of Incyte Expression Databases; and
(c) [the manufacture or having manufactured of Nucleic Acid Arrays by a method other than In-Situ Inkjet Synthesis.
Licensee is a leader in the emerging field of informational genomics. Informational genomics involves acquiring, storing, and analyzing gene expression information gathered from throughout a cell to identify a majority of the medically important drug targets and gene functions. Licensee combines the power of informatics and genomics to create a proprietary platform that accelerates and enhances the drug discovery process for pharmaceutical and biotechnology companies and improves agricultural products.
IPSCIO Record ID: 223131
Licensor hereby grants to Licensee and its Affiliates a worldwide, non-exclusive license under the Licensor Core Technology (and any improvements thereto) to research, develop, make, have made, use, import, offer for sale, sell, have sold or otherwise exploit compounds that inhibit the Target (including but not limited to Program Compounds) and/or Products in the Territory.
Licensor hereby grants to Licensee and its Affiliates a worldwide, non-exclusive license under the Licensor Background Technology to research, develop, make, have made, use, import, offer for sale, sell, have sold or otherwise exploit compounds that inhibit the Target (including but not limited to Program Compounds) and/or Products in the Territory.
Research Program Technology means Research Program Know-How and Research Program Patents.
Research Program Patents mean Licensee Research Program Patents, Licensor Research Program Patents, and Joint Research Program Patents.
Licensor Inhibition Mode Technology means Licensor Inhibition Mode Patents and Licensor Inhibition Mode Know-How.
Patents within the Licensor Core Technology.
U.S. Patent No. 6,344,330 – Pharmacophore Recombination For the Identification of Small Molecule Drug Lead Compounds
U.S. Patent No. 6,335,155 – Methods for rapidly identifying small organic molecule ligands for binding to biological target molecules
Licensor Core Technology mean all patents, patent applications, invention disclosures, certificates of invention and applications for certificates of invention, owned or Controlled by Licensor or its Affiliates as of the Agreement’s Effective Date and/or during the term of the Agreement, and all information, materials and other subject matter, and improvements thereof, relating to (i) mutants or the use thereof in screening, (ii) the use of novel protein engineering techniques and their application in drug discovery, (iii) target-directed fragment discovery and maturation to produce drug leads, including monophores, extenders and fragments, and monophore, extender and fragment libraries for such purposes, (iv) covalent tethering and techniques related thereto (e.g., NMR, X-ray, mass spec. AUC, Biacore) and its use to discover fragments and test binding hypotheses of fragments and leads, or (v) dynamic and other combinatorial chemistries related to proteins, as well as any divisions, continuations, continuations-in-part, reissues, reexaminations, extensions, supplementary protection certificates, and other governmental actions which extend any of the patent applications, patents, invention disclosures, certificates of invention or certificates of invention applications above, and all foreign counterparts to any of the foregoing. Notwithstanding the foregoing, Licensor Core Technology shall exclude all Licensor Inhibition Mode Technology and Research Program Technology.
Licensor Background Technology means all patents, patent applications, invention disclosures, certificates of invention and applications for certificates of invention, Controlled by Licensor or its Affiliates as of the Effective Date and/or during the term of the Agreement, that (i) are necessary or useful to Licensee in the research, development, or commercialization of compounds that inhibit the Target (including but not limited to Program Compounds and Products), and (ii) are not Licensor Inhibition Mode Patents, Research Program Patents or within the Licensor Core Technology; as well as any divisions, continuations, continuations-in-part, reissues, reexaminations, extensions, supplementary protection certificates, and other governmental actions which extend any of the patent applications, patents, invention disclosures, certificates of invention or certificates of invention applications above, and all foreign counterparts to any of the foregoing.
IPSCIO Record ID: 227242
(i) a worldwide, royalty-bearing, non-exclusive license, without the right to grant sublicenses, under the Licensor Patent Rights and other rights in the Licensor Technology, to develop, make, use, sell, import and distribute Licensed Products and to develop and provide Licensed Services in the field of Chromatographic Bioseparations;
(ii) a worldwide, royalty-bearing, non-exclusive license under the Licensor Patent Rights and other rights in the Licensor Technology (i) to have a third party manufacture bulk quantities of Licensor Compounds for incorporation into Media Products and (ii) to have a third party manufacture Media Products; and
(iii) a worldwide, royalty-bearing, exclusive license, without the right to grant sublicenses, under the Licensor Patent Rights and other rights in the Licensor Technology to use Licensor Compounds to develop Licensed Products, provide Licensed Services, and sell Licensor Compounds that are incorporated into Media Products; provided, however, that Licensor expressly excludes from this license grant and reserves to itself all rights in and to Licensor Compounds under the Licensor Patent Rights and other rights in Licensor Technology for its own internal programs for applications outside the field of Chromatographic Bioseparations, including without limitation pharmaceutical applications, without payment to Licensee.
Licensed Product means any product (i) which incorporates an Licensor Compound; or (ii) which, absent the licenses granted to Licensee hereunder, the manufacture, use or sale of such product would infringe one or more Valid Claims of the Licensor Patent Rights or the Joint Patent Rights; or (iii) which is developed, manufactured or used through use of the Licensor Technology or the Joint Technology.
Media Product means a Licensed Product that is chromatography media (e.g., a ligand covalently linked to media such as Sepharose).
Chromatographic Bioseparations means a method to purify or isolate a particular Biomolecule from a mixture of Biomolecules by means of a differential or selective non-covalent interaction of the particular Biomolecule in a mobile phase with a stationary phase consisting of a small organic molecule ligand that is covalently attached to a particulate solid support (i.e., a chromatographic resin).
Patent Rights means any claims covering Licensee Technology, Licensor Technology, or Joint Technology in United States or foreign patent applications, together with any and all patents that have issued or in the future issue therefrom, and all related divisionals, continuations, continuations-in-part (to the extent directed to the same subject matter), reissues, renewals, extensions or additions and foreign counterparts thereof. Licensor Patent Rights means Patent Rights that are either (i) assigned solely to Licensor, (ii) assigned jointly to Licensor and a party other than APB, or (iii) licensed to or otherwise controlled by Licensor, in each case to the extent that Licensor has the ability to license or sublicense the rights required under this Agreement without payment to a third party. Licensee Patent Rights means Patent Rights that are either (i) assigned solely to Licensee, (ii) assigned jointly to Licensee and a party other than Licesor, or (iii) licensed to or otherwise controlled by Licensee, in each case to the extent that Licensee has the ability to license or sublicense the rights required under this Agreement without payment to a third party. Joint Patent Rights means Patent Rights assigned to both Licensor and Licensee as joint owners. Joint Patent Rights will include (i) Patent Rights claiming Joint Technology and (ii) Patent Rights claiming both Licensor Technology and Licensee Technology in a single filing. Collaboration Patent Rights means claims in Patent Rights that cover Collaboration Technology.
Licensor Compound means a small organic chemical molecule transferred by Licensor to Licensee pursuant to the Technology Transfer Plan.
Biomolecules means polypeptides, proteins, oligonucleotides, polynucleotides, oligosaccharides, polysaccharides or any combination of such molecules, whether produced by natural means or by organic synthesis on solid support or in solution.
IPSCIO Record ID: 203394
For the Non-Exclusive License Grant, Licensor grants a non-exclusive, worldwide license under the Licensed Patents in the Non-Exclusive Field, with the right to sublicense as herein provided to make, have made, use, offer to sell, sell and import Licensed Products or Licensed Processes.
For Sublicensing, Licensee shall have the right to sublicense the rights granted solely for use with Licensees Hybrigel Technology to a Sublicensee.
Hybrigel Technology shall mean Licensees proprietary electrophoretic hybridization technology that relies on gel-based capture technology and that is useful in the isolation of nucleic acid and the diagnosis of disease as disclosed in the U.S. patents, and foreign patents relating thereto.
The non-exclusive field means any field, other than the exclusive field, in which the Hybrigel Technology is employed.
IPSCIO Record ID: 289255
LNP intellectual property for use in RNAi therapeutic products using LNP technology.
LNP technology relates to where RNAi therapeutics have the potential to treat a broad number of human diseases by “silencing†disease causing genes. RNAi therapeutics, such as “siRNAs,†require delivery technology to be effective systemically. LNP technology represents the most widely adopted delivery technology for the systemic delivery of RNAi therapeutics. Licensor’s LNP platform is being utilized in multiple clinical trials. LNP technology encapsulates siRNAs with high efficiency in uniform lipid nanoparticles that are effective in delivering RNAi therapeutics to disease sites in numerous preclinical models.
RNAi Product means a product containing, comprised of or based on siRNA, Dicer Substrates, Multivalent RNA, or any derivatives thereof, which are effective in gene function modulation and designed to modulate the function of particular genes or gene products by causing degradation through RNA interference of a Target mRNA to which such siRNAs or siRNA derivatives or moieties are complementary. For greater clarity, an RNAi Product shall not include Antisense.
siRNA means a double-stranded ribonucleic acid (RNA) composition designed to act primarily through an RNA interference mechanism that consists of either (a) two separate oligomers of native or chemically modified RNA that are hybridized to one another along a substantial portion of their lengths, or (b) a single oligomer of native or chemically modified RNA that is hybridized to itself by self-complementary base-pairing along a substantial portion of its length to form a hairpin.
Supplemental Field Product means a product containing, comprised of, or based on Antisense or Gene Therapy.
Intellectual Property means any and all discoveries, inventions, information, knowledge, know-how, trade secrets, designs, practices, methods, uses, compositions of matter, articles of manufacture, protocols, formulas, processes, assays, skills, experience, techniques, data, reports, and results of experimentation and testing and other scientific or technical information, patentable or otherwise, controlled by a party after the Effective Date.
RNAi (RNA interference) is a revolution in biology, representing a breakthrough in understanding how genes are turned on and off in cells, and a completely new approach to drug discovery and development. Its discovery has been heralded as “a major scientific breakthrough that happens once every decade or so,†and represents one of the most promising and rapidly advancing frontiers in biology and drug discovery. RNAi is a natural process of gene silencing that occurs in organisms ranging from plants to mammals.
Supplemental Field means the delivery of (i) single-stranded oligonucleotides, either chemically modified or unmodified, acting through the RNase H mechanism or by or other mechanisms of translational arrest but excluding RNA interference involving RISC (“Antisenseâ€) and (ii) DNA plasmids or messenger RNA (mRNA) either chemically modified or unmodified that are transcribed and/or translated into protein and wherein the pharmacological activity is dependent on expression of the protein (Gene Therapy).
IPSCIO Record ID: 289203
For Licensor Research IP, Licensor agrees to grant a worldwide, co-exclusive license, with the right to grant and authorize sublicenses, under the Licensor Research IP to perform its obligations and carry out any tasks or activities pursuant to the Research Plan, and under the Licensor KnowHow to research, develop, make, and have made, use, sell, offer for sale, and import Licensed Products in the Field, in each case including the right to practice any methods or processes.
For the Yale Licensed IP, Licensor agrees to grant a worldwide, exclusive license, with the right to grant and authorize sublicenses, under the Yale Licensed IP, to perform its obligations and carry out any tasks or activities pursuant to the Research Plan, and to research, develop, make, and have made, use, sell, offer for sale, and import Licensed Products in the Field, in each case including the right to practice any methods or processes.
For the Collaboration IP, Licensor agrees to grant a worldwide, exclusive license, with the right to grant and authorize sublicenses, under Licensors interest in and to any Collaboration IP, whether Joint Collaboration IP or Licensors Sole Collaboration IP, to perform its obligations and carry out tasks and activities pursuant to the Research Plan, and to research, develop, make, and have made, use, sell, offer for sale, and import Licensed Products in the Field, in each case including the right to practice any methods or processes.
For the Screening License, Licensor agrees to grant a worldwide, non-exclusive license, under the Yale Patents, to screen Small Molecule Compounds against targets that are not Collaboration Targets but are within the Notch signaling pathway.
For the Collaboration Reagents and Collaboration Assays, Licensor agrees to grant a worldwide, license to make and use Collaboration Reagents and Collaboration Assays for any purpose, which license is exclusive under the Yale Licensed IP and Collaboration IP, and nonexclusive under the Licensor Know-How.
For the Collaboration Inventions, Licensor agrees to grant a worldwide license, including the right to grant and authorize sublicenses, to Collaboration Inventions, other than Collaboration Reagents, Collaboration Assays, or Licensed Products, including making, and having made, using and selling any such Collaboration Inventions, which license is exclusive under the Yale Licensed IP and Collaboration IP, and non-exclusive under the Licensor Know-How.
For the Follow-On Licensor IP, Licensor agrees to grant a worldwide, non-exclusive license, with the right to grant and authorize sublicenses, under the Follow-On Licensor IP, to research, develop, make, and have made, use, sell, offer for sale, and import Licensed Products in the Field, in each case including the right to practice any methods or processes.
Collaboration Target means Notch 1, Notch 2, Notch 3, Notch 4, Jag 1, Jag 2 and DLLl; and any other target added.
DLLl means the human gene DLLl and the protein, or fragment or epitope thereof, encoded by such gene, including the protein encoded by the nucleic acid sequence set forth in REFSEQ accession No. NM 005618 and NP 005609, and naturally occurring variants and fragments thereof.
Notch l means the human gene Notch 1 and the protein, or fragment or epitope thereof, encoded by such gene, including the protein encoded by the nucleic acid sequence set forth in REFSEQ accession No. NM 017617 and NP 060087 and naturally occurring variants and fragments thereof.
Jag l means the human gene Jag 1 and the protein, or fragment or epitope thereof, encoded by such gene, including the protein encoded by the nucleic acid sequence set forth in REFSEQ accession No. NM 000214 and NP 000205 and naturally occurring variants and fragments thereof.
Licensee is a health care company that has expertise and capability in developing and marketing human biopharmaceuticals and has research and development programs.
IPSCIO Record ID: 240484
PCR Technology shall mean polymerase chain reaction technology covered by United States Patent Nos. B1 4,683,195 and B1 4,683,202 and any reissue or reexamination patents thereof.
4,683,195 – Process for amplifying, detecting, and/or-cloning nucleic acid sequences
4,683,202 – Process for amplifying nucleic acid sequences
Licensed Services shall mean the performance of an Assay by Specialty Labs to detect nucleic acid sequences associated with a human disease or condition within the Licensed Field. Licensed Services include but are not limited to, any combination of the steps of collecting a sample for analysis, isolating nucleic acid sequences therein, amplifying one or more desired sequences, analyzing the amplified material and reporting the results.
Diagnostic Product shall mean an assemblage of reagents, including but not limited to reagents packaged in the form of a kit, useful in performing an Assay.
Assay shall mean an IN VITRO diagnostic procedure utilizing PCR Technology to detect the presence, absence or quantity of a nucleic acid sequence associated with a specific human disease or condition.
IPSCIO Record ID: 291167
Licensee and Licensor will design and identify morpholino and morpholino peptide conjugate splice switching oligomers that modulate the splicing of Licensee-Licensor Exclusive Targets and the Licensor Exclusive Targets. For each Licensee-Licensor Exclusive Target, Licensor will provide Splicing Modulators to be tested for their ability to modulate splicing.
General Overview. Licensee and Licensor will identify and develop Splicing Modulators that modulate the splicing of Licensee-Licensor Exclusive Targets and Licensor Exclusive Targets, as more specifically described in the Research Plan.
Licensor grants Licensee the following licenses:
Licensor grants Licensee an exclusive worldwide license to the Licensor Patents solely to research, develop, offer for sale, sell, import and export Licensee-Licensor Exclusive Products.
Licensor-Licensee Exclusive Products are a fixed pool of exclusive Gene Targets for research and development efforts to discover and develop Products that modify such exclusive Gene Targets to develop Splicing Modulators.
Licensor owns or controls certain patents related to morpholino chemistry.
Licensee-Licensor Exclusive Product means a Splicing Modulator that modulates an Licensee-Licensor Exclusive Target and that is Covered by the Licensor Patents and/or an Licensee Invention Patent.
Licensor Exclusive Product means a Splicing Modulator that modulates an Licensor Exclusive Target and is Covered by the Splicing Patents and/or an Licensor Invention Patent.
Splicing Modulator means an oligonucleotide or analog thereof that selectively modulates RNA Splicing or polyadenylation by a non-Rnase dependent mechanism at the nucleic acid level by specifically binding to the sequence of a selected messenger or viral ribonucleic acid (RNA) by base-pairing, thus causing a selective pattern of gene expression.
Licensor Patents means the patent(s) listed.
5,142,047 – Uncharged polynucleotide-binding polymers
Splicing Patents means the Isis Splicing Patents and the Licensee Splicing Patents.
Licensee Splicing Patents means the patent(s) listed.
5,976,879 – Antisense oligonucleotides which combat aberrant splicing and methods of using the same
Isis Splicing Patents means the patent(s) listed.
6,210,892 – Alteration of cellular behavior by antisense modulation of mRNA processing
Licensor Invention Patent and/or Licensee Invention Patent has the meaning depending how any Inventions are made under the Research Plan will define if it is an Licensee Invention or an Licensor Invention, as the case may be, and Patents claiming such Inventions will be Licensee Invention Patents or Licensor Invention Patents, respectively.
Licensee-Licensor Exclusive Target also known as Gene Targets that are selected for their research and development efforts.
List of the five selected Targets:
TNFRl
TNFR2
He.r2
BCL-X
CD28
Licensor Exclusive Target also known as Gene Targets that are selected for their research and development efforts.
List of the five selected Targets:
PDl
CTLA4
TGF beta
P53
IL23
IPSCIO Record ID: 203487
Licensor Patent Rights shall mean, collectively, (a) all patents and patent applications listed and any foreign counterparts claiming priority therefrom; (b) all patent applications heretofore or hereafter filed in any country which claim (and only to the extent they claim) the Licensor Materials and Information or the use thereof; (c) all patents that have issued or in the future issue from any of the foregoing patent applications, including without limitation utility, model and design patents and certificates of invention; and (d) all divisionals, continuations, continuations-in-part,reissues, reexamination certificates or renewals from, extensions of or additions to any such patents or patent applications. Notwithstanding the foregoing, Licensor Patent Rights shall not include any Patent Rights that are within the Licensee Patent Rights, the Joint Patent Rights or the Properdin Antibody Patent Rights.
Patent Application Pending: US 09/138,723
Licensor Know-How shall mean all Know-How developed or acquired by Licensor solely or jointly with a Third Party that is related to Properdin Antibodies.
Joint Patent Rights shall mean all Patent Rights that claim Joint Inventions.
Joint Know-How shall mean Know-How developed or acquired jointly by employees or agents of both Licensor and Licensee as a result of their collaboration under the 1999 Agreement or under this Agreement; provided that such Know-How does not include subject matter within the Licensee Materials and Information, the Licensor Materials and Information or the Properdin Antibody Materials and Information.
Licensor Materials and Information shall mean, collectively, (a) the Antigen; (b) all reagents, samples and other chemical or biological materials regarding the Antigen which resulted or is otherwise derived from use of the Antigen under the 1999 Agreement or which results or is otherwise derived from use of the Antigen under this Agreement; and (c) all information (and all tangible and intangible embodiments thereof) regarding the foregoing, irrespective of inventorship, which is disclosed by Licensor to Licensee hereunder or which resulted or is otherwise derived from use of the Antigen under the 1999 Agreement or which results or is otherwise derived from use of the Antigen pursuant to this Agreement. Notwithstanding the foregoing, Licensor Materials and Information shall not include subject matter within the Licensee Materials and Information or the Properdin Antibody Materials and Information.
IPSCIO Record ID: 223141
applications and patents.
W003023057 (PCT /EP02/05489) – Method and Diagnosis Kit for Selection and/or for Qualitative and/or Quantitative Detection of Cells
Licensed Products shall mean in-vitro diagnostic assays to isolate, detect, identify, quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of prostate cancer and/or bladder cancer, for the purpose of research, diagnosis or medical care, the manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the AdnaGen Patent Rights.
'Group 1 Additional Products' shall mean in-vitro diagnostic assays to isolate, detect, identify or quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of kidney cancer, cervical cancer, and/or ovarian cancer, for the purpose of research, diagnosis or medical care, the manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the Licensed Patent Rights.
'Group 2 Additional Products' shall mean in-vitro diagnostic assays to isolate, detect, identify or quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of lung cancer, colon cancer, and/or breast cancer, for the purpose of research, diagnosis or medical care, the manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the Licensed Patent Rights.
IPSCIO Record ID: 301257
General Overview. Licensor and Licensee will identify and develop Splicing Modulators that modulate the splicing of Licensor-Licensee Exclusive Targets and Licensee Exclusive Targets, as more specifically described in the Research Plan.
Licensor grants to Licensee an exclusive worldwide license to the Splicing Patents solely to research, develop, make and have made, offer for sale, sell, import and export Licensee Exclusive Products.
Licensor-Licensee Exclusive Products are a fixed pool of exclusive Gene Targets for research and development efforts to discover and develop Products that modify such exclusive Gene Targets to develop Splicing Modulators.
Licensee owns or controls certain patents related to morpholino chemistry.
Licensor-Licensee Exclusive Product means a Splicing Modulator that modulates an Licensor-Licensee Exclusive Target and that is Covered by the Licensee Patents and/or an Licensor Invention Patent.
Licensee Exclusive Product means a Splicing Modulator that modulates an Licensee Exclusive Target and is Covered by the Splicing Patents and/or an Licensee Invention Patent.
Splicing Modulator means an oligonucleotide or analog thereof that selectively modulates RNA Splicing or polyadenylation by a non-Rnase dependent mechanism at the nucleic acid level by specifically binding to the sequence of a selected messenger or viral ribonucleic acid (RNA) by base-pairing, thus causing a selective pattern of gene expression.
Licensee Patents means the patent(s) listed.
5,142,047 – Uncharged polynucleotide-binding polymers
Splicing Patents means the Isis Splicing Patents and the Licensor Splicing Patents.
Licensor Splicing Patents means the patent(s) listed.
5,976,879 – Antisense oligonucleotides which combat aberrant splicing and methods of using the same
Isis Splicing Patents means the patent(s) listed.
6,210,892 – Alteration of cellular behavior by antisense modulation of mRNA processing
Licensee Invention Patent and/or Licensor Invention Patent has the meaning depending how any Inventions are made under the Research Plan will define if it is an Licensor Invention or an Licensee Invention, as the case may be, and Patents claiming such Inventions will be Licensor Invention Patents or Licensee Invention Patents, respectively.
Licensor-Licensee Exclusive Target also known as Gene Targets that are selected for their research and development efforts.
List of the five selected Targets:
TNFRl
TNFR2
He.r2
BCL-X
CD28
Licensee Exclusive Target also known as Gene Targets that are selected for their research and development efforts.
List of the five selected Targets:
PDl
CTLA4
TGF beta
P53
IL23
IPSCIO Record ID: 280836
The term Licensed Product shall mean any product which (a) if made, used or sold absent the license granted hereby would infringe the valid claim of one or more valid issued patent(s) included within the Licensor Patent Rights, or (b) cannot be developed, manufactured, used or sold without utilizing any part of the Licensor Technology.
The term Licensor Technology shall mean the Licensor LM609 Technology and the Licensor Angiogenesis Technology, whether or not the same is eligible for protection under the patent laws of the United States or elsewhere, and whether or not any such technology would be enforceable as a trade secret or the copying of which would be enjoined or restrained by a court as constituting unfair competition.
The terms Licensor LM609 Technology shall mean, collectively, Hybridoma LM609, LM609, LM609 Gene and LM609 Sequence information.
The term LM609 Gene shall mean a nucleic acid encoding all or a portion of LM609.
The term LM609 shall mean the anti-avB3 integrin murine antibody produced by Hybridoma LM609 and fragments of said murine antibody.
The term LM609 Sequence Information shall mean the nucleotide sequence embodied in an LM609 Gene isolated from Hybridoma LM609 and the amino acid residue sequence information embodied in LM609.
The term Hybridoma LM609 shall mean the cell line HB 9537 deposited with the American Type Culture Collection.
The term Licensor Angiogenesis Technology shall mean so much of the technology as is proprietary to Licensor disclosed in United States Patent Application Serial No. 08/210,715, entitled 'Methods and Compositions Useful for Inhibition of Angiogenesis' filed March 14, 1994, a copy of which is attached hereto and incorporated herein by
reference.
Technology relates to a murine monoclonal antibody and the use of the antibody as an inhibitor of angiogenesis.
An angiogenesis inhibitor is a substance that inhibits the growth of new blood vessels (angiogenesis).
