Description
Created On: 2020-07-15
Record Count: 6
Primary Industries
- Respiratory
- Device
- Medical
- Drugs
- Delivery
- Disease
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: 286068
(i) an exclusive (even as to Licensor, Licensor and their Affiliates), royalty-bearing license, with the right to grant sublicenses, under the Licensor Know-How and Licensor Patent Rights, to make, have made, use, have used, promote, develop, offer to sell, sell, have sold, import, have imported, export, have exported, and market Formulated Amikacin and Product in the Field throughout the Royalty Territory solely in connection with Exploitation of the Product in the Field throughout the Royalty Territory, provided that the foregoing license is subject to Licensor’s right to Manufacture as set forth in Agreement;
(ii) a non-exclusive, royalty-free license, under the Licensor Trademarks, with the right to grant sublicenses, throughout the Royalty Territory, to use and display the Licensor Trademarks in connection with the Commercialization of the Product in the Field throughout the Royalty Territory, as provided under and in accordance with this agreement; and
(iii) a non-exclusive, royalty-bearing license, under the Licensor Know-How and Licensor Patent Rights, with the right to grant sublicenses, in the Field throughout the Royalty Territory, to use, have used, promote, offer to sell, sell, have sold, import, have imported, export, have exported, and market the Device solely in connection with Exploitation of the Product in the Field throughout the Royalty Territory.
Formulated Amikacin means Amikacin in a liquid formulation existing as of the Effective Date or developed pursuant to this Agreement for use in Pulmonary Delivery by means of the Device.
Device means a nebulizer device compnsmg at least an aerosol generator (which, as of the Effective Date, has the configuration designated by Licensor as the 'OnO' or 'OnO2'), housing and a medicine cup.
Licensor Patent Rights means (a) the Patents listed, (b) any Patents that issue from the Patent Applications, (c) any Patents and/or Patent Applications that claim priority to a Patent or Patent Application listed:
7108197 – Droplet ejector with oscillating tapered aperture
7083112 – Method and apparatus for dispensing liquids as an atomized spray
7040549 – Systems and methods for controlling fluid feed to an aerosol generator
Licensor Trademarks means the trademarks and any Trademarks of Licensor or Licensor that are developed during the term of this Agreement for use with the Product. Trademark means NEKTAR(R).
PODS Platform Technology means any technology, article of manufacture, component, system, discovery, or invention that relates to the Device, Device components (including without limitation controller, circuitry, software code, algorithm, electrical connections and fluid connections) and methods of making or using the Device (including without limitation methods of treatment or administration).
IPSCIO Record ID: 230775
For the Product Manufacturing License, Licensor grants the non-transferable license, without the right to grant sublicenses, except to subcontractors and/or vendors that fabricate and/or supply components of the Product on behalf of Licensee as shall be mutually agreed to from time to time, under the Licensor Licensed Rights and the Manufacturing Improvements to manufacture and assemble components of the Product, excluding the OnQ Aerosol Generator, and to assemble final Product for distribution and sale in the Territory.
For the distribution rights, Licensor grants to Licensee a non-transferable right and license under the Licensor Licensed Rights to import, export, offer for sale and sell the Product in the Territory solely for use by end users in the home-based, open-cup, continuous flow, general purpose nebulizer market and in alternate care facilities.
For the OnQ Aerosol Generator Manufacturing License, Licensor grants a non-exclusive, non-transferable license, without the right to grant sublicenses, under the Licensor Technology to manufacture and assemble the OnQ Aerosol Generator at the OnQ Aerosol Generator Manufacturing Facility solely during the OnQ Manufacturing Period, and solely for use in assembling the Product that Licensor is permitted to distribute and sell and for use by Licensor.
For the Back~Up Manufacturing Right, under certain conditions, Licensor shall grant a non-exclusive, non-transferable license, without the right to grant sublicenses, under the Licensor Technology to manufacture and assemble the OnQ Aerosol Generator solely for Licensees use in assembling the Product for sale and distribution.
For the Trademark License, Licensor grants a non-exclusive, nontransferable license, with no right to sublicense, to use the Trademarks in each country of the Territory in connection with the marketing, sale and distribution of Product in the Territory.
Product means Licensors proprietary Aeroneb® Go open-cup, continuous flow, general-purpose portable nebulizer, incorporating the OnQ Aerosol Generator, and including any Product Improvement incorporated therein.
OnQ Aerosol Generator means Licensors proprietary aerosol generator.
The Aeroneb Go, a proprietary product of Licensor, is an open-cup nebulizer intended for use by pediatric and adult patients, for continuous aerosolization of physician-prescribed solutions for inhalation that are approved for use with a general-purpose nebulizer.
IPSCIO Record ID: 266845
For the Non-Exclusive, Research License, Licensor grants a nonexclusive, research only license or sublicense, as applicable, in the Territory, with the right to grant sublicenses, under the Licensor Technology and Licensor Technology Improvements to conduct non-human studies for the development of Other Products, solely for the prevention or treatment of a Target Indication in the Target Populations.
Licensed Product means a combination drug-device product using or otherwise practicing the Licensor Technology and delivering Pulmonary Surfactants (alone or in combination with other pharmaceutical compounds).
Drug Product means a pharmacological agent(s), including Pulmonary Surfactants, together with any excipients or inactive ingredients, formulated for use in connection with an Aerosol Device or Disposable Dose Packet.
Aerosol Device means a device to aerosolize a pharmaceutical compound for administration to humans. It is contemplated that the Aerosol Device shall consist of permanent (e.g., nondisposable) components that control power and electronics (e.g., control unit) and a physical mechanism (e.g., pump) to provide a means for dispensing the Drug Product from the container closure system.
Aerosol Technology means any technology related to the aerosolization of a liquid form of a pharmaceutical compound. Aerosol Technology does not include technology that is related to the delivery of aerosols as dry powders.
An Other Product means a combination drug-device product using or otherwise practicing the Licensor Technology and delivering pharmaceutical compounds other than Pulmonary Surfactants as an active ingredient in humans, alone or in combination with other pharmaceutical compounds, that are other than Pulmonary Surfactants.
Target Indications means the following Respiratory Indications: Respiratory Distress Syndrome (RDS); Chronic Lung Disease (BPD); Transient Tachypnea; Hypoxemia; Pulmonary Hypertension; Pneumonia; Bronchiolitis; Diaphragmatic Hernia; Acute Lung Injury (ALI); Acute Respiratory Distress Syndrome (ARDS); Lung Transplantation; Respiratory Syncitial Virus (RSV); Cystic Fibrosis; Chronic Obstructive Pulmonary Disease (COPD); and Emphysema.
Target Populations means human patients in a Hospital Setting receiving forms of treatment for the applicable Respiratory Indication that are typically and principally provided within a Hospital Setting.
The restructure strategic alliance agreement is to unite two complementary respiratory technologies – Licensee peptide-containing synthetic surfactant technology with Licensor’ novel capillary aerosolization technology – to deliver therapeutics to the deep lung.
IPSCIO Record ID: 273406
Drug Product means Pulmonary Surfactant(s) or other pharmacological agent(s), together with any excipients or inactive ingredients, formulated for use in a Licensed Product.
Licensor Technology means (a) Licensors proprietary Aerosol Technology (including without limitation the technologies, devices, processes, equipment, materials and know-how relating to the aerosolization of liquid forms of drug products and the Aerosol Devices and Disposable Dose Packs therefor) and (b) all Intellectual Property owned by or licensed to Licensor relating to such Aerosol Technology, including, without limitation, the Licensor Patents.
Licensor Patents means all Patents owned by Licensor or to which Licensor otherwise has rights that claim or are directed to the Licensor Technology.
Aerosol Technology means any technology related to the aerosolization of a liquid form of a pharmaceutical compound. Aerosol Technology does not include technology that is related to the delivery of aerosols as dry powders.
Joint Patents means all Patents that claim or are directed to any Joint Inventions.
Intellectual Property means all know how, Inventions, Patents, copyrights, trademarks, trade secrets and any other intellectual property rights in the Territory that may be secured in any place under laws now or hereafter in effect.
IPSCIO Record ID: 294023
Licensor hereby grants Licensee a worldwide, exclusive, perpetual, irrevocable, royalty free, fully-paid up license, with the right to grant sublicenses through multiple tiers without restriction, to and under the Licensor Patent Rights that are Compound-Limited Claims. The license grant shall survive termination or expiration of this Agreement for any reason.
Compound means dihydroergotamine mesylate salt or isomorphs or isomers thereof.
Compound-Inclusive Claims means all claims of Licensor Patent Rights that are not Compound-Limited Claims.
Licensor Patent Rights means the rights granted by any governmental authority under any Patents and Patent Applications Controlled by Licensor that, assuming such Patent Applications were issued Patents, but for the grant of the license, would be infringed by the manufacture, use, import, export, offer for sale or sale of a Particulate Formation of Compound, including without limitation a Particulate Formation of Compound or Product by or on behalf of Licensee (other than by Licensor), including without limitation those Patents and Patent Applications listed. Licensor Patent Rights do not include Licensor Know-How. Licensor represents that it has used good faith efforts to include all Licensor Patent Rights existing as of the Effective Date. Once per calendar year or as reasonably requested by Licensee, the Parties will update the list as applicable.
US 6,063,138 – Method and apparatus for the formation of particles
Product means the combination of the Formulation, produced through processing of the Particulate Formation of Compound, and a Device, the manufacture, use, import, export, offer for sale or sale of which by or on behalf of Licensee would, but for the grant of the licenses in this agreement, infringe any Licensor Patent Rights or exploit any Licensor Know-How.
Patent means (i) letters patent and utility models including any extension, substitution, registration, confirmation, reissue, re-examination, renewal, or foreign corresponding rights thereof and (ii) to the extent rights are granted by a governmental authority thereunder, a Patent Application.
Compound-Limited Claims means all claims of those Licensor Patent Rights listed or that are not listed that claim Compound, formulations of Compound, compositions of matter, methods of manufacture or methods of using Compound or formulations of Compound, including without limitation the Particulate Formation of Compound and Formulation, whether or not such claims claim any compositions of matter, methods of manufacture of methods of using other compounds or formulations of such other compounds.
IPSCIO Record ID: 273263
Licensor Technology means (a) Licensors proprietary Aerosol Technology owned or controlled by Licensor in the Territory as of June 30, 2008 (including without limitation the technologies, devices, processes, equipment, materials and know-how relating to the aerosolization of liquid forms of drug products and the Aerosol Devices and Disposable Dose Packs therefor) and (b) all Intellectual Property owned by or licensed to Licensor in the Territory as of June 30, 2008 relating to such Aerosol Technology, including, without limitation, the Licensor Patents.
Licensor Patents means all Patents owned by Licensor in the Territory or to which Licensor otherwise has rights in the Territory, as of June 30, 2008, that claim or are directed to the Licensor Technology.
Licensor Technology Improvements means any rights in the Territory in and to any Inventions created or reduced to practice by or on behalf of either Party (or any Affiliates, subcontractors, sublicensees, agents, representatives, successors or assigns of such Party) in the performance of the Agreement or exercise of the license granted pursuant to this Agreement, or by or on behalf of Licensee under the PMPSA/Licensee Agreement or exercise of the license granted pursuant to the PMPSA/Licensee Agreement, in each case which Inventions relate primarily to the Licensor Technology.
Intellectual Property means all know how, Inventions, Patents, copyrights, trademarks, trade secrets and any other intellectual property rights in the Territory that may be secured in any place under laws now or hereafter in effect.
