Royalty Report: Drugs, Cancer, Therapeutic – Collection: 28678

License Grant

The Canadian University hereby grants the Canadian Licensee an exclusive, royalty-bearing license in the Territory to practice the Licensed Technology and to make, develop, use, import, offer to sell, sell, market and distribute and have made, developed, used, imported, offered to sell, sold, marketed and distributed Licensed Product(s), until the end of the term of the last registered patent, at which time the license shall become a perpetual, fully-paid up, royalty-free license, unless this Agreement is sooner terminated according to the terms defined in this Agreement.

License Property

Licensee shall have the right to enter into sublicensing agreements for the rights, privileges and licenses granted in this Agreement but only with the prior written consent of University.

The University is the owner of certain Patent Rights (as later defined in this Agreement) relating to a technology developed by John Samuel and Glen Kwon, identified as UA IP# 94108 and described in the US Patent application No. 08/737,896 A Method for Eliciting a Thl Specific Immune Response (filed September 24, 1997), which is a continuation-in-part of the US Patent application No. 08/480,499 (filed June 7, 1995).

Patent Rights means all of the following UA intellectual property
  (a)   the US Patent application No. 08/480,499 A Method for Eliciting a Thl Specific Immune Response (filed June 7, 1995);

  (b)   the US Patent application No. 08/737,896 A Method for Eliciting a Thl Specific Immune Response (filed September 24, 1997), a continuation-in-part of 1.6 (a) and later issued as US Patent No. 6,168,804 (issued January 2, 2001);

  (c)   the US Patent application No. 09/668,825 A Method for Eliciting a Thl Specific Immune Response, a divisional application of 1.6 (b) (filed September 22, 2000);

  (d)   any US divisional patent applications covering the invention disclosed in the patent application 1.6 (b) above and the resulting patents;
  (e)  any US continuation-in-part application, and the resulting patents, which are directed to the invention disclosed in the patent applications described in sections 1.6 (b), (c) and (d) above;
  (f)  any Canadian and foreign patent applications, and the resulting patents, which are based on the invention disclosed in the patent applications described in sections 1.6(e) above; and
  (g)  any reissues, extensions and divisions of Canadian and foreign patents.

Field of Use

Field of Use means any and all uses of microsphere formulations that infringe one or more claims contained in the Patent Rights for the treatment of infectious disease and cancer caused by chronic viral infection, including but not limited to hepatoma. (For greater certainty, the Field of Use does not include any use of the Patent Rights in liposomal cancer vaccines.)

License Grant

The Canadian University grants to the Canadian Licensee an exclusive license, together with the right to grant sublicenses, in the territory for the field of use to practice the Patent Rights and otherwise use the Licensed Technology and to make, develop, use, import, offer to sell, sell, market and distribute and have made, developed, used, imported, offered to sell, sold, marketed and distributed Licensed Products.

License Property

Licensor has certain compositions and methods to elicit Thl immune response for use in vaccines.

BLP25 is a cancer vaccine being developed by Licensee containing a synthetic 25 amino acid sequence of the MUC-1 cancer mucin encapsulated in a liposomal delivery system and designed to induce an immune response to cancer cells.

Field of Use

The Field of use means any and all uses of the licensed technology in liposomal cancer vaccines.

License Grant

University hereby grants to Licensee the exclusive right and license, with the right to sublicense, in the Territory to make, have made, use, sell, and import the Licensed Product in the Field and to practice under the Patent Rights in the Field until the expiration of the last to expire valid claim of the Patent Rights, unless this Agreement is terminated sooner as provided herein.  University reserves the royalty-free, nonexclusive right to practice under the Patent Rights and to use Licensed Product for Non-Commercial Education and Research Purposes.

License Property

Application #06/611,797 – Identification of an IL-13 receptor alpha2 peptide analogue capable of enhancing stimulation of glioma-specific CTL response.

Application #11/231,618 – Peptide Analogs capable of enhancing stimulation of a glioma-specific CTL response.

Patent Rights shall mean University intellectual property described below and assigned to University
(a) The United States and foreign patents and/or patent applications listed;
(b) United States and foreign patents issued from the applications listed and from divisionals, substitutions, continuations and continuation-in-parts of these applications;
(c) United States and foreign patents issued from any of the foregoing, including all reissues, registrations, renewals, reexaminations and extensions thereof; and
(d) Claims of U.S. and foreign continuation and divisional applications, and of the resulting patents, which are directed to subject matter specifically described in the U.S. and foreign applications listed.

Field of Use

Field shall mean brain cancer peptide(s) antigen vaccines including systemic use and use in a cell based Peptide antigen vaccine regimen ( excluding cDNA and/or gene therapy based antigen delivery and expression).

Licensee is a clinical-stage biopharmaceutical company focused on discovering, acquiring, developing and commercializing proprietary therapeutics that target both cancer stem cells, or CSCs, and tumor bulk.

License Grant

Canadian University grants to the Canadian Licensee a worldwide, exclusive license to use and sublicense the Technology, University Improvements and any Joint Improvements and to manufacture, have made, distribute, and sell the Products on the terms and conditions set out in this Agreement.

The license granted under this Agreement is granted only to the Licensee and not to any Affiliated Companies. The Licensee will not cross-license the Technology or any Improvements without the prior written consent of University, which consent will not be unreasonably withheld.

The Licensee will not grant sublicenses of the Technology, University Improvements or any Joint Improvements to Affiliated Companies or other third parties without the prior written consent of University which consent will not be unreasonably withheld.

License Property

The technology relates to Hsp27 antisense and its use in the treatment of cancer.

Technology  means the Patents and all knowledge, know-how and/or technique or techniques invented, developed and/or acquired, before the Effective Date by University or the Licensee relating to, and including, the technology and materials described, as amended from time to time, including, without limitation all related research, data, specifications, instructions, manuals, papers or other related materials of any nature at all, whether written or otherwise, and University’s Confidential Information.
U.S. Provisional filed
April 18, 2003, Serial No.
60/463,952 Hsp27 Antisense to Treat Prostate and other Solid Tumours.

Patents mean collectively the rights in and to any and all inventions which are disclosed in the U.S., Canadian and foreign patents and patent applications identified and all
(i)            counterparts, continuations, divisionals, continuations-in-part, continuing prosecution applications, and requests for continued examinations, extensions, term restorations, renewals, reissues, re-examinations, or substitutions thereof;
(ii)           corresponding international patent applications;
(iii)          corresponding foreign patent applications, including supplementary protection certificates and other administrative protections; and
(iv)          international and foreign counterpart patents resulting therefrom, all of which will be deemed added, from time to time.
U.S. Provisional filed October 2, 2002, Serial
No. 60/415,859 Hsp27 Antisense to Treat Prostate and other Solid Tumours.

Product(s) means goods or services manufactured or provided in connection with the use of all or some of the Technology and/or any Improvements.

Field of Use

Field of use is for the treatment of cancer relating to Hsp27 antisense technology.