Royalty Report: Diagnostic, Drugs, Biotechnology – Collection: 28713

License Grant

Assignee desires to acquire said patents for use within the Field of Use, both domestically and internationally.The Assignee is a stockholder of the Assignor/ Licensor.

The Company entered into a definitive Agreement pursuant to which the Licensor agreed to assign its ownership of 11 patents to the Company which protect the Licensor's infectious disease diagnostic test kit technology. The Licensor also granted the Company a License to utilize 18 additional patents related to the diagnostic test kits.

License Property

#5,989,902 Method for determining the antimicrobial agent sensitivity of a nonparaffinophilic hydrophobic microorganism and an associated apparatus
#5,981,210 Method for determining a presence or absence of a nonparaffinophilic hydrophobic microorganism in a body specimen by using a DNA extraction procedure and a novel DNA extraction procedure
#5,935,806 Method and apparatus for speciating and identifying MAI (Mycobacterium Avium Intracellulare) and testing the same for antibiotic sensitivity
#5,882,920 Apparatus for determining the presence or absence of a paraffinophilic microorganism
#5,854,014 Apparatus for testing paraffinophilic microorganisms for antimicrobial sensitivity
#5,846,760 Method for determining a presence or absence of a nonparaffinophilic hydrophobic microorganism in a body specimen and an associated kit
#5,776,722 Method of testing a body specimen taken from a patient for the presence or absence of a microorganism a further associated method and associated apparatus
#5,569,592 Apparatus for testing MAI (Mycobacterium Avium Intracellulare) for antimicrobial agent sensitivity
#5,472,877 Apparatus for determining the presence or absence of MAI (Mycobacterium Avium Intracellulare)
#5,316,918 Method and apparatus for testing MAI (Mycobacterium Avium Intracellulare) for antimicrobial agent sensitivity
#5,153,119 Method for speciating and identifying MAI (Mycobacterium Avium Intracellulare)

Field of Use

Assignee’s Field of Use or Field of Use with regard to Assignee’s use of the Assigned Patents and use of the technology and intellectual property associated with the Assigned Patents shall mean only the uses within the areas of health described herein; specifically, the detection and identification of human and veterinary identification of Atypical Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare (MAI), Mycobacteria, Paratuberculosis, Nocardia and Pseudomonas for disease identification, and antibiotic assaying (but such assaying does not include antibiotic assaying when those antibiotics or compounds are derived from by-products obtained through growing microorganisms using Assignor's IP) for determining the antimicrobial agent sensitivity of microorganisms to ascertain which antibiotics are efficacious against microorganisms in the field of health which may lead to drug discoveries; and excludes any other uses, including any use reserved for the Assignor as specified in the Realm of Use or Assignor’s Use, and excludes kits for any other uses, which uses or kits are reserved to Assignor, including but not limited to uses, kits, or bioreactors pertaining to bioremediation, apoptosis, nanotechnology, biomems, microfluidic devices, the production of hydrogen and the identification and growing of over 32 different paraffin-eating and non-paraffin eating microorganisms to collect any microbial by-products of any kind, including antibiotics (all of which fall under the Realm of Use of the Assignor). Further, the Assignee’s Field of Use does not include any industrial use of the Assigned Patents. Whereas the Assignee’s Field of Use and the Assignor’s Use both provide for certain uses within the area of health, the Assignee, with regard to Assignee’s use of the Assigned Patents and use of the technology and intellectual property associated with the Assigned Patents is limited to only the uses within the areas of health that are specified in the Assignee’s Field of Use.

Realm of Use or Assignor’s Use with regard to the Assignor’s use of the Assigned Patents means the Assigned Patents and use of the technology and intellectual property associated with the Assigned Patents for all uses, including but not limited to (a) hydrogen production applications (b) augmenting growth of microorganisms to collect any microbial by-products, including but not limited to hydrogen, antibiotics, or any chemical synthesis (c) bioremediation (d) apoptosis (e) nanotechnology, (f) biomems for all uses, including but not limited to medical uses, (g) microfluidic devices for all uses, including but not limited to medical uses, and (h) identification and detection of over 32 different paraffin-eating and non-paraffin-eating microorganisms, other than for the identification of Atypical Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare (MAI), Mycobacteria, Paratuberculosis, Nocardia and Pseudomonas for disease diagnosis (unless associated with biomems, microfluidic devices, or nanotechnology), (i) testing for antimicrobial agent sensitivity of microorganisms including but not limited to using such technology for controlling growth of undesirable microorganisms in a bioreactor and using such technology to test the efficacy of antibiotic compounds or other compounds which may be collected as by-products from using the Assigned Patents to identify and grow microorganisms, (j) any industrial use whatsoever; but excludes using the Assigned Patents and associated technology and intellectual property for (1) the detection and identification of human and veterinary identification of Atypical Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare (MAI), Mycobacteria, Paratuberculosis, Nocardia and Pseudomonas for disease identification test kits (unless associated with biomems, microfluidic devices, or nanotechnology) and (2) selling test kits or providing diagnostic services in the field of health for determining the antimicrobial agent sensitivity of microorganisms to ascertain which antibiotics are efficacious against microorganisms in the field of health (unless associated with biomems, microfluidic devices, or nanotechnology). Whereas the Field of Use and the Realm of Use both provide for certain uses within the area of health, the Assignee, with regard to the Assigned Patents and all technology and intellectual property associated with the Assigned Patents is limited to only the uses within the areas of health that are specified in the Field of Use.

License Grant

Licensor hereby grants to Licensee, a related party, an Exclusive License for the use of the Licensed Patents listed limited to use within the Field of Use, with domestic and worldwide royalty-bearing license rights, limited to the United States and those countries for which Licensor has obtained patent protection, which is further limited to unexpired letters patent which have not been held invalid or unenforceable by a court of competent jurisdiction from which no appeal can be taken or has been taken within the required time period, and such rights further limited to the Field of Use, and to the following
(a) to make, have made, use, sell, import and sublicense the Licensed Technology solely within the Field of Use for the purposes of manufacturing, assembling, distributing, leasing, renting, performing research, and selling the Licensed Products solely within the Field of Use.
(b) sublicensing or subcontracting the manufacture, assembly, distribution and sale of the Licensed Products solely to be used within the Field of Use.

License Property

Licensed Technology means the Licensed Patents and Licensed Products and technology limited to the Field of Use described herein, or improvements developed by Licensee in connection with, related to, arising from, used in the making of and/or embodied in the Products and Patents listed in this Agreement, and such Licensed Technology, which covers human medical and veterinary products designed to identify 32 different paraffin eating microorganisms or which cover human medical and veterinary products designed for determining antimicrobial agent sensitivity, and are to be solely used by the Licensee for the detection and identification of human and veterinary identification of Atypical Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare (MAI), Mycobacteria, Paratuberculosis, Nocardia and Pseudomonas for disease identification and for antimicrobial agent sensitivity assaying which may result in drug discovery applications.

Licensed Products
Medical diagnostic kits, including all components, for the detection and identification of over 32 different paraffin-eating and non-paraffin-eating microorganisms to be Licensed by the Licensee limited only for use in the Field of Use, defined in the Agreement herein, for the human and veterinary identification of Atypical Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare (MAI), Mycobacteria Paratuberculosis, Nocardia and Pseudomonas for disease identification and antimicrobial agent sensitivity assaying in the health field which may result in drug discovery applications, and excludes any other products, uses and any other kits, health or otherwise, as these uses or kits are specifically reserved to Licensor.
Buffer Products, including certain of Licensor’s products utilizing Licensor’s trade secrets, named the AFZ Buffer, for use in the rapid lysis of bacterial cell cultures, and the Adaptor Buffer which enables the user of this product to easily adapt their existing Plasmid DNA Isolating Column Systems into Genomic DNA Isolating Column Systems.

5,962,306 Method of determining the presence or absence of a nonparaffinophilic microorganism in a specimen and an associated apparatus

5,891,662 Method for determining the antimicrobial agent sensitivity of a nonparaffinophilic hydrophobic microorganism

5,882,919 Apparatus for determining the presence or absence of a nonparaffinophilic microorganism in a specimen

5,854,013 Method of determining presence or absence of a nonparaffinophilic microorganism in a specimen

5,804,406 Determining sensitivity of paraffinophilic microorganisms to antimicrobials

5,801,009 Method for determining the antimicrobial sensitivity of a paraffinophilic microorganism using various milieus and an associated apparatus

5,750,363 Method for determining the antibiotic agent sensitivity of a nonparaffinophilic microorganism and an associated apparatus

5,726,030 Method for automatically testing the antibiotic sensitivity of a nonparaffinophilic microorganism

5,721,112 Method of determining the presence or absence of a nonparaffinophilic microorganism in a specimen and an associated apparatus

5,707,824 Method of determining the presence or absence of a paraffinophilic microorganism
5,698,414 Method and apparatus for testing paraffinophilic microorganisms for antimicrobial agent sensitivity

5,677,169 Method for determining the antimicrobial agent sensitivity of a nonparaffinophilic microorganism and an associated apparatus

5,668,010 Method for determining the antimicrobial agent sensitivity of a nonparaffinophilic microorganism using various milieus and an associated apparatus

5,663,056 Method for determining the antimicrobial agent sensitivity of a nonparaffinophilic microorganism and an associated apparatus

5,654,194 Method of identifying a nonparaffinophilic microrganism using various milieus and an associated apparatus

5,641,645 Method for determining the antimicrobial agent sensitivity of a nonparaffinophilic microrganism using various milieus and an associated apparatus

5,639,675 Method of identifying a nonparaffinophilic microorganism using various milieus and an associated apparatus

5,637,501 Apparatus for automatically testing the antibiotic sensitivity of a paraffinophilic microorganism

Field of Use

Field of Use with regard to the Licensed Technology, Licensed Patent(s) and Licensed Product(s) means the detection and identification of human and veterinary identification of Atypical Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare (MAI), Mycobacteria, Paratuberculosis, Nocardia and Pseudomonas for disease identification, and antibiotic assaying for determining the antimicrobial agent sensitivity of microorganisms to ascertain which antibiotics are efficacious against microorganisms in the field of health which may lead to drug discoveries; and excludes any other uses, including any use reserved for the Licensor as specified in the Realm of Use, and excludes kits for any other uses, which uses or kits are reserved to Licensor, including but not limited to uses, kits, or bioreactors pertaining to bioremediation, apoptosis, nanotechnology, biomems, microfluidic devices, the production of hydrogen and the identification and growing of over 32 different paraffin-eating and non-paraffin eating microorganisms to collect any microbial by-products of any kind, including antibiotics. Further, the Field of Use does not include any industrial use of the Licensed Technology, Licensed Patent(s) and Licensed Product(s). Whereas the Field of Use and the Realm of Use both provide for certain uses within the area of health, the Licensee, with regard to the Licensed Technology, Licensed Patent(s) and Licensed Product(s) is limited to only the uses within the areas of health that are specified in the Field of Use.

License Grant

The Company hereby grants the exclusive right and license, worldwide, to manufacture, use and sell paraffin coated slides for use in practicing the invention disclosed and claimed in the patents (hereinafter referred to as the Licensed Products).

License Property

Whereas, a letter of patent of the United States No. 5,153,119 for a specialized method of speciating and identifying Mycoacterium avium- inracellulare (MAI) via paraffin slides PAEA/SI.C(tin).

The Company has entered into an exclusive, worldwide license and royalty agreement for the manufacture and distribution of the PARASLC/TM.  

The PARA SL/CTM is the paraffin-coated slide used solely as a central component of the IDENTIKITTM.  The Company’s research regarding paraffin as a sole carbon source led to the concept that paraffin-coated glass slides may be used to grow, identify and perform antibiotic sensitivity assays on paraffinophilic bacteria.  Paraffinophilic bacteria are bacteria that use paraffin as their sole food source.  

The Company then developed a technology that employs a paraffin carbon source that enables viable or living paraffinophilic organisms to be separated from viable non-paraffinophilic bacteria and from non-viable or dead bacteria.  In this method only viable paraffinophilic bacteria are growing on the paraffin coated glass slides.  These living or viable bacteria found on the surface of the paraffin coated slides may be stained and examined microscopically to determine the presence of suspect pathogens, or disease carrying organisms.

Field of Use

The rights granted apply to organisms.

License Grant

Licensor grants a non-exclusive, non-transferable license under Patent Rights to practice Licensed Methods in the Field within Licensors laboratories and to make, have made, use, and export Licensed Products solely for use byLicensee, in the practice of Licensed Methods in the Field. License grant shall not include the right to sell Licensed Product and/or Licensed Method to third parties.

License Property

Licensor owns certain patents covering compositions and processes for detecting ribosomal nucleic acid subsequences belonging to groups of non-viral organisms.

The patents refer to Methods for Detection. Identification and Quantification of NonViral Organisms.

Field of Use

The Field shall mean the performance of human, clinical diagnostic Assays and Assay Series using one or more nucleic acid probes, including peptide nucleic acid probes and probes with modified sugar or phosphate groups, which are designed to detect whether or not bacteria are present in a sample by hybridizing to one or more pan-bacterial regions of ribosomal nucleic acid, whether ribosomal RNA or ribosomal DNA, in order to determine the presence or amount of bacteria which may be present in a human sample. 'Field' shall not include Assays and Assay Series only to detect, quantitate or identify any group of organisms less than or different than that encompassing all bacteria.

License Grant

Prior to the Effective Date of this Agreement, the Parties have been involved in collaborative efforts to jointly develop assays for the ANAIS Instrumentation.

By this agreement, the Parties shall cooperate in the Development Transition and in the transfer of any information and Know-How necessary for Licensee to assume the development of the ANAIS Products.

Licensor grants a non-exclusive, non-transferable, worldwide license in the ANAIS Field to use the Licensor Technology to develop, make and have made, use, sell, offer for sale, have sold, and import the ANAIS Products, solely and exclusively for use on the ANAIS Instrumentation.

License Property

The ANAIS Instrument shall be an automated laboratory instrument for performing nucleic acid assays utilizing High Density DNA Probe Arrays.
Key BioChemistry Components include
– All enzymes used in transcription-based amplification for use in ANAIS Assays.
– All biochemical components used for amplification of amplicon of target with TMA, which is Licensors patents and technology relating to Nucleic Acid Sequence Amplification Methods.
– All probes, primers, and oligonucleotides used in ANAIS Assays.
– Nucleic acids used for ,positive and negative controls, standards, calibrators, and for quality control of ANAIS Assay components.

ANAIS products shall mean the following Probe Assays, in each case made, used, or sold under the license granted by Licensor and solely and exclusively for use on ANAIS Instrumentation
– Probe Assays for the detection, identification, quantification, and/or susceptibility testing for panels of microorganisms or agents (but specifically excluding single organisms) in specimens taken from humans, solely for the purpose of diagnosis and medical care of the persons from whom the tested samples were taken. A panel shall test for 10 or more distinct species of organisms or agents in the following groups of microorganisms
or agents  Bacteria; Viruses; Yeast/Fungi; or, Parasites.The panels shall be medically relevant.

– Probe Assays for the detection, identification, quantification, and/or susceptibility testing for an individual organism, drawn only from the groups or families listed below, in specimens taken from humans, solely for the purpose of diagnosis and medical care of the persons from whom the tested samples were taken Hepatitis virus; HIV virus; Herpes virus; Human papilloma virus; HTLV Virus; Yeast; Fungus; Parasite; and, Bacterium other than Neisseria gonorrhoeae or Chlamydia trachomatis.

– Probe Assays for testing of sequences encoding human leukocyte antigens in specimens taken from humans and/or

– Probe Assays to detect and /or precisely identify microorganisms or agents including bacteria, yeast, viruses and parasites for use in quality control processes of water, food products, and/or previously developed pharmaceutical or cosmetic products, and/or identify foods coming or derived from plants and/or/ animals for the purpose of confirming anticipated source(s) of the food.

Assay shall mean a diagnostic process or procedure applied to a sample, or a portion of a sample, whereby a particular chemical compound, or a collection of compounds, or a portion of a chemical compound, is detected and optionally quantified.

Field of Use

The ANAIS Field shall mean
– the detection, identification, quantification, and/or susceptibility testing of organisms or agents causing human clinical infectious diseases, as present in the human body, solely for the purpose of diagnosis and medical care of the persons from whom the tested samples were taken;
– testing for sequences encoding human leukocyte antigens;
– testing for microorganisms or agents, including bacteria, yeast, viruses and parasites in quality control processes of water, food products, and/or previously developed pharmaceutical or cosmetic products; and/or
– testing for the purposes of identifying genetically-modified foodstuffs or identifying animal species in foodstuffs.

The ANAIS Field specifically does not include testing for infectious agents in blood and blood products intended for transfusion, or the testing for infectious agents in blood in connection with organ transplants, or the testing of specimens from non-human animals or environmental sources except as specifically provided above, even if such testing is for the purpose of detecting or identifying organisms which are associated with infectious diseases in man.

License Grant

Entered into by and between the Denmark Assignor and the Assignee to acquire ownership of the Assigned Patents; and Assignor desires to obtain a certain license from Assignee to the Assigned Patents. As an inducement to Denmark Assignor to execute this Patent Assignment Agreement, Assignee hereby grants to Assignor a royalty-bearing, worldwide, exclusive (even as to Assignee) license (with the right to sublicense) to use the inventions, ideas and information embodied in the Assigned Patents to develop, make, use and sell products intended solely for use as reagents or products and methods intended solely for use in testing for and diagnosing conditions in humans, animals or organisms, as well as products and methods intended for predicting or testing the effect of treatment of Conditions in humans or animals.

License Property

The assigned Patents include Hydroxymethyl substituted RNA oligonucleotides and RNA complexes.

Field of Use

For use in testing for and diagnosing conditions in humans, animals or organisms.

License Grant

The Licensor, an individual, and the Licensee desire to hereby amend and restate the Original Agreement in its entirety to clarify certain rights and obligations of the parties from and after March 1, 1997.

License Property

Licensor owns U.S. Patent No. 5,516,638 Immunoassays for the Detection of Antibodies to Chlamydia Trachomatis in the Urine.  Issued May 14, 1996.

Field of Use

The Field means any urine-based medical diagnostic test.

License Grant

Assignor, an individual, desires to sell, assign, transfer and convey to Assignee, its successors and assigns, Assignor's entire right, title and interest throughout the world in and to the Patent Application and patents issuing thereon to the full end of the term or terms of any said patents.

License Property

Assignor has made certain inventions relating to chimeric peptides.

Product shall mean all products, drugs, diagnostic reagents, diagnostic methods, therapeutic agents and therapeutic methods covered in whole or in part by a Valid Claim contained in any Patent.

Field of Use

Inventions and patent applications relate to the use of chimeric peptides for the treatment of Alzheimer’s disease.