Description
Created On: 2020-07-15
Record Count: 20
Primary Industries
- Drugs
- Drug Discovery
- ribonucleic acid
- Disease
- Therapeutic
- Proteins
- Diagnostic
- Genome
- Respiratory
- Delivery
- nucleic acid
- Software
- Medical Info
- Cancer
- cardiac
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: 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: 289256
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.
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 today which was awarded the 2006 Nobel Prize for Physiology or Medicine. RNAi is a natural process of gene silencing that occurs in organisms ranging from plants to mammals.
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.
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.
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: 289173
The Parties shall direct their respective counsel to execute Stipulations of Dismissal with Prejudice dismissing all claims and counterclaims that were or could have been asserted in the Massachusetts State Court Action, U.S. Infringement Action, Canadian Infringement Action, and B.C. Action, and in the case of the Interference Proceeding, a Request for Adverse Judgment providing that Licensee concedes priority to Party A with respect to all claims that correspond to Counts 1-5, i.e., claims 34, 36, 38, and 40-43 of Party A U.S. Application 11/807,872; claims 1-6, 8, 10, 12-18, 21-22, and 32-33 of Licensee U.S. Patent 7,718,629; and claims 32-38 of Licensee U.S. Application 13/165,568, and requesting that an adverse judgment be entered against Licensee as to these claims and priority be awarded to Party A for U.S. Application 11/807,872.
Patent certains to intellectual property (IP) elements related to lipid nanoparticle (LNP) technology for RNAi therapeutics.
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.
IPSCIO Record ID: 294286
Patents include short double-stranded RNAs as therapeutics.
Licensees target is RTP 801, or, DNA•damage-inducible transcript 4.
Emphysema is a long-term, progressive disease of the lungs that primarily causes shortness of breath due to over-inflation of the alveoli (air sacs in the lung). In people with emphysema, the lung tissue involved in exchange of gases (oxygen and carbon dioxide) is impaired or destroyed.
IPSCIO Record ID: 294288
Licensor has intellectual property covering technology useful for the discovery, development, manufacture, characterization, or use of therapeutic products that function through RNA interference (RNAi).
Patents include short double-stranded RNAs as therapeutics.
Hypoxic injury implies damage to cells resulting only from decreased oxygen tension. This is a relatively unusual pattern of injury in its pure form. Hypoxia can result from decreased atmospheric oxygen concentration, abnormal lung function, and decreased oxygen-carrying capacity in the blood (e.g., severe anemia).
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: 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: 223124
RNA interference, or RNAi, is a naturally occurring mechanism within cells for selectively silencing specific genes, an ability that could become the basis for a whole new class of therapeutic products. The discovery of RNAi has been heralded by many as a major breakthrough, and the journal Science named RNAi the top scientific achievement of 2002 as well as one of the top ten scientific advances of 2003. Because many diseases are caused by the inappropriate activity of specific genes, the ability to silence such genes selectively through RNAi could provide a means to treat a wide range of human diseases.
Licensed Patents means the U.S. Patent Applications listed below and any divisions, continuations, reissues, reexamines, extensions and continuations-in-part applications thereof and any patents issuing thereto; and any and all foreign patents, foreign applications, extensions and supplemental protection certificates or patent applications corresponding thereto having the Principal Investigator as an inventor and claiming the same priority date as a parent application.
Licensor Patents
Serial No. Type Tite Date Filed Status
PCT/US01/08435 PCT Methods and Compositions for RNA Interference 3/16/01 Published
09/858,862 CIP Methods and Compositions for RNA Interference 5/16/01 Pending
09/866,551 CIP Methods and Compositions for RNA Interference 5/24/01 Pending
10/055,797 CIP Methods and Compositions for RNA Interference 1/22/02 Pending
Licensed Product means any product, including but not limited to any lyophilized liquid, sustained release or aerosolized formulation or other formulation, or process for which Licensee, or its Affiliate has received FDA Approval and/or Regulatory Approval, which is made through the use of Licensor Know-How or falls within the scope of a Valid Claim of a Licensed Patent.
IPSCIO Record ID: 248305
Licensed Intellectual Property shall mean US Patent Numbers 8,097,710, 8,258,285, 8,263,569, 8,299,235 and 8,349,607 and US Patent Application Serial Numbers l I/OJ 3,53 l and 12/508,476 and any patents issuing thereupon, including any continuations, divisionals, continuations-in-part, substitutions, reissues, re-examinations, renewals, continued prosecution applications, foreign counterparts and/or extensions of any of the foregoing.
8,097,710 – Gene silencing
8,258,285 – RNA molecules and vectors for gene silencing
8,263,569 – Gene silencing
8,299,235 – RNA molecules and vectors for gene silencing
8,349,607 – Gene silencing
SRM shall mean a short RNA molecule or molecules nominated by Licensee hereof. Such SRM will be designed to target and modify the expression of a human gene or genes, where such human gene or genes may be any genes selected from across the human genome and may contain a single short RNA molecule or the combination of rwo such short RNA molecules. Such SRM may comprise an SRM series to provide for lead drug candidate and back-up drug candidate (including different formulations, siRNA sequences or siRNA modifications) addressing the same human gene target. Without limitation to the foregoing and for purposes of clarity, an SRM may comprise short RNA molecules designed to target a combination of two (but no more than two) separate gene targets in the human genome.
IPSCIO Record ID: 280643
For the RHOA Target, pursuant to the terms of the Original Agreement, Licensor selected the RHOA Target for the development of RNAi Products directed toward such Target (RHOA Products) and Licensee has an opt-in right for further development and commercialization of RHOA Products.
For the royalty bearing products, the Opt-Out Party/Licensor grants the Continuing Party a license under and to Licensor Technology, that is applicable to such Royalty-Bearing Product, to Develop, Manufacture and Commercialize such Royalty-Bearing Product in the Field in the Territory.
For the Profit-Sharing Products:
For Development Licenses, Licensor grants a worldwide license in the Territory, with a right to sublicense to its Affiliates, under Licensor Target Identification and Target Validation RNAi Patent Rights, under Licensors interest in Joint Collaboration Patent Rights and Joint Collaboration Inventions, under Licensor Technology Collaboration Inventions, to Licensor RNAi Technology and under Licensor-Assigned Therapeutic Collaboration Inventions, for the sole purpose of in vitro and/or in vivo target identification and/or target validation research relating to drug discovery and/or development activities of Licensee and/or its Affiliates, including in collaborations with Third Parties in which Licensee and/or its Affiliates has any rights to discoveries made.
For Commercialization Licenses, Licensor grants a license under and to any and all Licensor Technology to Commercialize Profit-Sharing Products in the Field in the Territory.
The foregoing license shall be Exclusive, Co-exclusive or Non-exclusive, depending upon the time period.
Combination Product means a RHOA Product or an RNAi Therapeutic Product combined with any other clinically active ingredient.
RNA interference, or RNAi, is a naturally occurring mechanism within cells for selectively silencing and regulating specific genes. Since many diseases are caused by the inappropriate activity of specific genes, the ability to silence genes selectively through RNAi could provide a new way to treat a wide range of human diseases. RNAi is induced by small, double-stranded RNA molecules. One method to activate RNAi is with chemically synthesized small interfering RNAs, or siRNAs, which are double-stranded RNAs that are targeted to a specific disease-associated gene. The siRNA molecules are used by the natural RNAi machinery in cells to cause highly targeted gene silencing.
Vascular endothelial growth factor (VEGF), originally known as vascular permeability factor (VPF),[1] is a signal protein produced by cells that stimulates the formation of blood vessels. To be specific, VEGF is a sub-family of growth factors, the platelet-derived growth factor family of cystine-knot growth factors.
IPSCIO Record ID: 300745
For the Manufacturing License, Licensor grants a non-exclusive license under Licensor Technology solely for the purpose of Manufacturing the Licensed Product for the Licensee Territory and Licensee grants Licensor a non-exclusive license under Licensee Technology to Manufacture the Licensed Product.
Antisense Product means a single-stranded oligonucleotide or analog thereof having a specific sequence that inhibits protein synthesis at the nucleic acid level by specifically binding to the sequence of a messenger or viral ribonucleic acid (RNA) by base-pairing, thus causing selective inhibition of gene expression.
The patents include, but are not limited to; RNA interference is mitigated by 21 and 22nt small RNAs; RNA interference mediating small RNA molecules; RNA sequence-specific mediators of RNA interference; and, Inhaled treatment for RSV.
RSV is a highly contagious virus that causes infections in both the upper and lower respiratory tract.
IPSCIO Record ID: 279378
For the royalty bearing products, the Opt-Out Party/Licensor grants the Continuing Party a license under and to Licensor Technology, that is applicable to such Royalty-Bearing Product, to Develop, Manufacture and Commercialize such Royalty-Bearing Product in the Field in the Territory.
For the profit sharing products:
For the Development Licenses, to Develop Profit-Sharing Products in such Program in the Field in the Territory; and Licensor grants a worldwide, Co-exclusive license, sublicenseable to its Affiliates, under and to any and all Licensor RNAi Technology, Licensor RNAi Patent Rights, Licensor Collaboration Inventions, Licensor Therapeutic Collaboration IP, Licensors interest in Joint Collaboration IP and Licensor RNAi Novel Target IP which are Controlled by Licensor or the Third Party Licensor or their wholly-owned subsidiaries to Develop Profit-Sharing Products in such Program in the Field in the Territory.
For the Commercialization Licenses, upon Licensees exercise of its U.S. Co-Promotion Option, Licensor grants Licensee a Co-exclusive license under and to any and all Licensor Technology to Commercialize Profit-Sharing Products in the Field in the United States.
For the Manufacturing Licenses, Licensor grants Licensee a non-exclusive license under and to any and all Licensor Technology to Manufacture Profit-Sharing Products in the Field for the Territory.
For the Product Trademark Licenses, Licensor shall grant a Co-exclusive license to use such Product Trademarks to perform its Development obligations under this Agreement with respect to such Profit-Sharing Product.
Licensor grants a Co-exclusive license to use the Product Trademarks selected by Licensor and approved by the JSC for such Profit-Sharing Product to Commercialize such Profit-Sharing Product in the Field in the United States.
Licensor grants a non-exclusive license in the Territory, under Licensor Broad RNAi Patent Rights that were Controlled by Licensor or the Third Party Licensor or their wholly-owned subsidiaries during the Technology Collaboration Term, Licensor Broad RNAi Technology that was Controlled by Licensor or the Third Party or their wholly-owned subsidiaries during the Technology Collaboration Term, Licensors interest in Joint Collaboration Patent Rights, and Licensor-Assigned Therapeutic Collaboration Inventions.
Combination Product means a RHOA Product or an RNAi Therapeutic Product combined with any other clinically active ingredient.
RNA interference, or RNAi, is a naturally occurring mechanism within cells for selectively silencing and regulating specific genes. Since many diseases are caused by the inappropriate activity of specific genes, the ability to silence genes selectively through RNAi could provide a new way to treat a wide range of human diseases. RNAi is induced by small, double-stranded RNA molecules. One method to activate RNAi is with chemically synthesized small interfering RNAs, or siRNAs, which are double-stranded RNAs that are targeted to a specific disease-associated gene. The siRNA molecules are used by the natural RNAi machinery in cells to cause highly targeted gene silencing.
IPSCIO Record ID: 203544
Product, under the Patents to develop, make, import, use, offer for sale or sell Licensed Product.
“Dicer Substrate Technology represents a second generation of gene silencing that can generate drug candidates with greater potency and longer duration of action than earlier RNAi approaches, because of the distinct way in which it engages this important biological pathway.
The Third Party controls certain patents and patent applications owned by Licensor relating to siRNA constructs, including the dicer substrate. The Licensor patents address nanoparticles for delivery of nucleic acids and stable double-stranded RNA.
U.S. 60/497,740 – NANOPARTICLES FOR DELIVERY OF NUCLEJC ACIDS AND
STABLE DOUBLE-STRANDED RNA
U.S. 11/219,625 – DOUBLE-STRANDED RIBONUCLEIC ACID MOLECULES HAVING RJBOTHYMIDINE
PCT/US2006/020627 – MODIFICATION OF DOUBLE-STRANDED RJBONUCLEIC ACID MOLECULES
U.S. 60/720,072 – CHEMICALLY MODIFIED DOUBLE-STRANDED RJ BONUCLEIC
AICDS AND PEPTlDES
IPSCIO Record ID: 289199
Licensor grants to Licensee an exclusive license under the Exclusively Licensed Patent Rights and the Improvement Patent Rights owned or controlled by Licensor to make, have made, import, use, sell, and offer for sale Licensed Products in the Field throughout the world, and, a nonexclusive license under the Technology to make, have made, import, use, sell, offer for sale, reproduce, distribute, display, perform, create derivative works of, and otherwise exploit Licensed Products in the Field throughout the world.
Licensed Product means any product, device, system, article of manufacture, composition of matter, or process or service that is covered by, or is made by a process covered by, any Valid Claim or that utilizes Technology in material part.
The patents are:
Methods and composition for therapeutic use of RNA interference; Carbohydrate-modified polymers, compositions and uses related thereto; Nuclear localization sequences and uses related thereto; Cyclodextrin-based polymers for therapeutic delivery; Compositions and uses of motor protein-binding moieties; Compositions and used of Dynein-binding moieties; Linear Cyclodextrin polymers; and, Method of preparing a supramolecular complex containing a therapeutic agent and
a multi-dimensional polymer network.
IPSCIO Record ID: 245938
JCV means the human polyomavirus known as JC virus.
PML means progressive multifocal leukoencephalopathy.
Discovery or Discover means any and all activities to discover and characterize potential Development Candidates during the Discovery Term prior to the initiation of IND-Enabling Toxicology Studies, including without limitation, the research and development activities related to the generation, characterization, optimization, construction, synthesis, use and production of potential Development Candidates.
Development or Develop means any preclinical and clinical activity to develop a Selected RNAi Therapeutic, beginning with IND-Enabling GLP Toxicology Studies and ending upon Regulatory Approval and completion of any post-approval regulatory commitments.
Progressive multifocal leukoencephalopathy (PML) is a disease of the white matter of the brain, caused by a virus infection that targets cells that make myelin–the material that insulates nerve cells (neurons).
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: 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: 289753
Licensed IP shall mean all Patents (and applications) listed and Licensor Retinoid Know-How and Sublicensed lP.
5,906,920 – Methods for the detection of ligands for retinoid X receptors
5,707,800 – Retinoic acid response elements and assays employing same
5,602,009 – Dominant negative chimeras of the steroid/thyroid superfamily of receptors
Transferred Compound shall mean any chemical entity that is (i) included in the Licesor Retinoid Library, (ii) of the same class as any of the foregoing, which in each case has been discovered, developed, synthesized or subject to Licensed TP patent rights filed as of the Effective Date or is a derivative or improvement thereof (but not including any such derivative or improvement that is separately patentable and is outside the scope of generic claims of Licensed TP patents filed as of the Effective Date) or (iii) covered by a Valid Claim. Notwithstanding the foregoing, Transferred Compound shall exclude Tazarotene, the corresponding acid (Tazarotenic acid), and esters and salts of Tazarotenic acid.
Licensor Retinoid Know-How shall mean all technical knowledge, engineering knowledge, unpatentable inventions, trade secrets, manufacturing secrets, secret processes, formulae, manufacturing procedures, methods, data and current and accumulated experience of the Work Force as the result of their scientific research, practical experience and otherwise in the development of the Licensor Retinoid Library and Licensor Retinoid Assays within the Licensee Field that are owned or controlled by Licensor as of the Effective Date relating to the Discovery, Development, composition of matter, formulation, use or manufacture of Transferred Compounds for application in the Licensee Field and retained within the minds of the Work Force.
Licensor Retinoid Library shall mean those items specifically listed. Notwithstanding the foregoing, Licensor and Licensee acknowledge that the Licensor Retinoid Library set forth only constitutes a partial list of constituent compounds as of the Effective Date and that a complete list of such compounds shall be reasonably agreed upon by Licensor and Licensee no later than thirty (30) days following the Effective Date. Upon the final determination of such compounds, the list shall be automatically updated to reflect the inclusion of any additional compounds, which will be deemed to have been included as of the Effective Date.
Licensor Retinoid Assays shall mean (i) Nuclear Hormone Receptor/Kinase Interaction Assay (an assay for identifying compounds that modulate the activity of nuclear hormone receptors and their interacting kinases, as generally described in U.S. Patent Application Number 20030077664); (ii) Bcatenin Assay (an assay for identification of anti-cancer retinoid compounds, as generally described in PCT International Patent Application Number WO 2004000231 ); and (iii) Co-transfection Assay (an assay for identifying compounds that activate retinoic acid receptors and retinoid X receptors, as generally described in U.S. Patent Number 5,071,773).
5,071,773 – Hormone receptor-related bioassays
Advanced Compound shall mean any of the compounds referred to by the following designations: AGN 200354; AGN 194204; AGN 195203; AGN 201227; and AGN 201797.
Licensee Field shall mean any and all applications and uses of Transferred Compounds outside of the Licensor Field, including without limitation all dermatological, neurological and neurodegenerative applications.
Licensor Field shall mean any use of Transferred Compounds for ophthalmological applications. To the extent provided herein, Licensors rights hereunder may add to the Licesor Field under certain circumstances, and specifically may include, subject to Section 3.4(A), the right to use Transferred Compounds for Neurological Applications and may include, subject to Section 3.4(B), the right to use Transferred Compounds for dermatological applications.
IPSCIO Record ID: 227245
Licensor Technology shall mean (a) prior to the Effective Date, all proprietary inventions, improvements, discoveries, claims, formulae, processes, trade secrets, technologies, owned by Licensor or to which Licensor has the rights to grant licenses or sublicenses (including any academic collaborations), and relating to technology involving the transfection and expression of Targets into yeast cells and the development of such yeast cells as Screens for the discovery of potential products; and (b) after the Effective Date, all proprietary inventions, improvements, discoveries, claims, formulae, processes, trade secrets, technologies, owned by Licesor or to which Licensor has the rights to grant licenses or sublicenses, and utilized or arising under the Research Program, provided Licensor Technology shall not include any Licensee Technology as defined of the definition of Licensee Technology. For the purposes of clarity, the identity, sequence information, and structure of the Natural Ligand for any Third Party Target, or other information on the biological function of such Third Party Target are not Licensor Technology and may be provided by Licensee to Third Parties.
Surrogate Ligand shall mean any agonist molecule whose biological activity is identified or confirmed by Licensor through the use of Licensor Technology or Licensee Technology licensed to Licensor and which is biologically active against a Target thereby causing a cellular response and which is not a Natural Ligand or Analog of such Natural Ligand for such Target.
Natural Ligand shall mean a ligand produced by a human cell or a human pathogen whose biological activity is identified or confirmed through the use by Licensee (or on behalf of Licensee) or Licensor of Licensor Technology, which ligand is biologically active against a Target thereby causing a cellular response and which is reasonably confirmed to be a ligand for the Target, provided any of such Licensor Technology is proprietary to Licensor at the time of such use by Licensee or Licensor as the case may be.
The research collaboration and license agreement seeks to elucidate the function of orphan G protein-coupled receptors included within the collaboration and to create high-throughput screens to discover chemical compounds (i.e., potential drugs) that interact with these receptors.
IPSCIO Record ID: 230823
Resten-NG is a third-generation NeuGene® antisense compound, is designed to address the underlying genetic mechanism that leads to restenosis. The result is that this compound can selectively target multiple aspects of the restenosis response, specifically cellular proliferation, secretion of matrix proteins and inflammation, potentially without impeding vascular healing. Restenosis is the renarrowing or reclogging of arteries following balloon angioplasty or placement of a stent. Resten-NG is currently in Phase II clinical trials.
Compound means any drug as defined in the Federal Food, Drug and Cosmetic Act, as amended, not licensed hereunder and all derivatives and analogues of such drug, any biological product as defined in the Public Health Service Act, as amended, not licensed hereunder and all derivatives and analogues of such biological product and the antisense compounds not licensed hereunder.
The patents include morpholino-based polymers, sequence-specific polynucleotide-binding polymers, antisense oligonucleotides, and, method for blocking proliferation of a non-transformed cell in vivo or in vitro.
