Royalty Report: Drug Discovery, Drugs, DNA – Collection: 28964

License Grant

The United Kingdom Licensor hereby grants to the Licensee the non-exclusive, worldwide, perpetual right and license under such right, title and interest as it may have in the Background IP and Foreground IP (if any) to develop, make, have made, use, import, market and sell Product. The Licensee may sub-license the rights granted to it.

The Licensee and the Licensor jointly acquired certain assets and rights on 15 April 2004. Pursuant to the terms of a loan agreement dated 12 August 2004 the Licensee has agreed to transfer its ownership of the Colony Technology to the Licensor in consideration for the grant License Agreement.

License Property

The technology assets are used for DNA colony generation and sequencing.

Field of Use

The acquired technology assets feature a process to enable parallel amplification of millions of DNA fragments, each from a single DNA molecule, to create DNA colonies or 'clusters.' The clusters are dense collections of DNA molecules on a surface, which should enable fast and simplified preparation of the biological sample for analysis. The planar cluster technology, when fully developed, will replace its Megaclone technology, a process that transforms a sample containing millions of DNA molecules into one made up of millions of micro-beads coated with DNA.

License Grant

Licensor hereby grants to United Kingdom Licensee the non-exclusive, worldwide, perpetual right and license under such right, title and interest as it may have in such Severable Development and the Know-How and IP Rights relating thereto to develop, make, use, import, market and sell Product.

The Licensee and the Licensor jointly acquired certain assets and rights on 15 April 2004. Pursuant to the terms of a loan agreement dated 12 August 2004 the Licensee has agreed to transfer its ownership of the Colony Technology to the Licensor in consideration for the grant License Agreement.

License Property

'SEVERABLE DEVELOPMENT(S)' means any development, improvement or modification of the Background IP that can be exploited without infringing the IP Rights in the Background IP.

The technology assets are used for DNA colony generation and sequencing.

Field of Use

The acquired technology assets feature a process to enable parallel amplification of millions of DNA fragments, each from a single DNA molecule, to create DNA colonies or 'clusters.' The clusters are dense collections of DNA molecules on a surface, which should enable fast and simplified preparation of the biological sample for analysis. The planar cluster technology, when fully developed, will replace its Megaclone technology, a process that transforms a sample containing millions of DNA molecules into one made up of millions of micro-beads coated with DNA.

License Grant

Subject to satisfaction of the Performance Criteria and for a period of five (5) years beginning from the Effective Date of the Agreement ('Period of Exclusivity'), Licensor hereby grants to Japanese  Licensee and its Affiliates an exclusive royalty-bearing license under Patent Rights and Licensor Know-How, without rights to sublicense, to use Megaclone(TM) technology to provide MPSS(TM) Services and Megasort(TM) Services to customers in the Territory and to make and sell Microarrays containing nucleic acid sequences identified by Megasort(TM) or MPSS(TM) technologies to customers in the Territory, whether or not such nucleic acid sequences were known or described prior to such identification. From and after the fifth anniversary of the Effective Date or upon failure to satisfy the Performance Criteria or whichever occurs sooner, the license rights of this paragraph shall become non-exclusive for the remainder of the term of the Agreement.

License Property

U.S. Patent #5,552,278 – DNA sequencing by stepwise ligation and cleavage
U.S. Patent #5,856,093 – Method of determining zygosity by ligation and cleavage
U.S. Patent #5,831,065 – Kits for DNA sequencing by stepwise ligation and cleavage

Megaclone(TM) technology means the technology owned and/or controlled by Licensor for generating a population of microbeads having complementary DNA (cDNA) molecules attached wherein substantially every different cDNA molecule is attached to a different microbead of the population. A 'Megaclone(TM) Library' means a cDNA library which has been transformed using Megaclone(TM) technology into a population of microbeads each having attached a clonal population of a distinct cDNA molecule. As used herein, Megaclone(TM) technology does not include any process for attaching genomic fragments of DNA to microbeads or any other solid phase support.

MPSS(TM) Service means the analysis of genes expressed in a cell or tissue by MPSS(TM) technology.

MPSS(TM) technology means the technology owned and/or controlled by Licensor for simultaneously generating signature sequences of cDNAs in a Megaclone(TM) Library disposed in a flow cell using the ligation-based sequencing method described in Brenner et al, Nature Biotechnology, 18 630-634 (2000).

Megasort(TM) Service means the analysis of genes expressed in different cell or tissue sources by Megasort(TM) technology.

Megasort(TM) technology means the technology owned and/or controlled by Licensor for detecting and isolating gene products, such as cDNA molecules, differentially expressed in two different cell or tissue sources by fluorescence activated cell sorting (FACS) analysis of a Megaclone(TM) Library to which differently labeled probes derived from the two different cell or tissue sources have been competitively hybridized.

Microarray means a solid phase support containing a plurality of discrete regions such that within each discrete region a single species of nucleic acid is attached. Said nucleic acid may be attached covalently or non-covalently by any method, including, but not limited to, deposition of a solution containing a separately synthesized cDNA, polynucleotide, or oligonucleotide, or in situ synthesis using ink-jet, photolithographic, or any other chemical technologies.

Field of Use

Field of use is for genetic analysis, including Megaclone(TM) technology for generating libraries of microbeads each containing a clone of a distinct DNA molecule, Megasort(TM) technology for isolating genes carried on Megaclone(TM) microbeads that are differentially expressed in two different cell or tissue sources, and MPSS(TM) technology for simultaneously generating signature sequences of DNA molecules carried on Megaclone(TM) microbeads.

License Grant

Licensor hereby grants to the Japanese Licensee and its Affiliates an exclusive royalty-bearing license under Patent Rights and Licensee Know-How, without rights to sublicense, to use Megaclone(TM) technology to provide MPSS(TM) Services and Megasort(TM) Services to customers in the Territory and to make and sell Microarrays containing nucleic acid sequences identified by Megasort(TM) or MPSS(TM) technologies to customers in the Territory, whether or not such nucleic acid sequences were known or described prior to such identification. From and after the fifth anniversary of the Effective Date or upon failure to satisfy the Performance Criteria, whichever occurs sooner, the license rights of this paragraph shall become non-exclusive for the remainder of the term of the Agreement.

Licensor hereby grants to Licensee a worldwide non-exclusive license, without a right to sublicense, to use the trademarks and service marks 'LYNX,' 'MEGACLONE,' 'MPSS,' and 'MEGASORT' (collectively, the 'Licensed Marks') in advertising and other promotional materials related to the use of Licensor Technology hereunder and in packaging, advertising and other promotional materials related to the sale, distribution, and marketing of Microarrays containing nucleic acid sequences identified by Megasort(TM) or MPSS(TM) technologies.

License Property

Megaclone(TM) technology means the technology owned and/or controlled by Licensor for generating a population of microbeads having complementary DNA (cDNA) molecules attached wherein substantially every different cDNA molecule is attached to a different microbead of the population.

A Megaclone(TM) Library means a cDNA library which has been transformed using Megaclone(TM) technology into a population of microbeads each having attached a clonal population of a distinct cDNA molecule. As used herein, Megaclone(TM) technology does not include any process for attaching genomic fragments of DNA to microbeads or any other solid phase support.

Megasort(TM) Service means the analysis of genes expressed in different cell or tissue sources by Megasort(TM) technology.

Megasort(TM) technology means the technology owned and/or controlled by Licensor for detecting and isolating gene products, such as cDNA molecules, differentially expressed in two different cell or tissue sources by fluorescence activated cell sorting (FACS) analysis of a Megaclone(TM) Library to which differently labeled probes derived from the two different cell or tissue sources have been competitively hybridized.

Microarray means a solid phase support containing a plurality of discrete regions such that within each discrete region a single species of nucleic acid is attached. Said nucleic acid may be attached covalently or non-covalently by any method, including, but not limited to, deposition of a solution containing a separately synthesized cDNA, polynucleotide, or oligonucleotide, or in situ synthesis using ink-jet, photolithographic, or any other chemical technologies.

Microarray Spot means a discrete region of a Microarray in which a single species of nucleic acid is attached.

MPSS(TM) Service means the analysis of genes expressed in a cell or tissue by MPSS(TM) technology.

MPSS(TM) technology means the technology owned and/or controlled by Licensor for simultaneously generating signature sequences of cDNAs in a Megaclone(TM) Library disposed in a flow cell using the ligation-based sequencing method described in Brenner et al, Nature Biotechnology.

MPSS(TM) Instrument means an apparatus for carrying out the process steps of MPSS(TM) technology. An MPSS(TM) Instrument consists of the following modules Flow Cell including housing with heating and cooling system, optical/imaging system, fluid delivery system, control/monitoring system, and data collection software.

5,552,278 – DNA sequencing by stepwise ligation and cleavage
5,856,093 – Method of determining zygosity by ligation and cleavage
5,831,065 – Kits for DNA sequencing by stepwise ligation and cleavage

Field of Use

This agreement pertains to genetic analysis.