Royalty Report: Medical, Surgical, Device – Collection: 290317

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Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 9

Description

This collection of transactions and supporting information was developed using our AI algorithm to curate similar royalty reports into a cohesive collection to support your licensing, transfer pricing or other transaction scenarios where documented royalty rates and/or deal terms are important.
Category: Technology Licenses
Created On: 2022-04-28
Record Count: 9

Primary Industries

  • Medical
  • Surgical
  • Device
  • Prosthetics

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: 290317

License Grant
University hereby grants to Company an exclusive license in the Field under its interest in and to the Licensed Patents, to make, use, offer to sell, sell and import Licensed Products during the Term. No right to sublicense the Licensed Patents are granted under this Agreement.
License Property
Licensed Patents shall mean the patent applications and issued patents listed hereto and made a part hereof; any divisions, continuations (but excluding continuations-in-part) or patents issuing thereon or reissues thereof; and any and all United States and foreign patents and patent applications corresponding thereto, all to the extent controlled by University.

Application #14/256,540 – System and Apparatus for Endoscopic Deployment of Robotic Concentric Tube Manipulators for Performing Surgery
Application #62/236,187 – Hand-held Concentric Tube Manipulator Actuation Unit and Mechanism for Surgery

Licensed Product shall mean (i) any product, process, or service in the Field (a) the making, use, sale, offer to sell, or import of which is covered by (in whole or in part), or absent the license granted herein would infringe, one or more Valid Claims, or (b) that is made, uses, or is used by or in a process that is covered by (in whole or in part), or absent the license granted herein would infringe, one or more Valid Claims, or (ii) a service performed using a product or process described in subsection (i)(a) or (b) above.

Field of Use
This agreement pertains to the medical industry in the field that shall mean human surgical applications.

IPSCIO Record ID: 290207

License Grant
The parties agree to amend the original agreement in connection with the proposed assignment of the Agreement of Party A. This amendment refers to the Licensor granting and does hereby grant to Licensee an exclusive, worldwide license (with right to sublicense) upon the terms and conditions hereinafter specified to evaluate, make, have made, use and sell in the Territory the Surgical Clip Technology, the Licensed Products, Licensed Processes and the Technical Information and including, without limitation, Improvements, Patents and Improvement Patents.  Licensor shall retain the right to permit the Inventors to use any of the Surgical Clip Technology, the Licensed Products, Licensed Processes and Technical Information, and including, without limitation, Improvements, Patents and Improvement Patents for human, neurosurgical procedures performed only by them in their existing neurosurgical practice and only until Licensee has developed a potential Royalty Product for clinical field testing. Such usage shall be without compensation to or liability on the part of Licensee; but all of the same shall be treated by Licensor as confidential Information of Licensee during the term of this Agreement.
License Property
Licensed Product means any apparatus, product, or device within the Surgical clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Surgical Clip Technology means all of the patented or unpatented, patentable or unpatentable, scientific and technical information and know-how created and developed by the inventors during or previous to this Agreement relating to arrangements and techniques for surgical clips and applicators therefor, and includes, but is not limited to, the technology shown, described, and claimed in the patents and patent applications set forth and incorporated herein.
4,586,503 – Surgical microclip
4,733,664 – Surgical clip, applier, and method
4,983,176 – Deformable plastic surgical clip

Patent or Patent Rights are equivalent terms and shall mean any patent issuing on a patent application existing as of the effective date drawn to an invention within the Surgical Clip Technology and covering a Licensed Product Licensed Product, a Licensed Process or Technical Information including, without limitation, the patents and patent applications set forth and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on any later filed continuation-in-part application directed to substantially the same type of invention as that claimed in any patent or patent application listed.

Royalty Products mean products sold by Licensee and by any affiliate and/or sublicensee which are either (a) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents; or (b) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents, in combination with one or more Licensee Inventions.

The terms Micro Clip, Mezzo Clip, and Macro Clip and relate only to sizes and dimensions of surgical clips.

Improvement Patent means any patent issuing on a patent application which comes into existence on or after the effective date drawn to an invention within the Surgical Clip Technology covering a Licensed Product, a Licensed Process or Technical Information and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on a later filed patent application which is a continuation in part of any of the aforesaid patent applications and directed to substantially the same type of invention as that claimed in any such patent application.

Licensee Improvement Patent shall mean any Improvement Patent filed following the assignment date that is not a Post-Assignment Licensor Improvement Patent.

Post-Assignment Licensor Improvement Patent shall mean any Improvement Patent filed following the Assignment Date and containing at least one claim pertaining to an invention conceived in whole or in part by Licensor following the assignment date.

Licensed Process means any process, method, or technique within the Surgical Clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Field of Use
This agreement pertains to the medical industry relating to surgical clips for joining vessels and other surgical products, including wound closure products.

IPSCIO Record ID: 290318

License Grant
University hereby grants to the Company a non-exclusive, non-transferable license to make, have made, import, offer for sale and sell the Licensed Product(s) and the Licensed Service(s) in the United States and worldwide under the Patent Right(s) in the Licensed Field.
License Property
Licensed Product(s) as used herein in either singular or plural shall mean any material, compositions, or other product, the manufacture, use or sale of which would constitute, but for the license granted to Company pursuant to this Agreement, an infringement of a claim of Patent Right(s) (infringement shall include, but is not limited to, direct, contributory, or inducement to infringe).

Patent Right(s) shall mean, collectively, University’s interest in those set forth and the inventions disclosed and claimed therein, and all continuations, divisions, and reissues based thereof, and any corresponding foreign patent applications, and any patents, or other equivalent foreign Patent Right(s) issuing, granted or registered thereon.
US #8,152,756 – Active cannula for bio-sensing and surgical intervention
US #8,715,226 – Active cannula for bio-sensing and surgical intervention

Licensed Service(s) as used herein in either singular or plural shall mean the performance on behalf of a third party of any method including cannulated surgical intervention or the manufacture of any product or the use of any product which would constitute, but for the license granted to Company pursuant to this Agreement, an infringement of a claim of the Patent Right(s), (infringement shall include, but not be limited to, direct, contributory or inducement to infringe).

Field of Use
This agreement pertains to the medical industry in the Licensed Field that mean Cannulated Surgical Intervention.

IPSCIO Record ID: 289181

License Grant
Licensor agrees to grant and does hereby grant to Licensee an exclusive, worldwide license (with right to sublicense) upon the terms and conditions hereinafter specified to evaluate, make, have made, use and sell in the Territory the Surgical Clip Technology, the Licensed Products, Licensed Processes and the Technical Information and including, without limitation, Improvements, Patents and Improvement Patents.  Licensor shall retain the right to permit the Inventors to use any of the Surgical Clip Technology, the Licensed Products, Licensed Processes and Technical Information, and including, without limitation, Improvements, Patents and Improvement Patents for human, neurosurgical procedures performed only by them in their existing neurosurgical practice and only until Licensee has developed a potential Royalty Product for clinical field testing. Such usage shall be without compensation to or liability on the part of Licensee; but all of the same shall be treated by Licensor as confidential Information of Licensee during the term of this Agreement.
License Property
Licensed Product means any apparatus, product, or device within the Surgical clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Surgical Clip Technology means all of the patented or unpatented, patentable or unpatentable, scientific and technical information and know-how created and developed by the inventors during or previous to this Agreement relating to arrangements and techniques for surgical clips and applicators therefor, and includes, but is not limited to, the technology shown, described, and claimed in the patents and patent applications set forth and incorporated herein.
4,586,503 – Surgical microclip
4,733,664 – Surgical clip, applier, and method
4,983,176 – Deformable plastic surgical clip

Patent or Patent Rights are equivalent terms and shall mean any patent issuing on a patent application existing as of the effective date drawn to an invention within the Surgical Clip Technology and covering a Licensed Product Licensed Product, a Licensed Process or Technical Information including, without limitation, the patents and patent applications set forth and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on any later filed continuation-in-part application directed to substantially the same type of invention as that claimed in any patent or patent application listed.

Royalty Products mean products sold by Licensee and by any affiliate and/or sublicensee which are either (a) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents; or (b) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents, in combination with one or more Licensee Inventions.

The terms Micro Clip, Mezzo Clip, and Macro Clip and relate only to sizes and dimensions of surgical clips.

Improvement Patent means any patent issuing on a patent application which comes into existence on or after the effective date drawn to an invention within the Surgical Clip Technology covering a Licensed Product, a Licensed Process or Technical Information and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on a later filed patent application which is a continuation in part of any of the aforesaid patent applications and directed to substantially the same type of invention as that claimed in any such patent application.

Licensed Process means any process, method, or technique within the Surgical Clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Field of Use
This agreement pertains to the medical industry relating to surgical clips for joining vessels and other surgical products, including wound closure products.

IPSCIO Record ID: 5554

License Grant
Licensor hereby grants to Licensee and its Subsidiaries and Licensee hereby accepts, a sole, worldwide license (without right to sublicense) in the Licensed Field to make, have made, import, export, use, offer to sell, sell, distribute (directly or indirectly), consign and market any Licensed Product and Method under the Licensor Patent Claims.
License Property
'Licensed Products And Methods' means the Essure System.

EssureTM is an innovative and proprietary non-incisional permanent birth control device for women.  Essure is an alternative to tubal ligation and involves inserting a tiny device through the vagina that closes off the fallopian tubes.  Tubal ligation involves burning or clipping the tubes through incisions near the navel.

Patent Claims' means (1) the claims of U.S. Patent Nos. 6,432,116 and 6,096,052 and (2) any and all related patent claims, including patent claims which arise from reissues, reexaminations, continuations, continuations-in-part, divisions, continuing prosecution applications, and requests for continuing examination of U.S. Patent Application Nos. 08/770,123, 09/112,085, 09/468,749, and any and all foreign counterparts, but excluding any claims covering inventions not conceived as of October 22, 2003.

Field of Use
'Licensed Field' means the field of permanent female sterilization.

IPSCIO Record ID: 289252

License Grant
Licensor hereby grants to Company and its Affiliates a royalty-bearing license under its commercial rights in the Patent Rights, Copyright Rights. Trade Secrets. and Know-How to the extent not prohibited by other patents, to develop, make, have made, use, sell, lease, and import Licensed Products in the Field in the Territory and to develop and perform Licensed Processes in the Field in the Territory.

In order to establish an Exclusive Period, Licensor agrees that it shall not grant any other license to make, have made; use, sell, lease and import Licensed Products in the Field in the Territory or to develop and perform Licensed Processes in the Field in the Territory during the Term unless said Exclusive Period is terminated. Upon expiration of the Exclusive Period the license granted hereunder shall become-nonexclusive and shall extend to the end of the Term.

License Property
Patent Rights shall mean
(a) the United States Patents listed
(b) any patents resulting from reissues, reexaminations; or extensions of the patents described.
U.S. Patent #5,388,480 – Pretensioning mechanism for tension element drive systems
U.S. Patent #5,207,114 – Compact cable transmission with cable differential
U.S. Patent #5,046,375 – Compact cable transmission with cable differential

Copyright Rights shall mean the copyright that listed hereto and incorporated herein by reference in all substitutions. additions. extensions. reissues, renewals, divisions, continuations and continuations-in-part thereof and any foreign counterparts thereto. U.S. Copyright Registration No. TX 3,310,946, effective May 7, 1992, WAM-1 Maintenance and User Manual. Owned by Licensor.

Field of Use
Field shall mean all medical procedures including, but not limited to, Image Guided Surgery (including but not limited to, Coordinated Fluoroscopy, Fluoroscopy, Magnetic Resonance Imaging, CT, CineCT, Ultrasound, and Video), Orthopedic Surgery, Spinal Surgery, Laparoscopy, Endoscopy, all minimally invasive surgical procedures, all Radiological procedures. Neurosurgery, MaxillofaciaJ/Dental Surgery, Cardiovascular Surgery, Gastroenterology, and Nephrology, but excluding Physical Therapy, Ophthalmology, and nonsurgical applications of Chiropracty.

IPSCIO Record ID: 28651

License Grant
Assignors, two individuals, hereby sell, assign, and transfer exclusively and subject to all of the terms and conditions of this Agreement, their entire right, title, and interest in and to the Device and the Intellectual Property.
License Property
“Applications” shall mean any and all pending patent applications filed by Assignors relating to the Device and any apparatus and/or method for reducing, sizing and/or stabilizing the circumference of a vascular or anatomical structure designed or used by Assignors, including, but not limited to, the following
(a) In the United States, application No. 09/733,224 entitled Annuloplasty System, filed December 8, 2000;
(b) In Canada, application No. 2,197,069 entitled Apparatus for Reducing the Circumference of a Vascular Structure, filed August 10, 1995;
(c) In the European Region, application No. 95929486.9 entitled Apparatus for Reducing the Circumference of a Vascular Structure, filed August 10, 1995; and
(d) In Japan, application No. 507532/1996 entitled Apparatus for Reducing Circumference of Vascular Structure, filed August 10, 1995 and any and all patents and/or patent applications claiming priority thereto, and any and all patents or patent applications in which either Segmed or Dr. Northrup is an inventor, which relate to the Device and/or any apparatus and/or method for reducing, sizing and/or stabilizing the circumference of a vascular or anatomical structure, and any reissues, continuations, divisions, continuations-in-part or extensions thereof, any patents issuing therefrom; and/or any improvements thereto or enhancements thereof which are either wholly or in part owned, invented, controlled, acquired or otherwise assignable by either or both of the Assignors, and any patent applications therefor and any patents issuing therefrom.

“Device” shall mean the apparatus and/or method for reducing, sizing and/or stabilizing the circumference of a vascular or anatomical structure (the “Field”) covered by the Intellectual Property and fully described in the Applications and applications relating to the Patents, and any and all improvements, modifications, derivations, enhancements, technology, Know-how and Documentation related thereto.

Patent relates to a new annuloplasty technology for the repair of mitral and tricuspid heart valves.

“Patents” shall mean the following patents issued to Assignors in the United States, Australia, Taiwan and South Africa
(a) In the United States, U.S. Patent No. 5,593,424 entitled Apparatus and Method for Reducing and Stabilizing the Circumference of a Vascular Structure, issued January 14, 1997, U.S. Patent No. 5,709,695 entitled Apparatus for Reducing the Circumference of a Vascular Structure, issued January 20, 1998, and U.S. Patent No. 5,961,539 entitled Method and Apparatus for Sizing, Stabilizing and/or Reducing the Circumference of an Anatomical Structure, issued October 5, 1999;
(b) In Australia, patent No. 700530 entitled Apparatus for Reducing Circumference of Vascular Structure, filed August 10, 1995;
(c) In Taiwan, patent No. 096871 entitled Apparatus for Reducing the Circumference of a Bodily Structure, filed August 11, 1995; and
(d) In South Africa patent No. 95/6672 entitled Apparatus and Method for Reducing the Circumference of a Vascular Structure, filed August 10, 1995,
and any and all patents and/or patent applications claiming priority thereto, and any and all patents or patent applications in which Assignors are an inventor, which relate to the Device and/or any apparatus or method for reducing, sizing and/or stabilizing the circumference of a vascular or anatomical structure, and any reissues, continuations, divisions, continuations-in-part or extensions thereof, any patents issuing therefrom, and/or any improvements thereto or enhancements thereof which are either wholly or in part owned, invented, controlled, acquired or otherwise assignable by Assignors, and any patent applications therefor and any patents issuing therefrom.

“Trademark” shall mean the mark represented by United States Registration No. 2,108,883 for the “SEGMENT” mark.

IPSCIO Record ID: 280958

License Grant
University foundation hereby grants to Licensee and its Affiliates an exclusive (even as to University), worldwide, fully transferable, sublicensable, irrevocable, non-terminable and cost-free (except for the Royalty and other remuneration provisions as provided hereof) license, continuing uninterrupted for the life of the Licensed Patents in the Licensed Territory to make, have made, use, offer for sale, import and sell Licensed Products and/or Licensed Processes claimed in the Licensed Patents for the Licensed Field.

University hereby grants to Licensee and its Affiliates a non-exclusive, license, in the Licensed Territory and the Licensed Field under the all Intellectual Property Rights (other than patent rights) in the Enabling Technology to make, have made, use, offer for sale, copy, disclose, and sell Licensed Products and/or Licensed Processes. Upon request of Licensee, University will deliver, or caused to be delivered, any Enabling Technology within the possession of the Inventors.

License Property
Licensed Patents shall refer to and mean all of the following patents and patent applications  U.S. Patent Application Serial No. 11/684,514, filed March 9, 2007, and the corresponding international PCT application (application number not yet assigned), filed March 9, 2007, titled Prosthetic Device and System and Method for Implanting Prosthetic Device; and all U.S. and foreign patent applications claiming priority to these applications or disclosing or claiming any Improvements, including without limitation divisional, continuation, and reissue applications and any patent(s)/patent application(s) claiming inventions resulting from the Research Agreement, whether or not such inventions are Improvements.
Field of Use
The invention relates to orthopedic joint replacement and, more particularly, to a prosthetic device for use in orthopedic joint replacement and a system and method for implanting the same.

IPSCIO Record ID: 29212

License Grant
The Licensee entered into an exclusive License and development Agreement with an Australian University, granting the Company a worldwide exclusive (even as to the university) License, with rights to subLicense, to all the Company’s product candidates and associated know-how based on the University's technology, including the exclusive right to manufacture, use and sell the product candidates. The Company agreed to invest towards development of any Licensed product.
License Property
The University Intellectual Resources Management is focused on developing the key surgical devices that would make noninvasive procedures a reality.  The Licensee is a developmental stage medical device company focused on the development of medical devices that manipulate tissues for endoscopic and minimally invasive surgery for the treatment of obesity, gastroesophageal reflux disease, Barrett's Esophagus, esophageal obstructions, upper gastrointestinal bleeding, hernia formation and other intraperitoneal abnormalities.  The Company’s product portfolio includes a device for endoscopic bariatric surgery (obesity surgery) and endoscopic repair of gastroesophageal reflux disorder (GERD), as well as an endoscopic device for excision and diagnosis of Barrett’s esophagus.

Licensed Patent Rights and Licensed Patents shall mean (1) United States Provisional Patent Application No. 60/698,748 filed July 13, 2005, and titled Suturing System for Transoral Gastroplasty and United States Provisional Patent Application No. 60/742,826 filed December 6, 2005, and titled Systems and Techniques for Transoral Gastroplasty; (2) International Patent Application No. PCT/US04/028516 entitled Suturing Devices and Methods, filed September 2, 2004 (claiming benefit of U.S. Provisional Patent Application Serial No. 60/499,539, filed September 2, 2003; U.S. Provisional Patent Application Serial No. 60/507,837, filed October 1, 2003; and U.S. Provisional Patent Application Serial No. 60/576,510, filed June 3, 2004); (3) any and all Patent Rights under the patents or patent applications for any Additional Technologies and associated Know-How licensed by the Company.

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