Royalty Report: Diagnostic, Drugs, Cancer – Collection: 291130

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 20

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: 20

Primary Industries

  • Diagnostic
  • Drugs
  • Cancer
  • Medical
  • Disease
  • nucleic acid
  • Biotechnology
  • Diagnostic Substances
  • DNA
  • Device
  • Genome
  • Tissue
  • Surgical
  • Molecular
  • HIV / AIDs
  • ribonucleic acid
  • Test/Monitoring
  • Therapeutic
  • Veterinary
  • Drug Discovery

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: 291130

License Grant
Licensor hereby grants to Licensee, and Licensee hereby accepts from Licensor, a royalty-bearing, non exclusive, personal, non-transferable license under the Licensed Technology solely to perform Licensed Services within the Territory.

Licensor hereby grants to Licensee the right and Licensee accepts and agrees to credit Licensor as the source of its Licensed Technology rights in Licensees promotional materials and any other materials intended for distribution to Third Parties as follows

License Property
Licensor owns and has the right to grant licenses to practice under certain United States Patents describing and claiming, inter alia, nucleic acid amplification processes known as polymerase chain reaction ('PCR'), homogeneous PCR, and RT-PCR ('reverse transcription PCR').

Licensed Technology shall mean, subject to the following limitations, the Valid Claims of the United States patents listed in Agreement and any reissue or reexamination patents thereof. No rights under any kit claims of such patents are included in this definition or licensed under this Agreement. With the exception of the reaction mixture claims of United States Patents Nos. 5,804,375, 5,693,517, 5,476,774 and 6,127,155, the plasmid claims of the 5,476,774 patent, the primer claims of United States Patent No. 5,573,906, and the probe claims of United States Patent No. 5,110,920, no rights under any apparatus, device, composition of matter, reagent or substance claims of such patents are included in this definition or licensed under this Agreement.
4,683,195 – Process for amplifying, detecting, and/or-cloning nucleic acid sequences
4,683,202 – Process for amplifying nucleic acid sequences
4,965,188 – Process for amplifying, detecting, and/or cloning nucleic acid sequences using a thermostable enzyme

Diagnostic Product shall mean an assemblage of reagents, including but not limited to reagents packaged in the form of a kit, useful in performing a Licensed Service.

Licensed Service(s) shall mean the performance by Licensee of an in vitro procedure within the Licensed Field which utilizes the Licensed Technology. Licensed Services include, but are not limited to, any combination of the steps of collecting a sample for analysis, isolating nucleic acid sequences from the sample, amplifying one or more desired sequences, analyzing the amplified material, including sequence analysis, and reporting the results.

Field of Use
Licensed technology includes specified nucleic acid amplification processes, to perform certain polymerase chain reaction-based human in vitro clinical laboratory services.

Licensed Field shall mean the field of clinical laboratory services that detect the presence, absence and/or quantity of a nucleic acid sequence for the detection, diagnosis, confirmation, prognosis, management and/or treatment of a human disease or condition, including, but not limited to, such services to identify predisposition to disease, disease susceptibility, confirm disease, predict therapeutic effectiveness or monitor disease progress; used in the course of human clinical trials; for Parentage Determination; and for tissue transplant typing, including testing performed on animal tissue intended for use in xenotransplantation. Licensed Field shall specifically exclude any services performed for the screening of blood and/or blood products.

IPSCIO Record ID: 240484

License Grant
Licensor hereby grants to Licensee, and Licensee hereby accepts from Licensor, a royalty-bearing, non-exclusive immunity from suit under PCR Technology solely to use Licensed Technology to perform Licensed Services within the United States and its possessions and the Commonwealth of Puerto Rico. The Parties understand and agree that no rights are hereby granted, expressly or by implication, under U.S. Patent No. 4,965,188.
License Property
PCR Technology shall mean polymerase chain reaction technology covered by United States Patent Nos. B1 4,683,195 and B1 4,683,202 and any reissue or reexamination patents thereof.
4,683,195 – Process for amplifying, detecting, and/or-cloning nucleic acid sequences
4,683,202 – Process for amplifying nucleic acid sequences

Licensed Services shall mean the performance of an Assay by Specialty Labs to detect nucleic acid sequences associated with a human disease or condition within the Licensed Field. Licensed Services include but are not limited to, any combination of the steps of collecting a sample for analysis, isolating nucleic acid sequences therein, amplifying one or more desired sequences, analyzing the amplified material and reporting the results.

Diagnostic Product shall mean an assemblage of reagents, including but not limited to reagents packaged in the form of a kit, useful in performing an Assay.

Assay shall mean an IN VITRO diagnostic procedure utilizing PCR Technology to detect the presence, absence or quantity of a nucleic acid sequence associated with a specific human disease or condition.

Field of Use
Licensed Field shall mean the field of human IN VITRO diagnostics solely for the detection of genetic diseases, genetic pre-disposition to disease, cancer, tissue transplant typing, Parentage, and microorganisms associated with infectious diseases.

IPSCIO Record ID: 146089

License Grant
Licensor grants a nonexclusive immunity from suit under PCR Technology solely to perform Licensed Services.

Licensor grants to Licensee the right to credit the Licensor as the source of PCR Technology in Licensees promotional materials and any other materials intended for distribution.

License Property
PCR or polymerise chain reaction is a nucleic acid amplification process.

Licensed Services means the performance of an IN VITRO diagnostic procedure utilizing PCR Technology to detect the presence, absence or quantity of a nucleic acid sequence associated with a human disease or condition within the Licensed field.

The Diagnostic product shall mean an assemblage of reagents, including but not limited to reagents packaged in the form of a kit, useful in performing a Licensed Service.

The licensed credit is 'This test is performed pursuant to a license agreement with Licensor.'

Field of Use
Licensor has expertise in validating, documenting and performing sophisticated diagnostic procedures.  The field is that of human IN VITRO diagnostics solely for the detection of genetic diseases, genetic predisposition to disease, agents associated with infectious diseases, cancer; and for tissue transplant typing, including testing performed on animal tissue intended for use in xenotransplantation; Parentage determination; disease management; and clinical trials.

IPSCIO Record ID: 26464

License Grant
The Licensee was granted the non-exclusive right to polymerase chain reaction technology or 'PCR' to perform the Licensed Services within the United States and its possessions and the Commonwealth of Puerto Rico.

The Licensed Services shall mean the performance of an Assay by BTRL to detect nucleic acid sequences associated with a human disease or condition within the Licensed Field.  Licensed Services include but are not limited to, any combination of the steps of collecting a sample for analysis, isolating nucleic acid sequences therein, amplifying one or more desired sequences, analyzing the amplified material and reporting the results.

License Property
PCR Technology shall mean polymerase chain reaction technology covered by United States Patent Nos. B1 4,683,195 and B1 4,683,202.
Field of Use
The Licensed Field shall mean the field of human in vitro diagnostics solely for the detection of genetic diseases, genetic pre-disposition to disease, microorganisms associated with infectious diseases, cancer, or for tissue transplant typing or Parentage.

IPSCIO Record ID: 605

License Grant
Swiss Licensor grants to Licensee and its Affiliates, a non-exclusive worldwide right and license under the Licensed Patents as follows to perform in vitro human and/or animal diagnostic testing procedures on a sample of material obtained from a human or animal, as applicable, solely to detect the presence, absence or quantity of a nucleic acid sequence associated with a disease or condition in the Licensed Fields.
License Property
Other Technology shall mean the processes covered by the method claims (if they are Valid Claims) of United States Patent Nos. 5,008,182, 5,677,152, 5,773,258 and 5,176,995, and any reissue or reexamination patents thereof, and the claims (if they are Valid Claims) of United States Patent No. 5,110, 920, and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.

PCR Technology shall mean polymerase chain reaction technology covered by Valid Claims of United States Patent Nos. B1 4,683,195, B1 4,683,202, and 4,965,188 and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.

Quantitation Technology shall mean the method claims (if they are Valid Claims) of United States Patent Nos. 5,389,512 and 5,219,727, and any reissue or reexamination patents thereof, and claims 1-4, 8, 9 and 15-18 (if they are Valid Claims) of United States Patent No. 5, 476,774, and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.

RT and RT-PCR  Technology shall mean the reverse transcription process covered by the method claims (if they are Valid Claims) of United States Patent Nos. 5,407,800, 5,310,652, 5,561,058, 5,618,703 and 5,322,770, and any reissue or reexamination patents thereof, and the claims (if they are Valid Claims) of United States Patent No. 5,693,517, and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.

'5' Nuclease Technology' shall mean only the processes defined by the method claims (if they are Valid Claims) of United States Patent Nos. 5,210,015 and 5,487,972 and any reissue or reexamination patents thereof and the reaction mixture claims (if they are Valid Claims) of United States Patent No. 5,804,375 and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.

Field of Use
Diagnostic Services Field means the field of human in vitro diagnostics for the detection, quantitation, monitoring, genotyping, or phenotyping, of genetic and infectious diseases, disease susceptibility, genetic pre-disposition to disease or cancer; analyzing specimens taken from a human being for the purpose of testing, with respect to that human being, for a physiological or pathological state, for a congenital abnormality, for safety and compatibility of a treatment or to monitor therapeutic measures; or any use of PCR as a testing service to provide to a person data, results or interpretations of any application of PCR for purposes of therapy or diagnosis of a human being, including, without limitation, clinical laboratory services, whether or not a fee is charged for such services; tissue transplant typing, including testing performed on animal tissue intended for use in xenotransplantation; Parentage Determination; diagnosis, disease management; and clinical trials, whether or not a patient result is provided directly or indirectly to a patient.  Licensed Field shall specifically exclude any services performed for screening of blood and/or blood products.

IPSCIO Record ID: 2099

License Grant
The Company hereby grants a non-exclusive immunity from suit under PCR Technology solely to use Licensed Technology to perform Licensed Services within the United States and its possessions and the Commonwealth of Puerto Rico; gene amplification process known as the polymerase chain reaction ('PCR') technology (by United States Patent Nos. B1 4,683,195 and B1 4,683,202).
License Property
'Licensed Technology' shall mean the application of PCR Technology.

PCR Technology is used to detect the presence, absence or quantity of a nucleic acid sequence associated with a specific human disease or condition.

Field of Use
Licensed Field shall mean the field of human in vitro diagnostics solely for the detection of genetic diseases, genetic pre-disposition to disease, microorganisms associated with infectious diseases, cancer, or for tissue transplant typing or Parentage.

IPSCIO Record ID: 122373

License Grant
Licensor hereby grants to Licensee, and Licensee hereby accepts from Licensor, a royalty-bearing, non-exclusive immunity from suit under PCR Technology solely to perform licensed services within the United States and its possessions and the Commonwealth of Puerto Rico.
License Property
PCR technology shall mean polymerase chain reaction technology covered by United States Patent Nos. B2 4,683,195, B1 4,683,202 and 4,965,188 and any reissue or reexamination patents thereof. The performance of an in vitro diagnostic procedure utilizing PCR Technology to detect the presence, absence or quantity of a nucleic acid sequence associated with a specific human disease or condition within the licensed field.

It is understood by the parties that Licensor may, from time to time, come into possession or control of additional patents or claims of patents relating to PCR technology rights to which Licensor may decide to offer to add to the Diagnostic Services Agreement and which Licensee may desire to accept.

Additional Patents
U.S. Patent Number 5,008,182
U.S. Patent Number 5,176,995
U.S. Patent Number 5,219,727
U.S. Patent Number 5,110,920

Field of Use
Licensed Field shall mean the field of human in vitro diagnostics solely for the detection of genetic diseases, genetic pre-disposition to disease, cancer, tissue transplant typing, Parentage, and microorganisms associated with infectious diseases.

IPSCIO Record ID: 233461

License Grant
The Swiss Licensor grants a non-exclusive license under the Licensed Patents as follows
– to make, have made, import, use, offer to Sell and Sell Licensed Products in the In Vitro Human Diagnostics Field in the Territory, and authorize End-Users to perform Diagnostic Services using such Licensed Products in processes covered by the Licensed Patents in accordance with the label license provided with the purchase of such Licensed Products.
– to grant a limited, non-transferable, royalty free sublicense under the Licensed Patents to Research Collaborators of Licensee and/or its Affiliates to practice PCR under their respective contracts with Licensee and/or its Affiliates, in accordance with the terms and conditions of this Agreement, solely for purposes of doing applied research and development for Licensee and/or its Affiliates of Licensed Products to be Sold in the In Vitro Human Diagnostics Field in accordance with the other terms and conditions of this Agreement; and
– to use PCR technology for the research, development, improvement and quality control and quality assurance of Licensed Products, in each case by Licensee and its Affiliates, internally, for Sale in the In Vitro Human Diagnostics Field.

For Label Licenses on Licensed Products Sold in the In Vitro Human Diagnostics
– Licensees right to sublicense is limited to the right to convey use rights pursuant to a Label License under process claims and composition of matter claims,not apparatus, device or system claims, only to End-User customers, and only through the Sale of Licensed Products.
– Licensee agrees that it shall mark conspicuously all Complete Diagnostic Kits made by or for it,
– Licensee agrees that it shall mark conspicuously all Component Systems for amplification made by or for it
– Licensee agrees that it shall mark conspicuously all Component Systems for detection made by or for it
– Licensee agrees that it shall mark conspicuously all Component Systems for amplification and detection made by or for it
– Licensee agrees that it shall mark conspicuously all Royalty Products other than Complete Diagnostic Kits, Component Systems for amplification, Component Systems for detection and Component Systems for amplification and detection made by or for it and Sold in the In Vitro Human Diagnostics Field.

License Property
The Complete Diagnostic Kit means a product dedicated for use in connection with the practice of PCR in the In Vitro Human Diagnostics Field, it being understood that a product shall be deemed to be so dedicated if it is either  a product having a package insert indicating its use primarily in connection with the practice of PCR; or a product which by virtue of its design, operation or construction has no other substantial practical utility, and which product is comprised of, at a minimum, the essential active reagents for amplification and detection of a target nucleic acid in the In Vitro Human Diagnostics Field. For purposes of this Agreement, Licensee shall only convey the necessary rights for End-Users to perform PCR in the In Vitro Human Diagnostics Field with the Sale of a Complete Diagnostic Kit.

Licensed Product means a product for use in the In Vitro Human Diagnostics Field, the manufacture, importation, use, offer for Sale or Sale of which would infringe a Valid Claim of Licensed Patents, made by or specifically for Licensee or any of its Affiliates only pursuant to Licensees or its Affiliates specifications, which is any of the following or a combination of any of the following
(a) Complete Diagnostic Kit;
(b) A reagent, accessory, device or system which is used or Sold to be used by End-Users in connection with the practice of PCR, including the steps of sample preparation, amplification and detection;
(c) A Component System; and/or
(d) Reagents Sold to be used by End-Users as replacement components in regard to a Component System.

PCR means the polymerase chain reaction process and technology.

Patents relate to Process for Amplifying, Detecting, and/or Cloning Nucleic Acid Sequences.

Field of Use
This agreement is for the purpose of developing and commercializing PCR based in vitro human diagnostic products for use in clinical diagnostic testing;

The Human Identity Field means the field of use comprising products and processes utilizing PCR for the sole purpose of determining human identity or distinguishing among human beings, whether living or dead. The Term Human Identity Field shall included parentage testing to determine if two or more human beings are biologically related as parent and child and forensic testing for use in, or in preparation for, death investigations or other legal proceedings, but such term shall specifically exclude testing for tissue typing.

In Vitro Human Diagnostics Field means the field of use comprising products and processes utilizing PCR for the measurement, observation or determination of attributes, characteristics, diseases, traits or other conditions of a human being for the medical management of that human being, including without limitation
(a) genetic testing, including determinations of genetic predisposition;
(b) oncology and cancer predisposition testing;
(c) testing for tissue typing (excluding the Human Identity Field);
(d) infectious disease detection, screening, confirmation and monitoring; and
(e) therapeutic drug monitoring.

For purposes of this Agreement, the term 'In Vitro Human Diagnostics Field' shall not include the Human Identity Field.

“PCR” means the polymerase chain reaction process and technology involving the amplification of a nucleic acid sequence and the complement of that sequence by repeated cycles of oligonucleotide mediated, template directed synthesis involving the extension of a component primer oligonucleotide by incorporation of monomeric nucleotide triphosphates whereby the sequence, its complement and subsequent synthetic copies thereof are repeatedly separated and used as templates for further cycles of synthesis.

IPSCIO Record ID: 140367

License Grant
Licensor grants a non-exclusive, non-transferable immunity from suit under licensed technology solely to perform Licensed Clinical Services within the Territory.

Licensor grants the right for Licensee to credit Licensor as the source of Licensed Technology rights in Licensees, promotional materials and any other materials intended for distribution to Third Parties.

License Property
Licensor owns the right to grant immunities from suit to practice under certain United States Patents describing and claiming, inter alia, nucleic acid amplification processes known as 'homogeneous PCR. '

The Licensed Technology shall mean the Homogeneous PCR Technology and only so much of RT and RT-PCR Technology and Other Technology as is necessary for Licensee to practice the Homogeneous PCR Technology in conjunction with Licensees separately licensed PCR Technology.

The credit licensed is 'This test [ or assay] is performed pursuant to a license agreement with Licensor.'

Field of Use
Licensed Field shall mean the field of human in vitro diagnostics solely for the detection of genetic diseases, genetic pre-disposition to disease, agents associated with infectious diseases, cancer; and for tissue transplant typing, including testing performed on [ animal tissue intended for use in xenotransplantation; Parentage Determination; disease management; and clinical trials.

IPSCIO Record ID: 289170

License Grant
Licensor grants to the Swiss Licensee a worldwide, semi-exclusive license, without the right to sublicense, under the Licensor Licensed Patents to research, develop, make, have made, import, use, offer for sale and sell Licensor Licensed Products for use in the Field.

For the Licensor Transplantation Field License, Licensor grants a worldwide, non-exclusive license, without the right to sublicense, under  Licensoe Licensed Patents to research, develop, make, have made, import, use, offer for sale and sell Licensor Licensed Products for use in the Transplantation Field.

License Property
The patent rights relate to the human immunodeficiency virus (HIV).

Products means reagents, compositions or kits suitable for use in the Field or the Transplantation Field.

Field of Use
The Licensee intended application is for use in assays for the detection of nucleic acid sequences for use in in vitro diagnostics (excusing use in Blood Screening, but without limiting the effect of the Blood Screening Agreement.

Field means the commercial use of human in vitro diagnostic products that detect nucleic acid sequences of HIV. Expressly excluded from the Field are products in Blood Screening; and products specifically labeled or promoted for use in the Transplantation Field.

Transplantation Field means the commercial use of products that detect nucleic acid sequences for the screening of any biological materials intended for transfusion or transplantation, in each case from any donor, including autologous donors, other than the transfusion or transplantation of blood or its derivatives, components or replacements.

IPSCIO Record ID: 209527

License Grant
The Swiss Licensor grants a nonexclusive license in the territory, without the right to sublicense except to its current affiliates as follows
– under TAQ patent rights, to manufacture, but not to have manufactured, to use and to sell, strictly under Licensees or its Affiliates own Trademarks, Tradenames and/or label(s), TAQ Reagents; and
– under Polymerase patent rights, to manufacture, but not to have manufactured, to use and to sell, strictly under Licensees or its Affiliates own Trademarks, Tradenames and/or label(s), Licensor Patented Enzymes other than TAQ Reagents.
License Property
The Licensor Patented Enzymes licensed herein are
a)  native Taq DNA Polymerase, full length, unmutated
b)  recombinant Taq DNA Polymerase, full length, unmutated
c)  Tth DNA Polymerase, full length, unmutated (native or recombinant)

The Licensed Researched Products are any product, including but not limited to kits, which products consist of or contain a Licensed Product and may include all or some of the following components  buffers, nucleotides, enzymes, or other reagents or materials.

Licensed Application Products are Application Kits for a Licensed Application Field or reagents, components or other materials which are sold in connection with the sale of an Applications Kit for a Licensed Application Field by Invitrogen and which are adapted for or promoted or supported for use by customers in PCR Testing or nucleic acid sequencing, or RT AND RT-PCR in Application Fields.

Field of Use
The Application fields include Forensics and Human Identity Applications, Environmental Testing, Agricultural Plant, Animal Identity Testing and Positive Trait Breeding Applications and Food Testing.

IPSCIO Record ID: 27595

License Grant
The Company obtained a non-exclusive license to manufacture and sell products which are useful in polymerase chain reaction (PCR) process and which enable the user to perform in vitro parentage determination testing procedures.
License Property
The licensed product is a reagent kit manufactured by Licensee containing a thermostable DNA polymerase in combination with all such other reagents, enzymes or materials, whether packaged together or separately, as are necessary to perform a PCR-based assay for Parentage Determination Testing, which is covered by at least one Valid Claim within PCR Technology, and (a) which is marketed for use in Parentage Determination Testing and (b) bears a label as specified in in the agreement, setting forth the license limitations.  Licensor owns and has the right to grant licenses under the corresponding foreign counterpart patents and patent applications describing and claiming nucleic acid amplification techniques, including inter alia, a process known as the PCR process.

IPSCIO Record ID: 210375

License Grant
Pursuant to this License agreement between the Licensee and a Swiss third party, is the right to use a license for intellectual property exclusively licensed to this Licensor by the third party.   A license under the Amplification Patent Rights for automated performance of the PCR Process in the Research Field based on the capacity of thermal cyclers used, and a running-royalty component for each use of the process.  In consideration of Licensees payment of the license issuance fee and of royalties on sales of Licensed Research Products, the Third Party grants to Licensee, in the Territory, limited, nonexclusive rights, without the right to sublicense except to its current Affiliates
a)     Licensee is hereby authorized to sell, strictly under Licensees or it Affiliates own Trademarks, Tradenames and/or label(s), Licensed Research Products with a label conveying to end-user purchasers the running-royalty component of a license under the Amplification Patent Rights to use such Licensed Research Products in or with the PCR Process strictly for such purchasers own internal use in the Research Field in conjunction with a thermal cycler whose use is covered by the up-front fee component, either by payment to Licensor or as purchased, and
b)     Licensee may promote Licensed Research Products for such use in or with the PCR Process in the Research Field.  The up-front component of the PCR license for research must be obtained by the end user in order to have a complete license for the automated performance of the PCR Process.  The up-front component may be purchased from Licensor.  Alternatively, it may be obtained through the purchase of thermal cycler(s) or temperature cycling instrument(s) bearing a valid label conveying to purchasers the up-front  component of the license, that is, an Authorized Thermal Cycler.
License Property
The Authorized Thermal Cycler means a thermal cycler or temperature cycling instrument whose use in automated performance of the PCR Process in the Research Field and Application Fields is covered by the up-front fee component of a PCR Process license.  The up-front component of that license may be purchased from Licensor.  Alternatively, the up-front component of that license may be obtained through the purchase of thermal cycler(s)  or temperature cycling instrument(s) bearing a valid label conveying the up-front PCR Process license component.

The Swiss third party Patented Enzymes licensed herein are
a)  native Taq DNA Polymerase, full length, unmutated
b)  recombinant Taq DNA Polymerase, full length, unmutated
c)  Tth DNA Polymerase, full length, unmutated (native or recombinant)

The Licensed Researched Products are any product, including but not limited to kits, which products consist of or contain a Licensed Product and may include all or some of the following components  buffers, nucleotides, enzymes, or other reagents or materials.

Licensed Application Products are Application Kits for a Licensed Application Field or reagents, components or other materials which are sold in connection with the sale of an Applications Kit for a Licensed Application Field by Invitrogen and which are adapted for or promoted or supported for use by customers in PCR Testing or nucleic acid sequencing, or RT AND RT-PCR in Application Fields.

Field of Use
The Application fields include Forensics and Human Identity Applications, Environmental Testing, Agricultural Plant, Animal Identity Testing and Positive Trait Breeding Applications and Food Testing.

IPSCIO Record ID: 383575

License Grant
Licensor of Switzerland grants a non-exclusive and non-transferable license, without the right to sublicense, under the Licensed Patents in the Territory with the rights to
—  incorporate Licensed Products into Licensee’s Complete Diagnostic Kits,
—  make, offer to sell and sell such Complete Diagnostic Kits in the Licensed Field, and
—  convey with the sale of such Complete Diagnostic Kits the right to use the Complete Diagnostic Kits under the Licensed Patents in the Licensed Field. Licensee’s right to use Complete Diagnostic Kits includes the right to perform evaluations and validations of Complete Diagnostic Kits, but specifically does not include the right to use Complete Diagnostic Kits for the performance of diagnostic services or testing, except that Licensee may use Complete Diagnostic Kits as End Users.
License Property
Licensor owns or controls certain Licensed Patents relating to chemically modified thermostable DNA polymerases, also known as Hot Start Enzymes, for use in polymerase chain reaction, or PCR, technology.

Licensed Product means a chemically modified thermostable DNA polymerase, the manufacture, use or sale of which is covered by one or more Valid Claims of the Licensed Patents, sold by Licensor, directly or through its distributor, or made and sold by a supplier licensed to make and sell the same.

Complete Diagnostic Kit means a Licensee manufactured and trademarked kit covered by one or more Valid Claims of the Licensed Patents, not covered by any Licensor patents other than the Licensed Patents and dedicated for use for PCR in the Licensed Field, and which Licensee manufactured and trademarked kit is comprised of, at a minimum, the essential active reagents used in the practice of PCR for nucleic acid testing in the Licensed Field. For the avoidance of doubt and for the sake of clarification, ASRs, Analyte Specific Reagents, are not Complete Diagnostic Kits.

U.S. Patent No. 5,677,152 — Issued October 14, 1997 (process and kit claims only) Nucleic Acid Amplification Using a Reversibly Inactivated Thermostable Enzyme

U.S. Patent No. 5,773,258 — Issued June 30, 1998 (process and kit claims only) Nucleic Acid Amplification Using a Reversibly Inactivated Thermostable Enzyme

U.S. Patent No. 6,127,155—Issued October 3, 2000 (reaction mixture claims only) Stabilized Thermostable Nucleic Acid Polymerase Compositions Containing Non-Ionic Polymeric Detergents

Field of Use
The Licensed Field means the field of use consisting of products or processes for the measurement, observation or determination of a disease, disease state or genetic predisposition to a disease, by detecting, quantitating, distinguishing and/or monitoring nucleic acids in samples of material originating from a human being for the medical management for that human being, but excluding
—  human identity testing, and
—  the following human disease targets Hepatitis A Virus, Hepatitis B Virus, Hepatitis C Virus, Human Immunodeficiency Virus, Human Papilloma Virus and Parvovirus B19; provided, however, that the said exclusions for the Human Papilloma Virus and Parvovirus B19 disease targets shall be limited to 3 years from the Effective Date after which time the Human Papilloma Virus and Parvovirus B19 disease targets shall be included within the Licensed Field subject to the royalty and other terms and conditions of this Agreement.

IPSCIO Record ID: 203279

License Grant
Licensor grants to Licensee under the Real-Time Apparatus Patent Rights a personal, non-transferable, non-exclusive license in the Fields and in the HIVD Field, in the Territory, to make, but not have made, use and import Licensed Real-Time Thermal Cyclers, and to offer to sell, and sell the same to end users solely under Licensee’s name and trademarks but not otherwise to manufacture for, or sell or distribute to or for, thermal cycler instrument suppliers.

Licensor grants to Licensee under the Real-Time Apparatus Patent Rights a personal, non-transferable, non-exclusive license in the Fields and in the HIVD Field, in the Territory, to make, but not have made, use and import add-on and substitute components, modules, computer hardware and software for Licensed Real-Time Thermal Cyclers, and to offer to sell, sell and distribute the same only to end-user owners of Licensed Real-Time Thermal Cyclers purchased from Licensee.

Licensor grants to Licensee under the Amplification System Patent Rights a personal, non-transferable, non-exclusive right to convey to end-user customers, including Licensee itself, of Licensee’s Licensed Real-Time Thermal Cyclers a non-exclusive license to use such Licensed Real-Time Thermal Cyclers in the HIVD Field in the Territory.

License Property
The licensed property includes patents describing and claiming automated thermal cycling apparatus capable of performing nucleic acid amplification and detecting that amplification in real time, and apparatus claims in corresponding counterpart patent applications in other countries.  And a US patent describing and claiming an amplification system comprising polymerase chain reaction (PCR) reagents and a thermal cycler programmed to carry out a PCR protocol.

Licensed Real-Time Thermal Cycler shall mean a Real-Time Thermal Cycler as defined below, where the system or its manufacture, importation, offer for sale, sale or use would, except for the rights granted under this Agreement, infringe at least one Valid Claim within the Real-Time Apparatus Patent Rights.

Field of Use
The Fields shall mean research, and all applied fields other than human in vitro diagnostic applications for the clinical management of patients, which are specifically excluded.

The HIVD Field shall mean the field of human in vitro diagnostic applications for the clinical management of patients, excluding any human in vitro diagnostic applications for the clinical management of patients involving the detection, quantitation, genotyping or characterization of human immunodeficiency virus (HIV) or hepatitis C virus (HCV).

IPSCIO Record ID: 291119

License Grant
Licensor offers to the polymerase chain reaction (PCR) process users commercial and non commercial license rights under these patents and patent applications for automated performance of the PCR process for research and certain other fields that include, inter alia, an up-front fee component based on the capacity of thermal cyclers used to perform the process.

Licensor grants to the Thermal Cycler Supplier the following personal, non-transferable, non-exclusive rights in the Territory under the Amplification Patent Rights
—  Thermal Cycler Supplier is hereby authorized to sell and distribute to end users under Thermal Cycler Suppliers name and trademarks the specific thermal cyclers and temperature cycling instruments, i.e. the Smart Cycler(R) System, Smart Cycler(R) XC System and GeneXpert(TM) Prototype, in the configurations described) and any thermal cycler or temperature cycling instrument containing one or more I-CORE(TM) modules manufactured by Thermal Cycler Supplier, but not otherwise to sell or distribute to thermal cycler suppliers, with a label conveying to end users, including Thermal Cycler Supplier itself, in the Fields the up-front rights of PCR process licenses under the Amplification Patent Rights, that  is, with an Authorized Thermal Cycler label; and
—  Thermal Cycler Supplier may advertise and promote such thermal cyclers and temperature cycling instruments and so labeled as Authorized Thermal Cyclers for PCR.

Licensor grants to Thermal Cycler Supplier a personal, non-transferable, non-exclusive right under the Amplification System Patent Rights to convey to end-user customers, including Thermal Cycler
Supplier itself, of Thermal Cycler Suppliers Authorized Thermal Cyclers a non-exclusive license to use the same in the Fields in the Territory.

License Property
The patents include
—  describing and claiming gene amplification processes including, among others, a process known as the polymerase chain reaction (PCR) process, which are owned by Roche Molecular Systems, Inc., and amplification process claims in corresponding counterpart patents and patent applications in other countries, and,
—  automated apparatus suitable for performing the PCR process, and apparatus claims in corresponding counterpart patents and patent applications, and,
—  improvements in thermal cycling apparatus for- PCR, including a pressing heated cover, and corresponding counterpart patents and patent applications in other countries,and,
—  describing and claiming an amplification system comprising PCR reagents and a thermal cycler programmed to carry out a PCR protocol,and,
—  claim automated performance of the PCR process using certain programmed thermal cyclers.
Field of Use
Licensee has received a license from Licensor for thermal cycling limited to the fields of life sciences research, industrial testing, aspects of identity testing and forensics. Licensee will require a license for thermal cycling in additional fields, such as clinical diagnostics.

Licensee's I-CORE module is a low-cost, self-contained instrument for performing and continuously monitoring chemical reactions such as PCR. Each module can optically measure up to four separate reactions. The I-CORE module rapidly and accurately controls the heating and cooling of the sample, which allows for fast reactions and accurate results. I-CORE modules can be configured into a variety of DNA analysis instruments or can be sold to manufacturers of large clinical and research instruments for incorporation into their instrument platforms. The I-CORE module is a key component in both our Smart Cycler and GeneXpert families of products.

The discovery of PCR and other amplification techniques dramatically improved the turnaround and time sensitivity of DNA probe assays. PCR acts on a target molecule to generate a million or more copies of the target nucleic acid sequence through repeated cycles of heating and cooling. Originally, this thermal cycling was accomplished by manually moving the sample between hot and cold water baths. Detection is typically accomplished by tagging the DNA with fluorescent dyes and manually placing the amplified sample on a gel to read it. Later, thermal cyclers were developed to automate the heating and cooling functions, and fluorimeters were developed to read the fluorescent signal.

Fields shall mean research and development, quality assurance or control, environmental testing, plant diagnostics, identity testing (other than parentage testing for humans) and forensics.  The Fields specifically exclude human and veterinary diagnostics.

IPSCIO Record ID: 372602

License Grant
For the Thermal Cycling Instrument; Algorithm; Pressing Heated Cover Patent Rights; and, Progeny Patent Rights, Licensor grants to under the Thermal Cycling Instrument Patent Rights, the Algorithm Patent Rights, Progeny Patent Rights, and the Pressing Heated Cover Patent Rights a personal, non-transferable, non-exclusive license in the Fields and in the Territory to make but not have made, to use and to sell the following to end users solely under Thermal Cycler Suppliers name and trademarks but not otherwise to manufacture for, or sell or distribute to, thermal cycler suppliers.

For the Amplification Patent Rights, Licensor grants to Thermal Cycler Supplier the following personal, nontransferable, non-exclusive rights in the Territory under the Amplification Patent Rights.

For the Amplification System Patent Rights and Automated Method Patent Rights, Licensor grants to Thermal Cycler Supplier a personal, non-transferable, non-exclusive right under the Amplification System Patent Rights and the Automated Method Patent Rights to convey to end-user customers of Thermal Cycler Suppliers Thermal Cyders and Temperature Cycling Instruments sold or distributed solely under Thermal Cycler Suppliers name and trademarks a non-exclusive license to use the same in the Fields in the Territory.

License Property
Licensor has the power to convey certain limited rights for research and in certain other fields under the now expired Patents describing and claiming gene amplification processes including, among others, a process known as the polymerase chain reaction (PCR) process.

Licensor owns Patents describing and claiming automated apparatus suitable for performing the PCR process, and apparatus claims in corresponding counterpart patents.

Licensor owns Patents describing and claiming improvements in thermal cycling apparatus for PCR, including methods comprising calculating sample temperatures ( algorithm claims) and a pressing heated cover, and corresponding counterpart patents and patent applications in other countries.

Licensor owns Patent describing and claiming an amplification system comprising PCR reagents and a thermal cycler programmed to carry out a PCR protocol.

Licensor owns patents and applications that claim automated performance of the PCR process using certain programmed thermal cyders.

Field of Use
The Fields shall mean research and development, quality assurance or control, environmental testing, food testing, plant diagnostics, identity testing ( other than parentage testing for humans) and forensics. The Fields specifically exclude human and veterinary diagnostics.

Product relates to Polymerase Chain Reaction (PCR) and instruments (thermal cycler) for performing PCR.
Polymerase chain reaction is a method widely used to rapidly make millions to billions of copies of a specific DNA sample, allowing scientists to take a very small sample of DNA and amplify it to a large enough amount to study in detail.

IPSCIO Record ID: 237263

License Grant
Licensor grants a non-exclusive, non-transferable license, without the right to sublicense, to Licensed Patents and Licensed Know-How to use the Instrument solely for the internal research and development activities.

Licensor grants a world-wide, non-exclusive, nontransferable license, without the right to sublicense, to make, use, sell, off er for sale and import Licensed Products for genotyping HAPâ„¢ Markers in all fields other than human and animal infectious diseases. Excluded from this grant is the right to make, sell, offer for sale or import the Licensors ProbeTecâ„¢ ET.

License Property
Licensed Know-How shall mean Licensors know-how related to Licensed Patents, the ProbeTecâ„¢ ET, and custom software for the ProbeTecâ„¢ ET. Licensed KnowHow shall also include, upon written request from Licensee, Licensors know-how necessary in the design and development of assays that utilize ProbeTecâ„¢ ET.

The patents include, but are not limited to, Nucleic Acid Target Generation,  Oligonucleotides for amplification and detection of hemochromatosis, and, Methods for detecting nucleic acid sequence variations.

Licensed Products shall mean any device, instrument, service, kit, composition of matter, material, product or component thereof that utilizes Licensed Know-How.

Instrument shall mean the Licensors ProbeTecâ„¢ ET installed in Licensees HAPâ„¢ Typing facility in New Haven, CT.

HAPâ„¢ Marker shall mean a polymorphism or any ordered combination of two or more polymorphisms present at a locus on a single chromosome that is contained in the Licensee HAPâ„¢ Database during the term of this Agreement or that is discovered from any gene where such discovery was made solely by employees of Licensee or others acting on behalf of Licensee, or, jointly by employees of Licensees or others acting on its behalf and employees of a HAPâ„¢ Partner or others acting on its behalf or for which a HAPâ„¢ Partner requests Licensee to develop genotyping assays or provide genotype data.

Licensor ProbeTecâ„¢ ET shall mean the clinical platform for infectious disease testing owned by Licensor using Strand Displacement Amplification Technology or SDA Technology and real time detection means.

LICENSED PATENTS

1. US Patent No. 5,270,184, entitled 'Nucleic Acid Target Generation'

2. US Patent No. 5,422,252, entitled 'Simultaneous Amplification of Multiple Targets'

3. US Patent No. 5,455,166, entitled 'Strand Displacement Amplification'

4. US Patent No. 5,536,649, entitled 'Decontamination of Nucleic Acid Amplification Reactions'

5. US Patent No. 5,547,861, entitled 'Detection of nucleic acid amplification'

6. US Patent No. 5,648,211, entitled 'Strand Displacement Amplifcation Using Thermophilic Enzymes'

7. US Patent No. 5,624,825, entitled 'Simultaneous Amplification of Multiple Targets'

8. US Patent No. 5,691,145, entitled 'Detection of nucleic acids using G-quartets'

9. US Patent No. 5,712,124, entitled 'Strand Displacement Amplification'

10. US Patent No. 5,736,365 entitled 'Multiplex nucleic acid amplification'

11. US Patent No. 5,744,311 entitled 'Strand displacement amplification using thermophilic enzymes'

12. US Patent No. 5,840,487, entitled 'Internal controls for isothermal nucleic acid amplification reactions'

13. US Patent No. 5,863,736, entitled 'Method, apparatus and computer program products for determining quantities of nucleic acid sequences in samples'

14. US Patent No. 5,888,739, entitled 'Detection of nucleic acids using G-quartets and Itetraplexes'

15. US Patent No. 5,916,779, entitled 'Strand displacement amplification of RNA
targets'

16. US Patent No. 5,919,630, entitled 'Detection of nucleic acids by fluorescence quenching'

17. US Patent No. 5,928,869, entitled 'Detection of nucleic acids by fluorescence quenching'

18. US Patent No. 5,935,791, entitled 'Detection of nucleic acids by fluorescence quenching'

Field of Use
Licensee creates personalized medicines through the integration of pharmacogenomics into drug development and marketing.  The fields of human and animal infectious diseases are excluded from this license.

IPSCIO Record ID: 289169

License Grant
Licensor grants to the Swiss Licensee a worldwide, semi-exclusive license, without the right to sublicense, under the Licensor Licensed Patents to research, develop, make, have made, import, use, offer for sale and sell Licensor Licensed Products for use in the Field.

For Licensor Transplantation Field License, Licensor grants a worldwide, non-exclusive license, without the right to sublicense, under Licensor Licensed Patents to research, develop, make, have made, import, use, offer for sale and sell Licensor Licensed Products for use in the Transplantation Field.

For Licensor Future HGV Sequence Patent Rights, Licensor grants to a non-exclusive option to obtain one or more non-exclusive, worldwide licenses, or sublicenses, as the case may be, with a right to sublicense to Licensee Affiliates only, under the Licensor Future HGV Sequence Patent Rights, to make, have made, use, import, offer for sale and sell Licensor Licensed products.

License Property
Licensed Patents means the Licensor Licensed Patents and the Licensee Optioned Patents.

Products  means reagents, compositions or kits suitable for use in the Field or the Transplantation Field.

The patents include NANBV Diagnostics and Vaccines;  Heteroduplex Tracking Assay for Gene Typing; and, Polynucleotide Probes Useful for Screening for HCV.

Both Parties currently own or control certain patent rights relating to the hepatitis C virus (HCV).

Field of Use
The Licensees purpose is for use in assays for the detection of nucleic acid sequences for use in in vitro diagnostics, excluding use in Blood Screening, but without limiting the effect of the Blood Screening Agreement.

Field means the commercial use of human in vitro diagnostic products that detect nucleic acid sequences of HCV. Expressly excluded from the Field are products in Blood Screening; products specifically labeled or promoted for use in the Transplantation Field.

Transplantation Field means the commercial use of products that detect nucleic acid sequences for the screening of any biological materials intended for transfusion or transplantation, in each case from any donor, including autologous donors, other than the transfusion or transplantation of blood or its derivatives, components or replacements.

IPSCIO Record ID: 203394

License Grant
For the Exclusive License Grant, Licensor grants an exclusive, worldwide license under the Licensed Patents in the Exclusive Field, for use , to make, have made, use, offer to sell, sell and import Licensed Products and Licensed Processes.

For the Non-Exclusive License Grant, Licensor grants a non-exclusive, worldwide license under the Licensed Patents in the Non-Exclusive Field, with the right to sublicense as herein provided to make, have made, use, offer to sell, sell and import Licensed Products or Licensed Processes.

For Sublicensing, Licensee shall have the right to sublicense the rights granted solely for use with Licensees Hybrigel Technology to a Sublicensee.

License Property
The Licensor has proprietary acrydite chemistry technology described and claimed in the Licensed Patents. The Technology expressly includes the Licensed Patents, Licensed Products, and the Licensed Process.

Hybrigel Technology shall mean Licensees proprietary electrophoretic hybridization technology that relies on gel-based capture technology and that is  useful in the isolation of nucleic acid and the diagnosis of disease as disclosed in the U.S. patents, and foreign patents relating thereto.

Field of Use
The exclusive field means nucleic acid isolation from human stool samples for the purpose of screening, detecting or diagnosing colorectal cancer.

The non-exclusive field means any field, other than the exclusive field, in which the Hybrigel Technology is employed.

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