Royalty Report: Drugs, Diagnostic, Test/Monitoring – Collection: 291168

License Grant

Licensor hereby grants to Licensee a worldwide, exclusive (even as to Licensor), royalty-bearing license in the Field, under the Licensor Patent Rights, the Licensor ownership interest in Joint Patent Rights and Joint Inventions, Licensor Know-How and Licensor Inventions to make, have made, have used, sell, have sold, offer for sale, and import Licensed Products in the Field throughout the world. This grant includes the right for Licensee to grant sublicenses to Licensee Affiliates without consent, either directly or through one or more intermediaries.

License Property

Licensed Product shall mean the component of an in vitro diagnostic device containing Biological Material for use within the Field, the manufacture, use or sale of which, but for the license granted herein, would infringe at least one Valid Claim of Licensor Patent Rights or Joint Patent Rights in any country. For purposes of clarity, component means the consumable portion of the diagnostic device comprising  biologic material (e.g. antibody) and inert material (e.g. plastic vessel) but does not include the hardware (e.g., fluorometer) or sample acquisition device (e.g., nasal swab) used with the component. In addition, Licensed Product includes any Biological Material whose development or manufacture used or uses Licensor Know How.

Licensor Patent Rights shall mean  (a) the claims of the patent and patent applications listed hereto; (b) all patent applications heretofore or hereafter filed or having legal force in any country owned by or licensed to Licensor (and which Licensor has the right to sublicense to Licensee) or to which Licensee otherwise acquires sublicenseable rights, which claim a composition (including but not limited to, Biological Materials), method or process, which are necessary to practice any process or method claimed in the patent and patent applications in the Field or are necessary, to make, have made, have used, sell, have sold, offer for sale, and import any Licensed Product, together with any and all patents that have issued or in the future issue therefrom, including utility, model and design patents and certificates of invention, and (c) patents and patent applications claiming Licensor Inventions; (d) patents and patent applications added; and (e) all divisionals, continuations, continuations-in-part, continued prosecution applications, requests for continued examination, reissues, renewals and extensions of the patents and patent applications and any foreign counterparts to those patents and patent applications, to the extent and only to the extent that Licensor has or hereafter will have the right to grant licenses and sublicenses thereunder.

US 5,886,151 – Candida albicans integrin-like protein
US 6,346,411 – DNA encoding–candida albicans integrin-like protein
US 6,774,219  – Candida albicans gene, integrin-like protein, antibodies, and methods of use

Joint Patent Rights shall mean (a) all claims of patents and patent applications having legal force in any country which claim a Joint Invention, together with any and all patents that issue therefrom, including utility, model and design patents and certificates of invention, and (b) all divisionals, continuations, continuations-in-part, continued prosecution applications, requests for continued examination, reissues, renewals, and extensions or additions to any such patents and patent applications and any foreign counterparts to those patents and patent applications.

Joint Invention shall mean an Invention made or conceived jointly by one or more employees or others acting on behalf of Licensee and by one or more employees or others acting on behalf of Licensor during and in the course of a Development Collaboration Program or in the course of work done under the Prior Agreements. The parties agree that Joint Inventions shall be owned jointly by Licensor and Licensee in accordance with US law, whereby each joint owner shall have the right to use, pledge, practice, license, assign and otherwise transfer and enjoy its rights to and interests in joint inventions without permission of or accounting to the other joint owner(s)), subject to the licenses granted.

Field of Use

Field shall mean in vitro diagnostic devices containing Biological Material for use in detection of Targets in humans and in food.  'Target' shall mean a given species and genus of microorganism detected using Licensed Product. (Staphylococcus aureus and Staphylococcus epidermidis are two distinct Targets.)

License Grant

Licensor hereby grants to Licensee a worldwide, exclusive (even as to Licensor), royalty-bearing license in the Field, including the right to grant sublicenses, under the Licensor Patent Rights, the Licensor ownership interest in Joint Patent Rights, Licensor Know-How and Licensor Inventions to make, have made, have used, sell, have sold, offer for sale, and import Licensed Products in the Field. Licensee shall not make, use, sell market or promote Licensed Product for use outside the Field. Where the Licensor Patent Rights are themselves licensed from a Third Party, Licensors license shall take the form of a sublicense.

License Property

Licensor Patent Rights shall mean

(a) the patent and patent applications listed, which shall be updated by Licensor as appropriate from time to time, all patent applications heretofore or hereafter filed or having legal force in any country owned by or licensed to Licensor or to which Licensor otherwise acquires rights, which claim a composition, method or process for biologics or technology, including, but not limited to, cells, cell lines, genes, peptides and proteins which are necessary or useful to practice any process or method related to, or to make, use or sell any Licensed Product in the Field, including Inventions, together with any and all patents that have issued or in the future issue therefrom, including utility, model and design patents and certificates of invention, and

(b) all divisionals, continuations, continuations-in-part, continued prosecution applications, requests for continued examination, reissues, renewals, extensions or additions to any such patents and patent applications; all of Section (a) and this Section (b) of this paragraph to the extent and only to the extent that Licensor hereafter will have the right to grant licenses, immunities or other rights thereunder, and any foreign counterparts to those patents and patent applications, and currently consisting of the Licensor Patent Rights described hereto.

(c) Patents and patent applications licensed to Licensor by a Third party or to which Licensor otherwise acquires rights after the effective date of this Agreement shall become part of the Licensor Patent Rights to the extent that Licensor has the right to grant licenses to Licensee in the Field and only to the extent that Licensor is able to do so on economic terms substantially similar to the economic terms of its primary licenses from third parties as of the effective date.

Licensee Patent Rights
1. 'Polypeptides and Polynucleotides From Coagulase-Negative Staphylococci'
U.S. provisional application 60/098,443 filed 8-31-98 and refiled to add additional subject matter as 60/117,119 on 1-25-99. These provisional applications were converted to U.S. application 09/386,962 filed August 31, 1999, and filed as PCT/US99/19728.  (Licensed exclusively to Licensor by The Texas A&M University System (TAMUS) and BioResearch Ireland (BRI). TAMUS and BRI reserve the right to use this technology for noncommercial research and educational purposes. The U.S. Government holds certain rights under 37 CFR 410.14. No license is granted under any service mark or trademark of TAMUS. The name of TAMUS may not be used by Licensee except to state that it is a sublicensee of TAMUS).

2. 'Multicomponent Vaccines'
U.S. provisional Application 60/098,439 filed 8-31-98. This was converted to U.S. application 09/386,959 and PCT/US99/19727 on August  31, 1999. (Licensed exclusively to Licensee by The Texas A&M University System (TAMUS) and Bioresearch Ireland (BRI). TAMUS and BRI reserve the right to use this technology for noncommercial research and educational purposes. The U.S. Government holds certain rights under 37 CFR 410.14.  No license is granted under any service mark or trademark of TAMUS. The name of TAMUS may not be used by Licensee except to state that it is a sublicensee of TAMUS).

3. 'Fibrinogen Binding Proteins From Staphylococcus aureus'
U.S. provisional application filed 11-26-97 as 60/066,815 abandoned in favor of 'Extracellular Matrix-Binding Proteins From Staphylococcus aureus to add additional information, filed 8-31-98 as 60/098,427 converted 11-25-98 to 09/200,650. PCT /US98/25246 was filed 11-25-98.  (Licensed exclusively to Licensee by The Texas A&M University System (TAMUS) and BioResearch Ireland (BRI). TAMUS and BRI reserve the right to use this technology for noncommercial research and educational purposes. The U.S. Government holds certain rights under 37 CFR 410.14. No license is granted under any service mark or trademark of TAMUS. The name of TAMUS may not be used by Licensee except to state that it is a sublicensee of TAMUS).

4. 'Fibronectin Binding Protein Compositions and Methods of Use'
U.S. provisional application filed 1-21-97 as 60/036,139, converted 1-21-98 to 09/010,317; PCT filed 1-21-98 as PCT/US98/01222. (Licensed  exclusively from TAMUS through the AM Fund I to Licensor. TAMUS reserves the right to use this technology for noncommercial research and education purposes. . The U.S. Government holds certain rights under 37 CFR 410.14. No license is granted under any service mark or trademark of TAMUS. The name of TAMUS may not be used by Licensee except to state that it is a sublicensee of TAMUS.)

5. 'Collagen Binding Protein Compositions and Methods of Use'
U.S. provisional application 60/017,678 filed 5-16-96 converted 5-14-97 to 08/856,253; PCT/US97/08210 filed 5-14-97. (Licensed exclusively from TAMUS through the AM Fund I to Licensor. TAMUS reserves the right to use this technology for noncommercial research and education purposes. The U.S. Government holds certain rights under 37 CFR 410.14. No license is granted under any service mark or trademark of TAMUS. The name of TAMUS may not be used by Licensee except to state that it is a sublicensee of TAMUS.)

6. 'S. aureus Fibrinogen Binding Protein Gene'
U.S. application 08/293,728 filed 8-22-94, issued as U.S. patent 6,008,341 on 12-28-99; Div. App. 09/421,868 was filed 10-19-99 and another divisional application was filed 10-5-00. (Licensed exclusively to Licensor by BRI. BRI reserves the right to use this technology for noncommercial research and educational purposes.)

7. 'MHC II Analog From Staphylococcus aureus'
U.S. application filed 5-24-94 as 08/248,021 and issued 7-15-1997 as U.S. patent 5,648,240. (Licensed exclusively from TAMUS through the AM Fund I to Licensor. TAMUS reserves the right to use this technology for noncommercial research and education purposes. The U.S. Government holds certain rights under 37 CFR 410.14. No license is granted under any service mark or trademark of TAMUS. The name of TAMUS may not be used by Licensee except to state that it is a sublicensee of TAMUS.)

8. 'Fibronectin Binding Peptide'
Filings SE 90 2617 filed 8-10-90; U.S. 846,995 filed 6-8-92 now abandoned; U.S. 55,783 filed 5-3-93 now abandoned, U.S. 234,622 filed 4-28-94 issued as U.S. patent 5,440,014 on 8-8-95. (Nonexclusively from Magnus Hook.)

9. 'Fibronectin Binding Protein As Well As Its Preparation'
Filings SE 89 1687 filed 5-11-89; U.S. 520,808 parent filed 5-9-90 issued as U.S. patent 5,175,096 on 12-29-92; U.S. divisional 974,181 filed 11-10-92 now abandoned; U.S. continuation 340,458 filed 11-14-94 issued as U.S. patent 5,652,217, 'Fibronectin Binding Protein' on 7-29-97; U.S. divisional 725,492 filed on 10-4-96 issued as U.S. patent 5,840,846, 'Fibronectin Binding Protein As Well As Its Preparation' on 11-24-98. (Nonexclusively from Magnus Hook.)

10. 'Fibronectin Binding Protein As Well As Its Preparation'
Filings SE 87 2272 filed 6-1-87; U.S. parent 201,028 filed 6-1-88 now abandoned; U.S. continuation 746,087 filed 8-12-91 now abandoned; U.S. continuation 937,817 filed 1-22-93 issued as U.S. patent 5,320,951 on 6-14-94; U.S. divisional 259,000 filed 6-13-94 issued as U.S. patent 5,571,514 'Fibronectin Binding Protein As Well As Its Preparation' on 11-5-96; U.S. divisional 729,767 filed 10-7-96 issued as U.S. patent 5,770,702 'Fibronectin Binding Protein As Well As Its Preparation' on 6-23-98. (Nonexclusively from Magnus Hook.)

11. 'Collagen Binding Protein As Well As Its Preparation'
U.S. application 861,804 filed 8-21-92 now abandoned; U.S. continuation 447,031 filed 5-22-95 issued as U.S. patent 5,851,794 on 12-22 98. (Nonexclusively from Magnus Hook.)

12. 'Method for Prophylactic Treatment of the Colonization of a S. aureus Bacterial Strain By Cell Surface Protein With Fibronectin and Fibrinogen Binding Ability'
Filings SE 8402938 filed 5-30-84; U.S. parent 840,580 filed 1-21-86, now abandoned; U.S. continuation 801,593 filed 12-5-91 and issued as U.S. Patent 5,189,015 on 2-23-93. (Nonexclusively from Magnus Hook.)

13. 'Bacterial Cell surface Protein with Fibronectin, Fibrinogen, Collagen and Laminin Binding Ability, Process for the Manufacture of the Protein and Prophylactic Treatment'
Filings U.S. 06/840,580 filed as PCT/SE85/00227 on 5-30-85; U.S. continuation 07/801,593 filed 12-5-91, now U.S. Patent 5,189,015; U.S. divisional 07/977,151 filed 11-16-92; U.S. continuation 08/118,697 filed 9-10-93 and issued as U.S. Patent 5,980,908 on 11-9-99. (Nonexclusively from Magnus Hook.)

Licensed Product shall mean active human vaccines containing MSCRAMM(TM) proteins derived from S. aureus or S. epidermidis, within the Field the manufacture, use or sale of which, but for the license granted herein, would infringe at least one Valid Claim of Licensor Patent Rights, or utilize Licensor Know-How.

Field of Use

Field shall mean human vaccines for containing MSCRAMM(TM) proteins derived from S. aureus and S. epidermidis for the prevention of S. aureus and S. epidermidis infections, provided, however that the Field shall exclude the use of MSCRAMM(TM) proteins or such vaccines to stimulate antibody titer in plasma donors whose plasma is collected for the purpose of developing and commercializing products containing plasma derived immunoglobulin.

License Grant

University hereby grants and Licensee hereby accepts an Exclusive license under the Licensed Patents and Licensed Materials to make, have made, import, use, lease, sell and offer for sale and otherwise commercialize and exploit Licensed Products in the Licensed Territory, and practice any method process or procedure within the Licensed Patents in the Licensed Territory.  Said license is Exclusive, including the right to sublicense  in the Licensed Field of Use for a term commencing as of July 1, 1997 and ending on the expiration of the last to expire of the Licensed Patent(s).  University shall have the right to practice the Invention(s) and use the Technology for its own bona fide research, including sponsored research and collaborations. University shall have the right to publish any information included in Licensed Materials and Licensed Patent(s).

License Property

Licensed Product(s) means any product or part thereof in the Licensed Field of Use, the manufacture, use, or sale of which

(a)I s covered by a valid claim of an issued, unexpired Licensed Patent(s) directed to the Invention(s). A claim of an issued, unexpired Licensed Patent(s) shall be presumed to be valid unless and until it has been held to be invalid or unenforceable by a final judgment of a court of competent jurisdiction from which no appeal can be or is taken or is disclaimed, or rejected or found invalid or unenforceable in a reissue application or re- examination proceeding or otherwise;
  
(b) Is covered by any claim being prosecuted in a pending application directed to the Invention(s); or

(c) Incorporates any of the Licensed Materials.

Licensed Patent(s) means any (i) U.S. patent application Serial Number 270,631 filed July 1, 1994 (issued on July 22, 1997 as U.S. Patent Number 5,650,135), (ii) all divisions, substitutions, and continuations in whole or part of any of the preceding, (iii) all foreign patent applications corresponding to or claiming priority from (including International Application Number PCT/US95/15040 and all national applications claiming priority therefrom), and (iv) all U.S. and foreign patents issuing on any of the preceding, including patents of addition, reexaminations, reissues and extensions.

5,650,135 – Non-invasive localization of a light-emitting conjugate in a mammal

Licensed Materials means those biological materials listed, and such other agreed materials as University may provide to Licensee during the term of this Agreement, which shall be added.
– Individual components of light systems (Vectors, genes and gene fragments)
– Bacteria
– Tumor cells
– Indicator cells for HIV
– Transgenic mouse lines

Field of Use

Licensed Field of Use means all uses.

License Grant

Licensor grants a non-exclusive license, without the right to grant or authorize sublicenses, under the Licensed Patent Rights to develop and perform the Services solely at the Facilities, and to use, and offer for sale and sell the Services to Third Parties solely in the Territory.

License Property

Licensed Patent Rights shall mean, collectively, Licensors rights in all patent applications, including provisional patent applications, heretofore or hereafter filed in the Territory;  all patents that have issued or in the future issue in the Territory from any of such patent applications, including without limitation utility models, design patents and certificates of invention; and,  all divisionals, continuations, continuations-in-part, substitutions, reissues, renewals, extensions, restorations or additions to any such patent applications and patents, in each case that claim, and only to the extent they claim, compositions, uses, methods, equipment, devices and other technology for the use of cell-free fetal nucleic acids from biological samples, including plasma, serum, whole blood and urine, obtained from pregnant women for prenatal diagnostic testing by whole genome massively parallel sequencing, used in the performance of the MaterniT21 PLUS Test by Licensors Laboratories as of the Effective Date, or any improvements to such test; provided, however, that the Licensed Patent Rights shall exclude any of the foregoing licensed by a University to Licensor under another agreement.

MatemiT21 PLUS Test shall mean the laboratory-developed test for the non-invasive testing of a plasma sample from a pregnant woman for the detection and diagnosis of prenatal aneuploidy and/or fetal abnormalities by use of cell-free fetal nucleic acids, currently known as the MatemiT21 PLUS test, as performed by Licensors Laboratories.

Field of Use

The Field shall mean the non-invasive detection and diagnosis of prenatal aneuploidy and fetal abnormalities by use of cell-free fetal nucleic acids from biological samples, including plasma, serum, whole blood and urine, obtained from pregnant women.
The MaterniT® 21 PLUS test analyzes genetic information that enters your bloodstream from the placenta.  It analyzes the amount of chromosome 21 in fetal DNA picked up from the maternal blood sample. It can detect an increased amount of chromosome 21 material which is associated with trisomy 21 (Down syndrome). It is completely non-invasive as it only involves a blood sample from the mother.