Category: Technology Licenses
Created On: 2022-04-28
Record Count: 9
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: 294017
Licensee hereby grants, on behalf of itself and its Affiliates, to Licensor, effective on the Effective Date, a royalty-free, non-exclusive license, with the right to sublicense, (i) under the Licensee Technology to the extent necessary for Licensor to perform the Licensor Development Activities and (ii) under any Licensee Improvement Manufacturing Patent Rights for use other than for the Manufacture, Development and/or Commercialization of the Products in the Field in the Territory.
Product means any Hydrocodone Product or Combination Product.
Hydrocodone Product means any pharmaceutical product containing Hydrocodone as its sole Active Ingredient that is in a formulation containing the Licensee Technology and which is Developed, Manufactured and Commercialized pursuant to, and in accordance with, this Agreement.
Combination Product means any pharmaceutical product comprised of Hydrocodone and any non-opioid agonist drug as the Active Ingredients. For purposes of clarity, S-297995 (also known as Naldemedine) is a non-opioid agonist drug.
S-297995 means (5R, 14S)-17-(Cyclopropylmethyl)-6, 7-didehydro-4,5-epoxy-3 ,6, 14-trihydroxy-N-[1-methyl-l-(3-phenyl-1,2,4-oxadiazol-5-yl)ethyl]morphinan-7-carboxamide Monotosylate including any metabolites, prodrugs, solvates (including hydrates), esters, salts, stereoisomers, racemates, tautomers and polymorphs (including crystal forms), of such compound.
Licensor Technology means the (a) Licensor Know-How and the Licensor Patent Rights, including Licensor Core Technology (b) the Licensor Core Technology Improvements, and (c) all intellectual property rights therein.
Licensor Patent Rights means any Patent Right that Licensor or its Affiliates Controls on the Effective Date or that comes into the Control of Licensor or its Affiliates during the Term (other than any Patent Rights which are Licensee Patent Rights), to the extent that such Patent Right is necessary or useful to Develop, Manufacture, or Commercialize in the Territory, the Products in the Field, including any method of making the Products, any composition or formulations of the Products, or any method of using or administering the Products provided that Licensee Patent Rights excludes any Patent Rights to the extent relating to an Licensee API. The Licensor Patent Rights existing on the Effective Date are set forth.
8,298,581 – Matrix compositions for controlled delivery of drug substances
8,563,038 – Formulations and methods for the controlled release of active drug substances
Licensor Core Technology means, to the extent covered by any Licensor Patent Rights or Licensor Know-How, in each case, Controlled by Licensor and its Affiliates as of the Effective Date, (i) any abuse-deterrent drug delivery system, (ii) the formulation of products for which any such abuse-deterrent drug delivery system is used and/or (iii) manufacturing of products containing any such abuse-deterrent drug delivery system.
Licensor Core Technology includes the Licensor Patent Rights and Licensor Know-How, in each case, Controlled by Licensor and its Affiliates as of the Effective Date to the extent covered by clause (i), (ii) and/or (iii) above. Notwithstanding anything herein to the contrary, in the event there is a dispute as to whether anything in clause (i), (ii) and/or (iii) above was covered by any such Licensor Know-How as of the Effective Date, Licensor shall have the burden of proof with respect to establishing that it was so covered.
Generic Product means, on a country-by-country basis, any pharmaceutical product that (a) is sold by a Third Party that is not an Affiliate or Sublicensee of Licensee under a marketing authorization granted by a Regulatory Authority to a Third Party and (b) results from (i) an abbreviated new drug application including any amended or successor abbreviated route of approval thereof in the United States (ANDA) or (ii) abbreviated routes of approval in any other countries in the Territory that are comparable to ANDA, which in the case of clause (i) and/or (ii), references the applicable Product, provided that (x) such pharmaceutical product has the same Active Ingredient as the Product and an abuse deterrent system or (y) the Product is the primary basis for the approval of such pharmaceutical product.
Patent Right means any and all (a) patent applications filed in any jurisdiction, including all provisional applications, substitutions, continuations, continuations-in-part, divisions, renewals, and all patents granted thereon; (b) all patents, reissues, reexaminations and extensions or restorations by existing or future extension or restoration mechanisms, including supplementary protection certificates or the equivalent thereof; and (c) any other form of government-issued right substantially similar to any of the foregoing, including certificates of invention and applications for certificates of invention.
IPSCIO Record ID: 266811
In the event a Third Party, without any cooperation or assistance from Licensee, markets a Generic Equivalent in the Territory prior to the License Effective Date, and Licensor elects, in its sole discretion, to market or have marketed a Generic Product to compete with such Third Party prior to the License Effective Date, then Licensor shall appoint Licensee as the exclusive, even as to Licensor, but except as to the Third Party Licensee.
Adderall XR Intellectual Property shall mean U.S. Patent Nos. 6,322,819, 6,605,300, and 6,913,768 and any patent that issues as a result of a reexamination or reissue thereof; any patent that issues from, or any continuation, continuation-in-part or divisional application relating to, U.S. Patent Application Serial Nos. 09/176,542, 10/353,073, 10/758,417, 10/774,697, and 11/030,174; and any other present or future U S. patent owned or controlled by Licensor and its Affiliates which may be infringed by the making, using, selling or importing of the Generic Product.
Compound shall mean mixed amphetamine salts, as further defined in the NDA.
Licensor has settled all pending litigation with Licensee in connection with Barr's Abbreviated New Drug Application ('ANDA') and its attempt to market generic versions of Licensor's ADDERALL XR (extended-release mixed amphetamine salts) for the treatment of Attention Deficit Hyperactivity Disorder ('ADHD').
IPSCIO Record ID: 319167
Licensor grants a limited license, under the Adderall XR Intellectual Property and under any and all statutory and regulatory exclusivities to Manufacture, have Manufactured and Market Impax Product in the Territory on and after the License Effective Date.
Licensor authorizes Licensee to Market Licensees AG Product in the Territory from and after the License Effective Date. In connection with and solely for purposes of such authorization, Licensor grants a limited license under the Adderall XR Intellectual Property and under any and all statutory and regulatory exclusivities to Market such Licensee AG Product in the Territory from and after the License Effective Date.
The Authorization and License shall be on an Exclusive basis.
Adderall XR Intellectual Property shall mean
(i) U. S. Patent Nos. 6,322,819, 6,605,300, and 6,913,768 and any patent that issues as a result of a reexamination or reissue thereof;
(ii) any patent that issues from, or from any continuation, continuation-in-part or divisional application relating to, U.S. Patent Application Serial Nos. 09/176,542, 10/353,073, 10/758,417, 10/774,697, and 11/030,174; and
(iii) any other present or future U.S. patent owned or controlled by Licensor which may read upon the making, using, selling or importing of a Generic Product.
AG Product shall mean generically Labeled Adderall XR, commonly called an authorized generic product, approved for sale by the FDA pursuant to a labeling supplement to Licensors NDA.
Compound shall mean mixed amphetamine salts.
Adderall XR is combination medication used to treat attention deficit hyperactivity disorder – ADHD. It works by changing the amounts of certain natural substances in the brain. Amphetamine/dextroamphetamine belongs to a class of drugs known as stimulants.
IPSCIO Record ID: 279333
Intellectual Property means the Licensed Patents, the Licensor Know-How and the Licensor Technology.
Licensed Patents means Patents owned or controlled by Licensor or which Licensor, through license or otherwise, has or acquires rights, which are necessary or useful for the manufacture, use or sale of Licensed Product, including, but not limited to, compositions, formulations, methods of their manufacture, or methods of their use, or otherwise relate to Licensor Know-How or Licensor Technology, including (i) any of the Patents set forth hereto that contain claims that cover, or which relate to, any aspect of Licensed Product, (ii) the Development Patents and (iii) such other Patents as the Parties may agree in writing from time to time.
5,447,729 – Multilamellar drug delivery systems
5,484,608 – Sustained-release drug delivery system
Licensor Technology means Licensorâ€™s bioavailability enhancement and/ or controlled-release delivery, formulation, process and manufacturing technologies, including but not limited to the Licensor Lead Technology and the technologies embodied in the Licensed Patents and the Licensor Know-How.
Licensor Lead Technology means MicrotrolÂ® multi particulate technology or, as subsequently agreed between the Parties, one of the Other Licensor Technologies as may be applied to the Compound pursuant to the Development Plan.
Compound means trospium chloride, the chemical compound whose specific chemical name is 3-alpha benziloyJoxynortropane-8-spiro-1-pyrrolidinium; chloride, or any other trospium salt.
IPSCIO Record ID: 369241
– the exclusive right and license to make, have made, use, offer for sale, sell and import the Product in the Territory, including the right to record sales for its own account;
– in each case, solely for use in the Field and Territory and in connection with Licensees development and Commercialization of the Product and to otherwise exercise Licensees rights and perform its obligations under this Agreement
— an exclusive license under the Product Patents Rights and Product
— an exclusive license under the SAIB Patent Rights;
— an exclusive license under the Re-appliable Patent Rights; and
— an exclusive sublicense under Licensors license to the Epicept Intellectual Property; and,
– an exclusive license and right of cross-reference to all Development Data Controlled by Licensor in existence as of the Effective Date solely to exercise its rights and licenses under this Agreement with respect to the Product.
Licensor grants an exclusive license to use the Licensor Trademark in the Territory solely in connection with the Commercialization of Product in the Territory.
Product means the product under development by Licensor currently known as ELADURâ„¢.
Bupivacaine means 1-butyl-N-(2,6-dimethylphenyl) piperidine-2-carboxamide, including any and all pharmaceutically acceptable salts, solvates, prodrugs, esters, free base forms, enantiomers (and racemic or other mixtures of said enantiomers) thereof.
Topical Bupivacaine Product means any formulation containing Bupivacaine, either alone or in combination with one or more other active ingredients. for use in the Field.
Licensor Trademark means the trademark rights to the mark ELADURâ„¢ and similar rights under the laws of any Governmental Entity, including all goodwill associated therewith, and all applications, registrations, extensions and renewals relating thereto.
Patents rights include Transdermal Delivery System, and, Methods for Transdermal Drug Administration.
Bupivacaine is a prescription medication used as a local anesthetic (numbing medicine). Bupivacaine blocks the nerve impulses that send pain signals to your brain. Bupivacaine injection is used to numb an area of your body during or after surgery or other procedures, childbirth, or dental work.
The Field means all pharmaceutical applications, including the treatment of pain, for human health.
IPSCIO Record ID: 367299
The Parties have previously entered into a Memorandum of Understanding and a Clinical Supply, Development and License Agreement, pursuant to which the Parties cooperated on the development of a Patch as and Licensor supplied Patches to Licensee for clinical trial purposes.
Licensee is engaging the Licensor of Germany to exclusively manufacture and supply Licensees requirements for the Patch, and Licensor shall manufacture and supply Licensee with all of Licensees commercial requirement for up to the Maximum Capacity for each year.
To the extent Licensee authorizes a Sublicensee to purchase directly from Licensor, Licensor agrees to supply the commercial requirements for Patches of such Sublicensee subject to the Maximum Capacity.
For inventions relating to the patch which are Licensor Owned, all inventions developed by the Parties or by either Party under this Agreement or the Clinical Supply Agreement solely relating to Licensorâ€™s existing TTS technology, including but not limited to design, formulation, manufacturing, testing and packaging of TTS, shall be the property of Licensor (Licensor IP). Licensor shall not use any Licensor IP for the development of transdermal therapeutic patches or TTS containing VR1-Ligand until May 29, 2006, other than for Licensee. Thereafter, until May 29, 2009, Licensee shall have a right of first refusal in case Licensor commences development of TTS which contain any VR1-Ligand using Licensor IP.
Active Ingredient means the active pharmaceutical ingredient capsaicin.
VRl-Ligand is any vanilloid or related molecule selected from the group consisting of capsaicin, trans-capsaicin, cis-capsaicin, dihydrocapsaicin, nordihydrocapsaicin, homocapsaicin, homodihydrocapsaicin, resiniferatoxin, piperine, zingerone, eugenol, guaiacol, anandamide, arvanil, N-(4-hydroxyphenyl)-arachidonylamide (AM404), terpenoid unsaturated dialdehydes such as warburganol, polygodial, isovelleral, cinnamodial, aframodial, scalaradial, ancistrodial, b-acardial, sesquiterpenes such as cinnamosmolide or cinnamolide, triprenyl phenols such as scutigeral, olvanil, nonivamide, vanillin, vanillyamide, 20-homovanillyl-mezerein or 20-homovanillyl-12-deoxyphorbol-13-phenylacetate.
Kit means the commercial product form sold by Licensee, its Affiliates or Sublicensees of which the Patch is a component.
Patch or Patches means the TTS containing the Active Ingredient developed by the Parties.
Qutenzaâ„¢ (formerly NGX-4010) for the treatment of peripheral neuropathic pain in non-diabetic adults either alone or in combination with other medicinal products for pain.
IPSCIO Record ID: 240601
The Licensor of Denmark grants to an exclusive, even as to Licensor; in the Field in the Exclusive Territory to use the Licensor Product Deliverables and investigational new drug, or IND, Deliverables to make, have made under contract, use, develop and have developed under contract pharmaceutical products containing Lornoxicam, or any salts, solvates or polymorphs thereof, as the single active drug substance and pharmaceutical products containing Lornoxicam, or any salts, solvates or polymorphs thereof, as an active drug substance in combination with one or more other active drug substances, in each case during the Option Period solely in connection with the Initial Development Program.
Licensor grants an exclusive option during the Option Period to license the Licensed Technology for the research, development and Commercialization of Licensee Products on the terms set forth in this Agreement.
Licensor grants an exclusive, even as to Licensor, with the right to grant sublicenses, under the Licensed Technology to develop, have developed under contract, use, offer to sell, sell, have sold, distribute and import pharmaceutical products containing Lornoxicam, or any salts, solvates or polymorphs thereof, as the single active drug substance and pharmaceutical products containing Lornoxicam, or any salts, solvates or polymorphs thereof, as an active drug substance in combination with one or more other active drug substances in the Exclusive Territory in the Field.
Licensor grants an exclusive, except as to Licensor or its licensees or sublicensees, license, with the right to grant sublicenses, under the Licensed Technology to develop, have developed under contract, use, offer to sell, sell, have sold, distribute and import pharmaceutical products containing Lornoxicam, or any salts, solvates or polymorphs thereof, as an active drug substance in combination with one or more other active drug substances in the Limited Territory in the Field.
Licensor grants an exclusive, even as to Licensor, license, with the right to grant sublicenses, under the Licensed Technology to make and have made under contract pharmaceutical products containing Lornoxicam, or any salts, solvates or polymorphs thereof, as the single active drug substance and pharmaceutical products containing Lornoxicam, or any salts, solvates or polymorphs thereof, as an active drug substance in combination with one or more other active drug substances for the Field in the Exclusive Territory.
Licensor grants a non-exclusive, license under the Licensed Technology, with the right to grant sublicenses, to make and have made under contract pharmaceutical products containing Lornoxicam, or any salts, solvates or polymorphs thereof, as the single active drug substance and pharmaceutical products containing Lornoxicam, or any salts, solvates or polymorphs thereof, as an active drug substance in combination with one or more other active drug substances for the Field outside the Exclusive Territory.
For the Isomer Option, Licensor grants a right of first refusal on an exclusive license, with the right to grant sublicenses, under any applicable Patent, Know-How or intellectual property other than Patents, Controlled by Licensor relating to any Isomer Product to develop, have developed under contract, make, have made under contract, use, offer to sell, sell, have sold, distribute and import such Isomer Product in the Field in the Exclusive Territory.
Combination Product means a pharmaceutical product containing Lomoxicam, or any salts, solvates or polymorphs thereof, as an active drug substance in combination with one or more additional active drug substances, and developed or manufactured by or on behalf of Licensee or Sublicensees using or referencing the Licensed Technology or any part thereof, or the use, manufacture or sale of which would, but for the licenses granted herein, infringe any Licensed Patents or intellectual property right other than Patents included in the Licensed Technology.
Isomer Product means a pharmaceutical product containing an isomer of Lornoxicam as either the single active drug substance or as an active drug substance in combination with one or more other active drug substances, developed solely by Licensor, and for which Licensor files an IND or equivalent filing in the Exclusive Territory within five years of the Effective Date.
Lornoxicam means the active drug substance known as lornoxicam, having the chemical structure set forth in this Agreement.
Lornoxicam, also known as chlortenoxicam, is a nonsteroidal anti-inflammatory drug (NSAID) of the oxicam class with analgesic (pain relieving), anti-inflammatory and antipyretic (fever reducing) properties.
IPSCIO Record ID: 367578
5,540,934 – Compositions for applying active substances to or through the skin
5,716,638 – Composition for applying active substances to or through the skin
Product means a pharmaceutical preparation or composition containing the Drug Formulation which is covered by a Valid Patent Claim.
Drug means the Licensees organoselenium drug or materials, as specified in this Agreement, and its racemate, metabolite, derivatives, isomers, polymorphs, crystals.
Drug Formulation means the formulation of the Drug utilizing Licensors Formulation Technology.
Ethosomes are phospholipid nanovesicles used for dermal and transdermal delivery of molecules.
IPSCIO Record ID: 294022
Licensor Developed Technology shall mean improvements to the Licesor Know-How and Licensor Patents conceived, created, developed or otherwise invented or acquired solely by an employee or agent of Licensor or one of its Affiliates or a Third Party (under contract with Licensor or one of its Affiliates) as a direct result of fulfilling obligations or exercising rights, including the sharing of Confidential Information, under this Agreement or any other agreement between the Parties.
Licensor Patents shall mean any and all rights under the Patent Applications and/or Patents as set forth as of the Effective Date and as amended from time to time, and any foreign counterparts thereof and all divisionals, continuations, continuations-in-part, any foreign counterparts thereof and all patents issuing on any of the foregoing, and any foreign counterparts thereof, together with all registrations, reissues, re-examinations, supplemental protection certificates, or extensions thereof, and any foreign counterparts thereof. In the event any additional Licensor Patent or Patent Application is necessary or useful to allow Licensee to practice the rights granted to it by Licensor herein, Licensor shall include such Patent or Patent Application as applicable.
US application 10/497715 – Method of Particle Formation
US application 10/017135 – Synthesis of small particles.
Compound shall mean (i) any beta-agonist in combination with any steroid; (ii) any steroid; and (iii) insulin, as well as any salts, isomorphs, polymorphs, cogeners or isomers of the preceding. Initial specifications for each Compound will be agreed to by the parties and after such agreement shall be considered an original part of this Agreement.
Product shall mean the Formulation comprising the Product Intermediate and, to the extent required to effect delivery to a patient, a delivery device for use in the Field.
Formulation shall mean a composition of Product Intermediate suitable for administration by inhalation via pulmonary or nasal delivery, as applicable. A Formulation may comprise a mixture, blend or solution of the Product Intermediate combined with excipients and/or adjuvants or neat Product Intermediate and a single Product Intermediate may be covered by more than one Formulation. Specifications for each Formulation will be developed by MAP and after such development shall be considered an original part of this Agreement.
Beta-agonist shall mean any short-acting beta-agonist or any long-acting beta agonist as those terms may be further defined from time to time in a generally accepted pharmacology textbook.
Licensee is engaged in the research and development of proprietary drug delivery systems for inhalation therapy by pulmonary or nasal delivery, including devices and formulations suitable for those devices.