Royalty Report: Drugs, Cancer, Genome – Collection: 294282

License Grant

For the Development and Commercialization License, the German Licensor grants to the Licensee of the United States and Israel, an exclusive, worldwide license, with the right to sublicense under the Licensor Existing JP and the Joint Program IP, to develop, use, manufacture and/or have manufactured, import, market, sell and otherwise commercialize Licensee Products.

For the Research License, Licensor grants a non-exclusive, world-wide license, without the right to sublicense, under the Licensor Existing IP and the Joint Program IP, to perform the Joint Research Program and the Joint Development Program.

License Property

Licensor has established proprietary technology and patent rights related to the development and manufacture of siRNA molecules potentially silencing any target in any species and has filed a patent application directed to biological aspects relating to the 801 gene.

Technology is for the development and manufacture of siRNA molecules silencing gene targets in animals and humans, and the preparation of (liposome-based) formulations for the delivery of siRNA therapeutic products, as well as any and all intellectual property rights therein, including without limitation Patent Rights, copyright, trademark or trade secret rights.

Licensor Program IP means certain stabilized, chemically modified siRNA molecule(s) silencing the human 801 gene and the mouse 801 gene that have been developed by Licensor prior to the date of this Agreement and certain lipids and liposome-based formulations.

Field of Use

The field of use is cancer.

License Grant

For the Development and Commercialization License, the Licensor of the United States and Isreal  grants to the German Licensee an exclusive, world-wide license with the right to sublicense, under the Licensor Existing IP and the Joint Program IP, to develop, manufacture and/or have manufactured and commercialize import, market, sell and otherwise commercialize Licensor Products.

For the Research License, Licensor grants a non-exclusive, world-wide license, without the right to sublicense, under the Licensor Existing IP and the Joint Program IP, to perform the Joint Research Program and the Joint Development Program.

License Property

Licensor Existing IP means the present and future Patent Rights and Know-How owned by Licensor and directed to the 801 polypeptide, to nucleic acid encoding the 801 polypeptide, antibody to the 801 polypeptide, antisense and siRNA to 801 gene and methods of treatment of diseases using these,including but not limited to rights to patents and patent applications.

Licensor Products means Products and Drug Products for the treatment of human diseases other than cancer.

Field of Use

The field of use is for the treatment of human diseases other than cancer.

License Grant

The English Licensor hereby grants to Licensee and its Affiliates, a non-exclusive, world-wide, sublicensable license under the Licensed Intellectual Property to (i) use, sell, offer for sale, make, have made, import, export and otherwise dispose of Licensed Products in the Licensed Field and (ii) to engage in the research, screening, discovery, development and testing in connection with the Licensed Products in the Licensed Field. The License expressly ex.eludes Licensees and its Affiliates provision of any services to third parties; production and/or sale of kits, diagnostic products or research reagents; products for non-human animal health, agriculture or other industrial applications outside of the Licensed Field.

License Property

Licensed Intellectual Property shall mean US Patent Numbers 8,097,710, 8,258,285, 8,263,569, 8,299,235 and 8,349,607 and US Patent Application Serial Numbers l I/OJ 3,53 l and 12/508,476 and any patents issuing thereupon, including any continuations, divisionals, continuations-in-part, substitutions, reissues, re-examinations, renewals, continued prosecution applications, foreign counterparts and/or extensions of any of the foregoing.

8,097,710 – Gene silencing
8,258,285 – RNA molecules and vectors for gene silencing
8,263,569 – Gene silencing
8,299,235 – RNA molecules and vectors for gene silencing
8,349,607 – Gene silencing

SRM shall mean a short RNA molecule or molecules nominated by Licensee hereof.  Such SRM will be designed to target and modify the expression of a human gene or genes, where such human gene or genes may be any genes selected from across the human genome and may contain a single short RNA molecule or the combination of rwo such short RNA molecules. Such SRM may comprise an SRM series to provide for lead drug candidate and back-up drug candidate (including different formulations, siRNA sequences or siRNA modifications) addressing the same human gene target. Without limitation to the foregoing and for purposes of clarity, an SRM may comprise short RNA molecules designed to target a combination of two (but no more than two) separate gene targets in the human genome.

Field of Use

Licensed Field shall mean the diagnosis, prevention and treatment of disease in humans.

License Grant

The Parties have an agreement to develop technology useful for in vitro and/or in vivo target identification and/or target validation using RNAi and to develop RNAi therapeutic products.

For the royalty bearing products, the Opt-Out Party/Licensor grants the Continuing Party a license under and to Licensor Technology, that is applicable to such Royalty-Bearing Product, to Develop, Manufacture and Commercialize such Royalty-Bearing Product in the Field in the Territory.

For the profit sharing products
For the Development Licenses, to Develop Profit-Sharing Products in such Program in the Field in the Territory; and Licensor grants a  worldwide, Co-exclusive license, sublicenseable  to its Affiliates, under and to any and all Licensor RNAi Technology, Licensor RNAi Patent Rights, Licensor Collaboration Inventions, Licensor Therapeutic Collaboration IP, Licensors interest in Joint Collaboration IP and Licensor RNAi Novel Target IP which are Controlled by Licensor or the Third Party Licensor or their wholly-owned subsidiaries to Develop Profit-Sharing Products in such Program in the Field in the Territory.

For the Commercialization Licenses, upon Licensees exercise of its U.S. Co-Promotion Option, Licensor grants Licensee a Co-exclusive license under and to any and all Licensor Technology to Commercialize Profit-Sharing Products in the Field in the United States.

For the Manufacturing Licenses, Licensor grants Licensee a non-exclusive license under and to any and all Licensor Technology to Manufacture Profit-Sharing Products in the Field for the Territory.

For the Product Trademark Licenses, Licensor shall grant a Co-exclusive license to use such Product Trademarks to perform its Development obligations under this Agreement with respect to such Profit-Sharing Product.  

Licensor grants a Co-exclusive license to use the Product Trademarks selected by Licensor and approved by the JSC for such Profit-Sharing Product to Commercialize such Profit-Sharing Product in the Field in the United States.

Licensor grants a non-exclusive license in the Territory, under Licensor Broad RNAi Patent Rights that were Controlled by Licensor or the Third Party Licensor or their wholly-owned subsidiaries during the Technology Collaboration Term, Licensor Broad RNAi Technology that was Controlled by Licensor or the Third Party  or their wholly-owned subsidiaries during the Technology Collaboration Term, Licensors interest in Joint Collaboration Patent Rights, and Licensor-Assigned Therapeutic Collaboration Inventions.

License Property

The developed technology will relate to in vitro and/or in vivo target identification and/or target validation using RNAi and to develop RNAi therapeutic products.

Combination Product means a RHOA Product or an RNAi Therapeutic Product combined with any other clinically active ingredient.

Field of Use

The Field shall mean the treatment and/or prophylaxis of diseases in humans with RNAi Therapeutic Products.

RNA interference, or RNAi, is a naturally occurring mechanism within cells for selectively silencing and regulating specific genes. Since many diseases are caused by the inappropriate activity of specific genes, the ability to silence genes selectively through RNAi could provide a new way to treat a wide range of human diseases. RNAi is induced by small, double-stranded RNA molecules. One method to activate RNAi is with chemically synthesized small interfering RNAs, or siRNAs, which are double-stranded RNAs that are targeted to a specific disease-associated gene. The siRNA molecules are used by the natural RNAi machinery in cells to cause highly targeted gene silencing.

License Grant

University grants to Company an exclusive, worldwide license in the Patent Rights to make, have made, use, offer to sell, sell, have sold and imported Licensed Products in the Field, including research for development of Licensed Products.

License Property

University owns intellectual property rights which relate to therapeutic applications of RNAi, as described in University’s invention Methods of Efficient siRNA Delivery in Human Cells — New Approaches for the Development of siRNA Therapeutics; and,  Design, Synthesis, and Formulation of Nanotransporters for Efficient Nucleic Acids and other Pharmaceutics Delivery in Cells and Animals; and, Therapeutic Silencing of Genes Involved in Cholesterol Biosynthesis and Other Metabolic Disorders by Chemically Modified siRNA and New Delivery Agents.

Field of Use

The Field means Primary Field and Secondary Field collectively. Any commercial sale of research reagents covered by the Patent Rights is specifically excluded from the Field.

Primary Field means therapeutic, prophylactic, or diagnostic health care applications for amyotrophic lateral sclerosis (ALS), diabetes, and obesity, in humans.

Secondary Field means therapeutic, prophylactic, or diagnostic health care applications in humans that are not included in the Primary Field.