Royalty Report: ribonucleic acid, Drugs, Software – Collection: 294285

License Grant

For the Exclusive Licenses, Licensor grants an exclusive license including the right to sublicense, under the Licensor Patent Rights and Licensor Technology to develop, make, have made, use, sell, offer for sale and import Biomolecules and Licensed Products in the Territory.

For the Non-Exclusive Research Licenses, Licensor grants a non-exclusive, irrevocable, perpetual license in the Territory, to use solely for research done by Licensee or its Affiliates or by Third Party contractors for Licensee or its Affiliates the Licensor Technology, excluding any Licensor Technology that is now or hereafter during the Term covered by claims in issued patents or published patent applications disclosed to Licensee during the Term.

License Property

Licensor owns or controls certain patents, patent applications, technology,know-how and scientific and technical information relating to Biomolecules and Licensed Products.

Applicable Biomolecule means a Biomolecule as to which Licensor at any time during the Term commenced IND-enabling toxicity studies or clinical trials.

Product means any product, including any pharmaceutical product or diagnostic product, which contains any Biomolecule, either alone or in combination with any other active pharmaceutical ingredient, in all formulations and strengths for all uses.

Combination Product means any pharmaceutical product containing a Biomolecule and one or more other active phannaceutical ingredients.

Field of Use

License relates to Licensor’s human gene RTP-801 and to molecules that modify its expression or function under a new agreement between the two companies. RTP-801 is involved in the development of pathologic blood vessels that accelerate the progression of age-related macular degeneration (AMD).   Based on preclinical models, it is believed that AMD can be treated by blocking the expression of the RTP-801 gene through RNA interference or RNAi.

Licensee has extensive experience and expertise in the development and commercialization of pharmaceutical products.  Licensor is a clinical-stage pharmaceutical company engaged in discovering and developing novel RNAi interference or RNAi-based therapeutics.

License Grant

Licensor grants to Irish Licensee an exclusive license under the Licensor Patents to make (subject to Licensor’s manufacturing rights set forth below), use, sell, and offer for sale in any country of the world Licensed Products in the Field. Neither Licensee nor Licensor will have the right to develop or commercialize Licensed Products outside the Field without prior written consent of the other Party.

Licensor grants to Licensee (a) an exclusive license to use in any country of the world any method or composition claimed by the Licensor Patents, and (b) a non-exclusive license to use in any country of the world any Licensor Know-How, to research in the Field Lead Compounds, Development Compounds, Backup Compounds, and Licensed Products.

License Property

Licensed Product means a Development Compound for which the Parties obtain the approval from any Regulatory Authority to sell for use by the general public in the Field.

Licensor Patents means a) the patents and applications listed; b) any application that claims priority to the foregoing patents and applications; and c) any patent that issues from any of the applications described in clauses a) and b) above.
US Patent #6,506,559 – Genetic inhibition by double-stranded RNA
US Patent #6,117,657 – Non-nucleotide containing enzymatic nucleic aci
US Patent #6,586,238 – Enzymatic nucleic acids containing 5-and or 3-cap structures

Lead Compound is a Lead selected by JSC for evaluation in the Field.

Development Compound means a Pre-Development Compound that the JSC has designated for clinical development.

Compound means a composition comprising one or more siNAs as active ingredients, known as of the Effective Date or discovered pursuant to this Agreement subsequent to that date, against the Licensee Named Targets in the Field.

Backup Compound means a Lead Compound that the JSC has selected as a backup candidate for clinical development.

JSC means the Joint Steering Committee.

Field of Use

Field means conditions and diseases affecting the eve and treatments for such conditions and diseases. Such conditions and diseases include, for example, diabetic retinopathy and ocular adenoviral infection, but this does not mean that the Field encompasses the treatment outside the eye of diabetes or adenoviral infection, respectively.

Licensee is to develop Sirna-027, a RNAi-based therapeutic currently in Phase 1 for age-related macular degeneration (AMD), and to discover and develop other RNAi-based therapeutics against select gene targets in ophthalmic diseases.

License Grant

Party A, a Canadian University, hereby assigns to Licensee all of Party A’s right, title and interest in and to U.S. Patent Application No. 11/807,872, with no additional payment due to Party B and will record such assignment with the U.S. Patent and Trademark Office.

The Parties shall direct their respective counsel to execute Stipulations of Dismissal with Prejudice dismissing all claims and counterclaims that were or could have been asserted in the Massachusetts State Court Action, U.S. Infringement Action, Canadian Infringement Action, and B.C. Action, and in the case of the Interference Proceeding, a Request for Adverse Judgment providing that Licensee concedes priority to Party A with respect to all claims that correspond to Counts 1-5, i.e., claims 34, 36, 38, and 40-43 of Party A U.S. Application 11/807,872; claims 1-6, 8, 10, 12-18, 21-22, and 32-33 of Licensee U.S. Patent 7,718,629; and claims 32-38 of Licensee U.S. Application 13/165,568, and requesting that an adverse judgment be entered against Licensee as to these claims and priority be awarded to Party A for U.S. Application 11/807,872.

License Property

U.S. Patent 7,718,629 – Compositions and methods for inhibiting expression of Eg5 gene
Patent certains to intellectual property (IP) elements related to lipid nanoparticle (LNP) technology for RNAi therapeutics.

RNAi (RNA interference) is a revolution in biology, representing a breakthrough in understanding how genes are turned on and off in cells, and a completely new approach to drug discovery and development.

Field of Use

By harnessing the natural biological process of RNAi occurring in our cells, the creation of a major new class of medicines, known as RNAi therapeutics, is on the horizon.

License Grant

For the License of Platform Technology and Biomolecules, Licensor grants the Swiss Licensee a perpetual, exclusive, worldwide license, with the right to sublicense, under the Patent Rights and Know-How Controlled by Licensor and its Affiliates to make, have made and use all of the Biomolecules that demonstrated the minimum criteria levels specified in the applicable Project Plans to use, develop, make, have made, import, sell, offer for sale and have sold Licensee Products for use in the Licensee Exclusive Field.

Licensor agrees to grant to Licensee and its Affiliates a perpetual, worldwide license, with the right to sublicense, under the Patent Rights and Know-How Controlled by Licensor and its Affiliates to make, have made and use all other Biomolecules discovered or provided in the course of the Projects under the Research Program which did not demonstrate such minimum criteria levels to use, develop, make, have made, import, sell, offer for sale and have sold Licensee Products for use in the Licensee Exclusive Field provided Licensor shall grant a license to such Biomolecule in the Licensee Exclusive Field to the greatest extent that Licensor has not granted such rights to a Third Party(ies).

Licensor agrees to grant a worldwide license, with the right to sublicense, to use the Platform Technology Improvements which are owned by Licensor in the Licensee Exclusive Field.

License Property

The licensed patents include, but are not limited to, Method For Identification, Separation And Quantitative Measurement Of Nucleic Acid Fragments;  System And Method For High Throughput Tissue Disruption;  System And Method For Storing Mass Spectrometry Data; and,  identification of Protein Interactions Using In Vitro Post-Translationally Modified Fusion Proteins.

Platform Technology means all tools, technologies and methods relating to proteomics, metabolomics, RNA dynamics and bioinformatics and methods to analyze and link these components of genomics, which are both not publicly available and are proprietary to or Controlled by Licensee or its Affiliates immediately prior to the closing of the transactions under the Transaction Agreement, and claimed or disclosed within the patent applications and patents or are within the scope of the material trade secrets related thereto.

Biomolecule means any Gene and RNA and protein or chemical entity the synthesis of which is directed by such Gene or Gene pathway, which protein or chemical entity was produced by an organism.

Gene means a polynucleotide sequence which can be transcribed into RNA and generally encodes a protein, optionally together with its regulatory sequences.

Plant means a monocotyledonous or dicotyledonous plant, or an angiosperm, a gymnosperm or a pteridophyte.

Field of Use

Licensee Exclusive Field means  any Biomolecule with Plants as the expression host;  any Plant Gene; any Biomolecule for admixture to the product of any physical or chemical processing of Crops or derivatives of Crops provided that the product contains Plant material unique to Plants; any Biomolecule for any industrial application involving Crops or the close derivatives of Crops, but excluding inert or minor ingredients from or derived from a Plant source which do not materially add value to an end product of an industrial manufacturing process; any Biomolecule useful for Licensees actual or potential customers in the agriculture, food and/or natural fibers markets involving the use of Crops, or the use of close derivatives of Crops (including all uses of corn, wheat, barley, rice, cotton and soy, and other oil Crops and their close derivatives), but excluding inert or minor ingredients from or derived from a Plant source which do not materially add value to an end product of an industrial manufacturing process; any Biomolecule with commercial value, alone or In combination with other Biomolecules, for use in the Animal Feed Field; and, any Project described in the Project List and including the new protein therapeutic projects undertaken.

Animal Feed Field means the use of Biomolecules for feed applications to alter, modify or improve feed conversion and/or animal nutrition, but excluding all vaccines and therapeutic applications and any part of such field to which rights have been granted to Licensee or Licensee or any of its Affiliates under the Licensee Agreements.

License Grant

Licensor grants a non-exclusive right and license under the Licensor Patent Rights for the sole and exclusive purposes of Researching, Developing and Commercializing Licensed RNAi Products for the Target in the Field in the Territory.

License Property

Licensor has intellectual property covering technology useful for the discovery, development, manufacture, characterization, or use of therapeutic products that function through RNA interference (RNAi).

Patents include short double-stranded RNAs as therapeutics.

Licensees target is RTP 801, or, DNA•damage-inducible transcript 4.

Field of Use

Field means the use of therapeutic RNAi Products against the Target for the treatment in humans of ocular diseases, loss of hearing, emphysema and pressure sores.

Emphysema is a long-term, progressive disease of the lungs that primarily causes shortness of breath due to over-inflation of the alveoli (air sacs in the lung). In people with emphysema, the lung tissue involved in exchange of gases (oxygen and carbon dioxide) is impaired or destroyed.