Royalty Report: Diagnostic, Medical, Drug Discovery – Collection: 299242

$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
  • Medical
  • Drug Discovery
  • Software
  • Medical Info
  • Cancer
  • DNA
  • Genome
  • Disease
  • Drugs
  • Device
  • Assay
  • Therapeutic
  • Test/Monitoring
  • Content
  • nucleic acid
  • Proteins
  • ribonucleic acid
  • Scientific & Technical Instruments
  • Tissue

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: 299242

License Grant
English Licensor hereby grants to Licensee and Licensee accepts, a non-exclusive, royalty-bearing, worldwide sub-license under the Licensor Patent Rights to manufacture, have manufactured and use Nucleic Acid Arrays for internal purposes only, to create and contribute to the creation of Licensee Ratio-based Databases, and to Supply and offer for Supply Royalty-Bearing Services, in each case in all fields other than the Excluded Fields.
License Property
Nucleic Acid Array means an array of nucleic acids attached to a solid support.

Licensee Ratio-Based Database means a Database containing relative levels of expressed genes within or between cells wherein such Database may be built from data where measurements from one RNA sample are compared with those from another RNA sample; provided, however, a Licensee Ratio-based Database shall in no event include an Incyte Expression Database.

Resolver Software means Licensees software package with features.

Instrument means readers, fluids stations, hybridization devices, sample logging, handling and processing systems, detection and measurement equipment, computer work stations (and associated software) and other instruments or systems used in the preparation or use of Nucleic Acid Arrays or the extraction or processing of data from Nucleic Acid Arrays.

Patent Rights means U.S Patents #5,700,637 and 5,436,327 and International Application No. PCT/GB/89/00460 and PCT/GB/89/01114 and all continuations, continuations-in-part, divisionals, re-examinations and reissues, and any patents issuing therefrom or claiming common priority thereto, together with any other patents which issue to Licensor, or which otherwise come into the ownership or under the control of Licensor during the Term and which Licensor has the right to license, and which relate, but only to the extent that they relate, to the general use of Nucleic Acid Arrays, including methods for making or analyzing Nucleic Acid Arrays and for creating Licensee Ratio-based Databases, but excluding therefrom any such patents that relate but only to the extent that they relate to instrumentation for the reading of Nucleic Acid Arrays, the design of probes for use on Nucleic Acid Arrays, particular sequences used on Nucleic Acid Arrays, software used in instrumentation for reading Nucleic Acid Arrays or in probe design, microfluidics or the control or assurance of the quality of Nucleic Acid Arrays.
5,700,637 – Apparatus and method for analyzing polynucleotide sequences and method of generating oligonucleotide arrays
5,436,327 – Support-bound oligonucleotides

Licensed Product means a Nucleic Acid Array and any component thereof, an Instrument, kit, reagent, computer software or other product, apparatus or composition of matter of whatever nature which is Covered by a Valid Claim, but not including a Database or other information (other than a Database or information which is an integral part of a product).

In-Situ Inkjet Synthesis means a method for the fabrication of Nucleic Acid Arrays on a solid support by synthesizing by chemical means individual nucleic acids directly on such solid support at specific locations on the Nucleic Acid Array using an inkjet printing device to deliver to defined locations on the surface of the solid support precursors for or reagents which allow mononucleotide additions.

Incyte Expression Database means a Database consisting entirely or substantially of gene expression data and containing at least five hundred data points, where a single data point is data relating to the level of expression of one gene in one sample.

Database means a collection of information derived from one or more Nucleic Acid Arrays, which is licensed for value to multiple third parties, but does not include a database for internal use exclusively by an Entity.

Field of Use
This agreement pertain to the drug industry in all fields other than the Excluded Fields.

Excluded Fields means any of the following activities
            (a)   the use of a Nucleic Acid Array for or in connection with any activity other than gene expression profiling or non-commercial genotyping;
            (b)   the exercise of any of the rights licensed under this Agreement for the purposes of the manufacture, having manufactured, use, Supply, creation or contribution to the creation of Incyte Expression Databases; and
            (c)  [the manufacture or having manufactured of Nucleic Acid Arrays by a method other than In-Situ Inkjet Synthesis.

Licensee is  a leader in the emerging field of informational genomics. Informational genomics involves acquiring, storing, and analyzing gene expression information gathered from throughout a cell to identify a majority of the medically important drug targets and gene functions. Licensee combines the power of informatics and genomics to create a proprietary platform that accelerates and enhances the drug discovery process for pharmaceutical and biotechnology companies and improves agricultural products.

IPSCIO Record ID: 299232

License Grant
Licensor grants a nontransferable, nonexclusive, worldwide license under Licensors Patent Rights and Technical Information to make, but not have made, use for internal array development programs and pharmaceutical or diagnostic research, such use rights not including the right to license or distribute expression databases, or perform therapeutic or pharmaceutical development on a service or similar basis, import, lease, distribute, offer for sale, and sell, in the case of products other than software;  Genetic Analysis Technology Consortium or GATC Compliant Nucleic Acid Arrays, and.  GATC Compliant Systems for use with and only for use with GATC Compliant Nucleic Acid Arrays licensed hereunder, all to the extent that such Nucleic Acid Arrays or Systems are covered by Licensor Patent Rights and/or Licensors Technical Information.

Licensor grants to Licensee a nontransferable, nonexclusive, worldwide, royalty-free license under Licensor -Patent Rights to make (but _not have made); ·and· use Array Makers for internal array.
development and manufacturing development programs.

License Property
Licensor has Technical Information which includes a software suite for data extraction and image processing.

The Licensed software packages are GeneChip® System Software and GeneChip Expression Analysis Software.

System shall mean one or more readers, hybridization devices, computer work stations, and/or single copies of software associated therewith specifically configured for use with Nucleic Acid Arrays and to be used for extraction and processing of data from such Nucleic Acid Arrays, and not including, for example, Array Makers.

Array Maker shall mean a device designed to fabricate Nucleic Acid Arrays by Mechanical Fabrication Methods and specifically configured to fabricate only Nucleic Acid Arrays only by Mechanical Fabrication Methods.

Gene shall refer to a nucleic acid sequence encoding a distinct messenger RNA and protein as well as polymorphic variants of such sequence.

Field of Use
The field of use is software useful in connection with Nucleic Acid Arrays, and to be used for extraction and processing of data from such Nucleic Acid Arrays.

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: 233483

License Grant
This restated, amended agreement is to provide for the expansion of the collaborative efforts of the parties.

For the Research Database License,  Licensor grants an exclusive, worldwide license to use the Research Databases solely for its internal research purposes to identify Gene Targets during the Research Term.

For the Gene Target License
(a) Licensor grants and agrees to grant a non-exclusive, worldwide license, without the right to sublicense, under the Patent Rights and Gene Target Know-How Controlled by Licensor, if any, to use such Gene Target in the Field of Use.
(b) If Licensee has requested rights to such Gene Target in an Additional Field of Use and provided that Licensor has not previously granted an exclusive license or right to such Gene Target to a Third Party in such Additional Field of Use, Licensor grants and agrees to grant an exclusive, worldwide license, with the right to sublicense, under the Patent Rights and Gene Target Know-How Controlled by Licensor, if any, to develop, make, have made, use, import, offer for sale and sell such Gene Target in such Additional Product Field of Use.

For Ownership of Improvements to Licensee Technology, Licensor grants an exclusive, irrevocable, perpetual, worldwide license, with right to sublicense through multiple tiers of sublicense, to such rights.

License Property
Licensor has developed technologies and know~how with respect to high throughput analysis of gene expression and gene regulation for use in the identification of drug targets and the discovery of pharmaceutical and diagnostic products.

Research Databases shall mean the databases created by Licensor using the Licensor Technology pursuant to the Research Plans and containing all of the data derived from experiments conducted with respect to Samples.

Research Programs shall mean the programs of research performed by the parties for the research, discovery and characterization of genes through the application of genomic technologies and bioinformatics to analyze Samples, and the use of such genes for the development and commercialization of Products. The term genomic technologies shall mean, without limitation, technologies for the analysis of gene expression and gene regulation, hybridization array techniques, high speed sequencing and generation of expressed sequence tags.

Product shall mean a Therapeutic Product, Protein Product, Diagnostic Product or Nucleic Acid Product, as applicable.

Gene Products shall mean all partial cDNAs, DNAs, genes, full length cDNAs corresponding thereto and proteins encoded therefrom.

Field of Use
Field of Use shall mean all internal research uses by Licensee of Gene Targets and the development and commercialization of those Therapeutic Products. All uses of Gene Targets as Protein Products, Therapeutic Products, Nucleic Acid Products or Diagnostic Products are excluded from the Field of Use.

Additional Field of Use shall mean all uses of Gene Targets for the development and commercialization of Gene Targets as Protein Products or those Therapeutic Products, Nucleic Add Products and/or Diagnostic Products, as applicable.

Excluded indications are Intrinsic kidney disease, including but not limited to glomerulonepbritis and diabetic nephropathy;  Benign prostatic hypertrophy {specifically excluding prostate cancer); and, Atherosclerosis.

Licensor has been using its Reads gene expression technology to build a database of genes differentially expressed between normal heart tissue and heart tissue from people with heart failure. Under the expansion, the Licensor will enlarge the Licensee database to include new indications, beginning with osteoporosis.

IPSCIO Record ID: 10553

License Grant
Licensor grants to German Licensee a world-wide and non-exclusive, except regarding Desk Top Synthesizers, license to use the Technology only within the Field only for the purposes of (i) developing Content for Catalogue Arrays and Catalogue Cassettes and (ii) marketing, distributing, selling and having sold Licensed Products, in the Territory to End Users, together with a non-exclusive right to sublicense; provided that as a condition to marketing, distributing, selling, having sold, disposing or otherwise transferring any applicable Licensed Product to any End User,  The license granted for the marketing, distribution, sale, disposal or transfer from Licensee or its Affiliates of Desk Top Synthesizers shall be co-exclusive.

For the Trademarks, Licensor grants a non-exclusive, right and license in the Territory to use and refer to the Licensor names, trademarks, logos, symbols, designs, and other designations used in connection with the Licensed Products in order to advertise and market same to End Users.

Licensor agrees to grant a limited, non-exclusive right and license to manufacture the-Failed Product for use, sale and distribution in accordance with Licensee's rights under this Agreement.

License Property
Chips are used in pharmaceutical and genetic research.  The microchips contain synthetic sequences of DNA or proteins.

Licensor is the owner of intellectual property rights including Know-How and various patents, patent applications. copyrights and trademarks in the field of array technology including its proprietary micro array-technology.

Array(s) shall mean semiconductor-based Licensor supplied biochip(s) having nucleic acid biological probe arrays synthesized thereon contained in Cassettes in sets per Cassette of up to ten Arrays ready for introduction of RNA or DNA samples prepared from biological specimens.

Cassette(s) shall mean Licensor carrier(s) capable of holding multiple Arrays; when used without qualification, this term shall refer to Blank, Custom and Catalogue Cassettes without distinction. Custom Cassette(s) shall mean Cassettes containing Custom Arrays. Catalogue Cassettes shall mean Cassettes containing only Catalogue Arrays. Blank Cassettes shall mean Cassettes containing only Blank Chips.

Licensed Product(s) shall mean Catalogue Cassettes, Catalogue Arrays, Custom Cassettes, Custom Arrays, Blank Chips, Blank Cassettes, Hybridizer/Reader(s) together with Hybridizer Software, Desk Top Synthesizers, the Phone Booth Synthesizer provided for in Section 3.l(c), Web Services, consisting of Probe Design Software and Image Capture Software initially, and related Software, in each case, for applications only in the Field.

Desk Top Synthesizer shall mean a biochip synthesis unit for synthesizing Content onto Blank Chips that are arranged in a Cassette, as more fully described in and to be developed under the R&D Agreement.

Patents include
Electromechanical Solid Phase Synthesis of Polymers;
Electromechanical Solid Phase Synthesis;
Overlying Electrode in a biochip microarray;
A method of control of and display from devices for biological and chemical processing;
A method for selecting Oligonucleotides having low cross hybridization;
Automated system and process for custom designed biological array design and analysis;
Microarrays of peptide affinity probes for analyzing gene products and methods for analyzing products; and,Method for generating Ultre-fine spotted arrays.

Field of Use
Field shall mean assays and uses of Licensed Products relating to genetic analysis, testing and research of nucleic acid based genetic materials, and the creation, maintenance and/or commercialization of nucleic acid sequence based genetic databases for research purposes (including pharmaceutical research) and all diagnostic purposes and applications.

IPSCIO Record ID: 383582

License Grant
In the original agreement, Licensor granted
— For the Layton and Stanford Patent Rights a nonexclusive, non-transferrable, limited sub-licensable, world-wide license under the Layton Patent Rights and the Stanford Patent Rights to practice and use the subject matter within the Layton Patent Rights and the Stanford Patent Rights in the Licensee Database Field of Use, Diagnostic Field of Use, the Homebrew Field of Use and the Personalized Research Field of Use.
— For the Montefiore Patent Rights, a non-transferrable, limited sub-licensable, world-wide license under the Montefiore Patent Rights to practice and use the subject matter within the Montefiore Patent Rights in the Licensee Database Field of Use, the Diagnostic Field of Use, the Homebrew Field of Use and the Personalized Research Field of Use.
— For the Cancer Marker Patent Rights, Licensor grants a non-transferrable, limited sub-licensable, world-wide license under the Cancer Marker Patent Rights to practice and use the subject matter within the Cancer Marker Patent Rights in the Licensee Database Field of Use, the Diagnostic Field of Use, the Homebrew Field of Use and the Personalized Research Field of Use, only with respect to cancer.
— For the Database Patent Rights and Seilhamer/Scott Patent Rights, Licensor grants a nonexclusive, non-transferable, non-sublicensable , world-wide license under the Database Patent Rights and Seilhamer/Scott Patent Rights to practice and use the subject matter within the Database Patent Rights and the Seilhamer/Scott Patent Rights in the Licensee Database Field of Use, the Diagnostic Field of Use, the Homebrew Field of Use, and the Personalized Research Field of Use.
— For the Sublicenses, Licensee shall have the right to grant sublicenses to third parties under such Patent Rights on a Product-by-Product basis to make, use, import, sell, and offer for sale Products developed by Licensee or its Affiliates.
— For the Co-Exclusive Licenses in the Homebrew and Diagnostic Fields of Use, Co-Exclusive shall mean that each Party has the right to exercise all of the rights under the Patent Rights in question in the field of use for which the parties have co-exclusive rights, without obligation to the other except to the extent provided in this Agreement, and neither Party alone has the right to grant sublicenses to third parties under such Patent Rights without express written consent of the other Party.
License Property
Cancer Marker Patent Rights shall mean all Valid Claims listed in any of the following patents and patent applications, to the extent that they are owned by Licensor with the right to license under this Agreement, and to the extent that they claim the composition of matter or use of any nucleic acids or proteins as markers or diagnostics for cancer.

The patents include
— Processes for Genetic Manipulations Using Promoters;
— Method for Detecting Pathological Conditions;
— Comparative Gene Transcript Analysis; and,
— Methods for Fabricating Micro Arrays of Biological Samples.

Field of Use
Licensee licenses various classes of patents from Licensor pertaining to the manipulation of genes, the detection of pathological conditions, comparative gene analysis, methods for fabricating tests of biological samples and the use of proteins as markers for cancers.

IPSCIO Record ID: 203310

License Grant
With this collaboration agreement, Licensor will develop and deliver to Licensee, a non-profit organization, The OmniBank II Library, install and support the Bioinformatics Software, and provide training to Licensees staff in the use of the OmniBank II Library and the production, genotyping and phenotyping of knockout mice.

Licensor will generate and deliver to Licensee two complete copies of a library consisting of three hundred fifty thousand (350,000) mouse embryonic stem cell clones with Selected Mutations, each identified by DNA sequence of its genomic integration site, the OmniBank II Library. Subject to the terms of this Agreement, Licensor will use Diligent Efforts to generate and deliver the OmniBank II Library in accordance with the schedule set forth in the Development Plan.

Licensor grants to Licensee the non-transferable, non-exclusive right under Licensors rights in the Cre-Lox Patents to use, breed and cross-breed Mutant Mice and Progeny that contain one or more lox sites in their genome (Lox Mice), at the internal research facilities of Licensee, solely for research purposes.

Licensor grants to Licensee a worldwide, non-exclusive right and license to use the Bioinformatics Software, under the copyrights and know-how Controlled by Licensor with respect thereto. Licensee shall have the right under the foregoing license to custom configure the Bioinformatics Software for its internal use.

License Property
Licensor has technology for and expertise in the generation of mouse embryonic stem cell clones containing gene trap mutations that can be used in the production of knockout mice.

The Bioinformatics Software means the software for the management and analysis of data relating to the OmniBank II Library and the production, genotyping and phenotypic analysis of knockout mice.

The library, constructed using Licensor's proprietary mouse gene knockout technology, will enable a researcher to develop a mouse that has a specific gene removed or “knocked-out.” The function of that gene can then be studied by comparing the knockout mouse to a normal mouse. Approximately 99 percent of human genes have a mouse counterpart, and research using this technology may lead to the development of drugs for a wide variety of human and animal diseases, including diabetes and obesity, infectious disease, cancer and heart disease. Institute researchers will have certain rights to utilize Lexicon’s patented gene targeting technologies. In addition, Licensor will equip the Institute with the bioinformatics software required for the management and analysis of data relating to the library.

Field of Use
This agreement is for the stem cell cloning industry and the identification of target genes and DNA.

IPSCIO Record ID: 263967

License Grant
This license agreement is Included with an asset purchase agreement between this Licensee/Seller and a Third Party Buyer.

University hereby grants to Licensee a right and license to make, have made, use, lease, offer to sell, sell, otherwise commercially dispose of, export and import Licensed Products,  to practice Licensed Processes, in each case directly or by sublicense and only for commercial purposes, including providing services to third parties and for Licensees research and/or development in the Field of Use within the Territory during the Term.  

For the Option,  University hereby grants Licensee an option to acquire a non-exclusive, worldwide, royalty-bearing license within the Field of Use under the Optioned Patent Rights to make, have made. use, sell and offer for sale products, processes and services within the Field of Use.

License Property
The intellectual property relates to Sequencing of Biopolymers by Mass Spectrometry.

The Products associated with the Claimed Technologies are specifically SpectroCHlPs; QGE Software;  and,  QGE assays sold through Assays by Licensee. The Products may be amended from time to time.

Field of Use
The field of use is all uses.

IPSCIO Record ID: 243464

License Grant
For the Conditional Non-Exclusive License to Licensee for Instruments, Licensor grants to a nonexclusive, world-wide license under Licensors interest in the Intellectual Property to make, have made, and import, Instruments outside of the Collaboration Field.

For the Non-Exclusive License to Licensee for Instruments Developed Outside the Joint Development Program, Licensor grants a non-exclusive, world-wide license under Licensors interest in Collaboration Licensors Intellectual Property to make, have made, use, import, offer to sell, and sell instruments outside the Collaboration Field.

For the Non-Exclusive License to Licensee for Instruments,  Licensor grants to a non-exclusive world-wide license under Licensors interest in the Intellectual Property to use, offer to sell, and sell Instruments outside of the Collaboration Field.

This agreement also includes exclusive grants from Licensee to Licensor.

License Property
Licensee has certain skills, proprietary technology and know-how related to the manufacture, design and use of Assembled Arrays.

Licensor has certain skills, proprietary technology and know-how related to the development of bioanalytical instrumentation systems and associated reagents and the marketing, sales and support of products incorporating such systems.

Licensor has DNA Synthesis and Purification Patents  referred to as the Caruthers Process and Caruthers Reagents, and related patents.

Field of Use
Collaboration Field means the field of Zip Code Chemistry used in combination with Assembled Arrays.

Nucleic Acid Analysis Field means the field of characterization of a nucleic acid sample including but not limited to the determination of the relative abundance of the nucleic acid, all or part of a sequence of the nucleic acid, or variations in the sequence of the nucleic acid. The Nucleic Acid Analysis Field excludes the Collaboration Field.

The Parties are designing product based on the Array of Arrays for SNP genotyping. The first SNP genotyping assay format that Licensee intend to commercialize will be PE Biosystems' proprietary OLA ZipCode assay format. This assay format enables the creation of a universal Array of Arrays that can be used to analyze any set of SNPs.

IPSCIO Record ID: 230804

License Grant
Licensor grants a perpetual, exclusive, even as to Licensor, worldwide license or sublicense, with the right to grant sublicenses, under Licensor’s interest in the Core Technology, any Licensor Process Improvements and any Licensor Third Party Process Improvements to make, have made, use, sell, have sold, import, and have imported Instruments, Reagents and Software and to provide Sequencing Services, in any case solely within the Licensee Field and to otherwise exploit the Core Technology, Licensor Process Improvements and such Licensor Third Party Process Improvements, in each case for all purposes solely within the Licensee Field.
License Property
The patents and technology are for Novel Sequencing Methods and Pyrophosphate Sequencing.

Instrument means any device, equipment or instrument covered by a claim under the Core Patent Rights which is used to conduct DNA sequencing and/or analyze the results of such DNA sequencing, including, without limitation, the correlation of gene sequence expression and variation with disease, drug response or prognosis.

Royalty Bearing Services means the provision by Licensee to any Third Party of any service using instruments, including without limitation Sequencing Services.

Sequencing Services means the use of Instruments to characterize DNA sequences, measure RNA expression levels and/or karotype samples.

Reagents means any chemical compound or mixture of chemical compounds covered by a claim under the Core Patent Rights developed for use in an Instrument.

Software means any computer programs and software covered by a claim under the Core Patent Rights developed for use on an Instrument, including any upgrades, modifications and enhancements made for such programs and software. For purposes of this Agreement the term Software shall not indicate Licensor Proprietary Software.

Field of Use
The Licensee field is the design, development, manufacture, production, testing and sale of instruments, Reagents and Software for DNA sequencing and DNA-based analyses, and the aggregation of data obtained from third parties through the use of such instrumentation, to create either an internet portal or database for the sole purpose of generating sales of additional Instruments and sales of Reagents and Software for DNA-based analysis, and, the providing of sequencing services for any and all uses outside of the Licensor field and inside the Licensor field with prior Licensor approval.

IPSCIO Record ID: 280824

License Grant
Licensor grants a non-exclusive, world-wide, non-transferable license in the Field under the Patent Rights to make, have made, import, use, offer to sell and sell Disposable Licensed Products and Instrument Licensed Products, to practice Licensed Processes and to pass on to Licensees direct and indirect purchasers of Disposable Licensed Products and Instrument Licensed Products the right to practice Licensed Processes in the Field.
License Property
Disposable licensed product shall mean any probe array, substrate, reagent, kit or component or combination thereof in the Field, the manufacture, use or sale of which, but for the licenses granted under this Agreement, would infringe a claim in the Patent Rights.

Instrument licensed product shall mean any instrument, system or component or part thereof in the Field, the manufacture, use or sale of which, but for the licenses and rights granted under this Agreement, would infringe a claim in the Patent Rights.

Field of Use
The Field shall mean systems for detecting hybridization of target DNA/RNA to known DNA/RNA, PNA or other nucleic acid probes. The system will be used only for high and/or low resolution sequence determination and will consist of a micro-fabricated semiconductor device designed to be used with an array of probes attached to a solid support, means for exposing the array of probes to target DNA/RNA (the sample), means for detecting whether or not (and where) hybridization has occurred and means for reporting the results.

IPSCIO Record ID: 240568

License Grant
Licensor hereby grants to the Japanese Licensee and its Affiliates an exclusive royalty-bearing license under Patent Rights and Licensee Know-How, without rights to sublicense, to use Megaclone(TM) technology to provide MPSS(TM) Services and Megasort(TM) Services to customers in the Territory and to make and sell Microarrays containing nucleic acid sequences identified by Megasort(TM) or MPSS(TM) technologies to customers in the Territory, whether or not such nucleic acid sequences were known or described prior to such identification. From and after the fifth anniversary of the Effective Date or upon failure to satisfy the Performance Criteria, whichever occurs sooner, the license rights of this paragraph shall become non-exclusive for the remainder of the term of the Agreement.

Licensor hereby grants to Licensee a worldwide non-exclusive license, without a right to sublicense, to use the trademarks and service marks 'LYNX,' 'MEGACLONE,' 'MPSS,' and 'MEGASORT' (collectively, the 'Licensed Marks') in advertising and other promotional materials related to the use of Licensor Technology hereunder and in packaging, advertising and other promotional materials related to the sale, distribution, and marketing of Microarrays containing nucleic acid sequences identified by Megasort(TM) or MPSS(TM) technologies.

License Property
Megaclone(TM) technology means the technology owned and/or controlled by Licensor for generating a population of microbeads having complementary DNA (cDNA) molecules attached wherein substantially every different cDNA molecule is attached to a different microbead of the population.

A Megaclone(TM) Library means a cDNA library which has been transformed using Megaclone(TM) technology into a population of microbeads each having attached a clonal population of a distinct cDNA molecule. As used herein, Megaclone(TM) technology does not include any process for attaching genomic fragments of DNA to microbeads or any other solid phase support.

Megasort(TM) Service means the analysis of genes expressed in different cell or tissue sources by Megasort(TM) technology.

Megasort(TM) technology means the technology owned and/or controlled by Licensor for detecting and isolating gene products, such as cDNA molecules, differentially expressed in two different cell or tissue sources by fluorescence activated cell sorting (FACS) analysis of a Megaclone(TM) Library to which differently labeled probes derived from the two different cell or tissue sources have been competitively hybridized.

Microarray means a solid phase support containing a plurality of discrete regions such that within each discrete region a single species of nucleic acid is attached. Said nucleic acid may be attached covalently or non-covalently by any method, including, but not limited to, deposition of a solution containing a separately synthesized cDNA, polynucleotide, or oligonucleotide, or in situ synthesis using ink-jet, photolithographic, or any other chemical technologies.

Microarray Spot means a discrete region of a Microarray in which a single species of nucleic acid is attached.

MPSS(TM) Service means the analysis of genes expressed in a cell or tissue by MPSS(TM) technology.

MPSS(TM) technology means the technology owned and/or controlled by Licensor for simultaneously generating signature sequences of cDNAs in a Megaclone(TM) Library disposed in a flow cell using the ligation-based sequencing method described in Brenner et al, Nature Biotechnology.

MPSS(TM) Instrument means an apparatus for carrying out the process steps of MPSS(TM) technology. An MPSS(TM) Instrument consists of the following modules Flow Cell including housing with heating and cooling system, optical/imaging system, fluid delivery system, control/monitoring system, and data collection software.

5,552,278 – DNA sequencing by stepwise ligation and cleavage
5,856,093 – Method of determining zygosity by ligation and cleavage
5,831,065 – Kits for DNA sequencing by stepwise ligation and cleavage

Field of Use
This agreement pertains to genetic analysis.

IPSCIO Record ID: 286054

License Grant
University grants Licensee an exclusive (even as to University), worldwide, irrevocable, non-transferable  license in the Biodiagnostics Field, with the right to sublicense, under the University Patent Rights, to make, have made, use, sell, offer for sale, export and import Licensed Products within the Biodiagnostics Field.

University grants Licensee an exclusive (even as to University), worldwide, irrevocable, non-transferable  license in the Biodiagnostics Field, with the right to sublicense, under the Joint Patent Rights, to make, have made, use, sell, offer for sale, export and import Licensed Products within the Biodiagnostics Field.

University grants Licensee a nonexclusive, worldwide, irrevocable, non-transferable license in the Biodiagnostics Field, with the right to sublicense, to use the Technical Information to design, develop, manufacture, have manufactured, sell, offer for sale, import, and export the Licensed Products within the Biodiagnostics Field.

Each party acknowledges that the other party is a co-owner of an equal and undivided interest in and to the Joint Patent Rights.

License Property
University Patent Rights means
6,709,825 – Nanoparticles having oligonucleotides attached thereto and uses therefor
6,902,895 – Nanoparticles having oligonucleotides attached thereto and uses therefor
7,115,688 – Nanoparticles with polymer shells

Joint Patent Rights means
6361944 – Nanoparticles Having Oligonucleotides Attached Thereto And Uses Therefore

Biobarcode Technology means analysis where oligonucleotides act as surrogate targets or reporter molecules.

Nanoparticle Technology means any technology in the Biodiagnostics Field involving a particle where no single dimension is greater than 100 nm.

Field of Use
Biodiagnostics Field means the qualitative or quantitative in vitro analysis, testing, measurement, or detection of the following specific field subset and target combinations (including products that incorporate in vivo harvesting of test samples for ex vivo testing)
Biodiagnostics Field Subsets – Targets

Human and animal testing (Includes pharmaceutical and biotechnology discovery and development) –
Nucleic acids, proteins, peptides, amino acids, metabolites, therapeutic drugs, drugs of abuse, hormones, sugars, lipids and lipoproteins
Plants – Nucleic acids, proteins, peptides, phytotoxins
Environmental – Pathogens, toxins and biological contaminants

The Biodiagnostics Field excludes the following subject matter and all Biodiagnostics Field applications thereof
(a) therapeutics (including in vitro and in vivo therapy and controlling, modulating, or otherwise affecting gene expression);
(b) technology relating to or derived from dip-pen nanolithography;
(c) environmental applications other than as set forth above;
(d) prismatic particles (including methods of manufacture and uses thereof); and
(e) coordination polymers (including methods of manufacture and uses thereof).
For purposes of clarity, other than with respect to Biobarcode Technology or an Invention where the Licensed Product itself is the surrogate for the target listed above, the term “detection” means the detection of the actual target listed above and not the detection of a surrogate, not listed above, for the target.

IPSCIO Record ID: 291929

License Grant
Licensor hereby grants Licensee a, worldwide, non-transferable, non-exclusive license under Licensor Licensed Technology, to, (1) develop Generic Kits and Standard Kits as authorized in this Agreement, (2) make, have made, and use (which use includes the right to modify) Licensor OEM Kits and (3) distribute, market and sell such Licensor OEM Kits (OEM License) pursuant to the license granted to Licensee as set forth in this Agreement. Licensee agrees to forbear from the use and exercise of the OEM License otherwise a royalty payment will be due.  If Licensee grants any Third Party a license to exploit the TAG Improvements, Licensee shall pay Licensor a royalty.

The purpose of the Collaboration is to develop, manufacture, market and sell (i) Products, and (ii) software applications for Approved Instruments all as set forth in this agreement. The purpose of the Collaboration may be modified and/or extended upon mutual agreement of the Parties in writing.

License Property
Licensor Licensed Technology means Technology Controlled by Licensor and its Affiliates as of the Effective Date that is useful in the Field of Use, as listed or described hereto. Licensor represents and warrants that the items listed hereto comprise all of the Licensor Licensed Technology as of the Effective Date of this agreement. As of the Effective Date the Licensor Licensed Technology does not require payment of royalties to third parties. Licensor and its Affiliates will amend this from time to time to keep it current. Licensor and its Affiliates warrant that all Controlled Technology for carrying out the marketing, sale, and other disposition of Products will be included in the Licensor Licensed Technology.

US Patent 5,888,819 – Method for determining nucleotide identity through primer extension

Product means any of a Standard Kit, a Custom Kit and/or a Generic Kit.

Combination Kit means any Custom Kit that contains Primers more than 50% of which are identical to Primers contained in any part of any Standard Kits existing at the time of launch of such Custom Kit, or any combination of Standard Kits existing at the time of launch of such Custom Kit.

Custom Kit means a kit consisting of certain Reagents, certain Primers that have been customized by Licensor or Licensors subcontractors for use in the Field of Use and an End User License, and shall not include use of or refer to any use of TAG Arrays other than for genotyping with GBA.

Standard Kit means a kit consisting of Reagents, CMC Approved Primers for use in the Field of Use and an End User License.

Generic Kit means a kit consisting of Reagents and an End User License.

Primer means GBA primers (a synthetic oligonucleotide of a sequence known to be complementary with the oligonucleotide sequence immediately adjacent, 5, to a SNP) or either PCR primers or information to generate PCR primers.

Reagent means buffers, enzymes and terminators (but not Primers) useful in GBA.

GBA means Genetic Bit Analysis, or single nucleotide primer extension methods designed to detect the identity of a single nucleotide at a predetermined location in the DNA of a sample.

SNP means Single Nucleotide Polymorphism.

Technology means and includes all inventions, discoveries, improvements, trade secrets and proprietary methods and materials, whether or not patentable, including but not limited to, samples of, methods of production or use of, and structural and functional information pertaining to, chemical compounds, proteins or other biological substances; other data; formulations; techniques; and know-how; including any negative results.

TAG Array means a tag array GeneChip probe array. Each set of probes consists of four probes with the following relationship to a defined target sequence — a perfect match to target sequence, a single base mismatch to target sequence, a perfect match to the complement of target sequence, and, a single base mismatch to the complement of target sequence. For the avoidance of doubt, TAG Arrays include no license (express or implied) authorizing use for any purpose except genotyping with GBA.

TAG Assay means any assays for hybridization to a TAG Array.

TAG improvement is any improvements to TAG Assays.

Field of Use
These new assays will allow researchers to customize high density SNP analyses solely by designing GBA primers for use on a standard GeneChip array.

The first products to be commercialized by the alliance will include reagent kits for use with Licensee's new universal array designed to perform thousands of user-defined SNP analyses.  Licensee has developed and intends to establish its GeneChip® system as the platform of choice for acquiring, analyzing and managing complex genetic information in order to improve the diagnosis, monitoring and treatment of disease.

Field of Use means the use of Product to practice GBA in Tag Array format in Approved Instruments for Research Purposes and clinical reference laboratories where work is performed under the Clinical Laboratory Improvements Act and explicitly excludes Products that have received marketing approval from the FDA.

GeneChip system is a commercial microarray platform that allows whole genome gene expression analysis for a wide variety of experimental organisms.

IPSCIO Record ID: 215217

License Grant
Licensor grants the non-exclusive right to access and use the Licensors functional genomics database and software for genetic, phenotypic and related data and/or information, generated or developed by or on behalf of Licensor from or relating to Knockout Mice, Target Genes and Mutated Genes and entered into one or more databases and Derivative Works thereof made by or on behalf of Licensor , Licensors Proprietary Information and Knockout Mice Materials, solely for internal research use for the purposes contemplated hereby, including, without limitation, research directed toward the discovery, development and commercialization of Products, during the Subscription Term and thereafter with respect to Licensees access to the Phenotype Sets delivered and a non-exclusive world-wide license under Licensors Patent Rights to discover, develop, make, have made, use, offer for sale, sell and import Products. The rights and licenses granted to Licensee shall not include the right to grant sublicenses and are non-transferable.
License Property
Licensors Patent Rights shall mean patents with respect to a Target Gene, any claim covering a nucleic acid molecule, polynucleotide, oligonucleotide or nucleotide sequence comprising the sequence of a Target Gene, or its human ortholog, or Mutated Gene or any derivative thereof, a protein, polypeptide or amino acid sequence comprising an expression product of a Target Gene, or its human ortholog, or Mutated Gene, or portion or fragment thereof, a Knockout Mouse containing within its genome the corresponding Mutated Gene, an ES Cell Line or Frozen Sperm containing such Mutated Gene, or uses of any of the foregoing; and any divisions, continuations, re-issues, re-examinations, extensions or other governmental actions which extend any of the subject matter of the patent applications or patents.

ES Cell Line shall mean, with respect to a Target Gene, the embryonic stem cell line used to produce a line of Knockout Mice containing within their genome the corresponding Mutated Gene.

Field of Use
This agreement is for a database and software for use in diagnostic and therapeutic drug development.

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: 291157

License Grant
Licensor shall (A) grant to Licensee a non-exclusive, non-transferable, royalty-free license to exploit such TAG Improvement for Licensees internal use, and (B) shall include internal use rights to use such TAG Improvement within the licenses granted to Product customers.

The purpose of the Collaboration is to develop, manufacture, market and sell (i) Products, and (ii) software applications for Approved Instruments all as set forth in this agreement. The purpose of the Collaboration may be modified and/or extended upon mutual agreement of the Parties in writing. If Licensee is the Party proposing the development of a new Generic Kit or Standard Kit, and Licensor does not, within sixty (60) days after receipt of such New Kit Notice expressly agree to co-develop the new Generic Kit or Standard Kit described therein, then Licensee may pursue development of the new Generic Kit or Standard Kit independently of Licensor and the result is a combination kit then a royalty will be paid.

License Property
TAG Array means a tag array GeneChip probe array. Each set of probes consists of four probes with the following relationship to a defined target sequence — a perfect match to target sequence, a single base mismatch to target sequence, a perfect match to the complement of target sequence, and, a single base mismatch to the complement of target sequence. For the avoidance of doubt, TAG Arrays include no license (express or implied) authorizing use for any purpose except genotyping with GBA.

TAG Assay means any assays for hybridization to a TAG Array.

TAG improvement is any improvements to TAG Assays.

Product means any of a Standard Kit, a Custom Kit and/or a Generic Kit.

Combination Kit means any Custom Kit that contains Primers more than 50% of which are identical to Primers contained in any part of any Standard Kits existing at the time of launch of such Custom Kit, or any combination of Standard Kits existing at the time of launch of such Custom Kit.

Custom Kit means a kit consisting of certain Reagents, certain Primers that have been customized by Licensee or Licensees subcontractors for use in the Field of Use and an End User License, and shall not include use of or refer to any use of TAG Arrays other than for genotyping with GBA.

Standard Kit means a kit consisting of Reagents, CMC Approved Primers for use in the Field of Use and an End User License.

Generic Kit means a kit consisting of Reagents and an End User License.

Primer means GBA primers (a synthetic oligonucleotide of a sequence known to be complementary with the oligonucleotide sequence immediately adjacent, 5, to a SNP) or either PCR primers or information to generate PCR primers.

Reagent means buffers, enzymes and terminators (but not Primers) useful in GBA.

GBA means Genetic Bit Analysis, or single nucleotide primer extension methods designed to detect the identity of a single nucleotide at a predetermined location in the DNA of a sample.

SNP means Single Nucleotide Polymorphism.

Technology means and includes all inventions, discoveries, improvements, trade secrets and proprietary methods and materials, whether or not patentable, including but not limited to, samples of, methods of production or use of, and structural and functional information pertaining to, chemical compounds, proteins or other biological substances; other data; formulations; techniques; and know-how; including any negative results.

TAG Array means a tag array GeneChip probe array. Each set of probes consists of four probes with the following relationship to a defined target sequence — a perfect match to target sequence, a single base mismatch to target sequence, a perfect match to the complement of target sequence, and, a single base mismatch to the complement of target sequence. For the avoidance of doubt, TAG Arrays include no license (express or implied) authorizing use for any purpose except genotyping with GBA.

TAG Assay means any assays for hybridization to a TAG Array.

Field of Use
The first products to be commercialized by the alliance will include reagent kits for use with Licensor's new universal array designed to perform thousands of user-defined SNP analyses. The companies expect to follow this product launch with additional genotyping products that incorporate additional universal arrays and GBA reagents. Licensee will develop and manufacture GBA primer extension reagent kits that are directed to defined sets of SNPs and that can be customized by the end user. Licensor will develop and manufacture the universal GeneChip arrays.

Field of Use means the use of Product to practice GBA in Tag Array format in Approved Instruments for Research Purposes and clinical reference laboratories where work is performed under the Clinical Laboratory Improvements Act and explicitly excludes Products that have received marketing approval from the FDA.

IPSCIO Record ID: 282834

License Grant
Licensor grants to the Licensee (an affiliate) a non-exclusive, world-wide right and license under the Patent Rights to make, have made, import, use, sell, lease and otherwise dispose of Licensed Products in all fields, uses and applications except for the Bacteriology Field, to practice Licensed Processes, and to pass on to its direct and indirect customers of Licensed Products the right to practice Licensed Processes on any instrument or system distributed by Licensee under a Licensee trademark.
License Property
Licensed Product shall mean any Licensee Array Chip or component thereof or any product, kit, instrument or system which, but for the licenses and rights granted herein, would infringe any valid claim in an unexpired and non-lapsed patent in the Patent Rights.

Licensed Process shall mean any process, method or procedure the practice or use of which, but for the licenses and rights granted herein, would infringe any valid claim in an unexpired and non-lapsed patent in the Patent Rights.

Array Chips shall mean a series of polynucleotides arranged on a substrate to perform quantitative or qualitative analyses.

Licensee Array Chip shall mean an Array Chip which is sold or used by Licensee and, but for the licenses and rights granted herein, would infringe any valid claim in an unexpired and non-lapsed patent in the Patent Rights.

Gene shall mean a nucleic acid sequence or set of sequences encoding a distinct messenger nucleic acid and protein as well as polymorphic variants of such sequence.

Field of Use
The field of use is all fields except Bacteriology field.  Bacteriology Field shall mean and be limited to detection and or identification of bacterial and fungal microorganisms, and/or the determination of antibiotic resistance of such bacterial and fungal microorganisms, in each case limited to use in the Clinical Diagnosis of human disease.

IPSCIO Record ID: 7158

License Grant
Licensor hereby grants to Licensee and its Affiliates, and Licensee accepts the licenses under the Licensed Technology to exclusively use, develop, make, have made, sell, offer to sell, modify, import and otherwise commercially exploit the Licensed Uses and the Licensed Products in the Licensed Territory including, but not limited to, as follows
(1) an exclusive license for the use of the SVM Technology and the Licensed Patents in the Field in the Licensed Territory relating to Licensed Uses and Licensed Products; and

(2) an exclusive license to the Licensed Know-How in the Field in the Licensed Territory, including access to and use of the Computer Software that has been developed by or for Licensor or will be developed by or for the Licensor that may be applicable to Licensed Uses or Licensed Products; and

(3) an exclusive license for the use of Licensed Products in the Licensed Territory.
Sublicense Rights. Licensee may grant sublicenses under any of the licenses granted herein, to import, develop, make, have made, use, modify, offer for sale, and/or sell Licensed Products within the Field.

License Property
LICENSOR is the owner of intellectual property, including patents, pending and issued, and know-how relating to support vector machine and other machine learning technologies which is included within the “SVM Technology” (as defined below), based upon which it has developed, or is engaged in developing, applications including, inter alia, digital image analysis and interpretation, biomarker discovery, and gene/gene product-based and protein-based diagnostic, prognostic and predictive tests.

“SVM Technology” shall mean all technology and ownership claims related to support vector machines and other pattern-recognition algorithms (“SVM”), SVM-Recursive Feature Elimination (“RFE”), and Fractal Genomic Modelling (“FGM”) included in the Licensed Technology.

Licensor owns the Licensed Technology (as defined below), which includes inter alia, coverage of genomic biomarkers related to prostate cancer, pancreatic cancer, colon cancer and other cancers as well as certain interpretation methodologies and software associated with automated image analysis for cytogenetics and flow cytometry testing.

“IVD Test Kit” shall mean any kit or instrument manufactured for sale to third parties, which includes reagents and other supplies that enables such third party purchasers to perform in vitro diagnostic tests on biological samples or any instrument used therewith; provided that, any such IVD Test Kit must be approved by the U.S. Food and Drug Administration (“FDA”) for sales of the IVD Test Kit in the United States, or be approved by any other foreign regulatory bodies for sales of the IVD Test Kit in countries other than the United States. Notwithstanding the foregoing, any instruments sold in conjunction with or pursuant to Licenses E and F described in Sections 1.12.4 and 1.12.5 are excluded from the definition of IVD Test Kit.

“Laboratory Developed Test” shall mean any test, process or procedure used to test or assay any type of patient biological sample, the results of which would then normally be entered into the medical record of the patient providing such biological sample; provided, however, any test, process or procedure performed using an IVD Test Kit shall not be considered to be a Laboratory Developed Test.

“Plasma Prostate Cancer Test” shall mean any Laboratory Developed Test using genes, gene products, or other biomarkers present in blood plasma for differentiating clinically significant prostate cancer from other prostate conditions, including without limitation clinical laboratory testing and clinical trials, but expressly excluding manufacture of IVD Test Kits. For reference purposes, the license granted for the Plasma Prostate Cancer Test is identified as “License B”.

“Pancreatic Cancer Test” shall mean any Laboratory Developed Test using genes, gene products, or other biomarkers present in any type of biological sample for differentiating clinically significant pancreatic cancer from other pancreatic conditions, including without limitation clinical laboratory testing and clinical trials, but expressly excluding manufacture of IVD Test Kits. For reference purposes, the license granted for the Pancreatic Test is identified as “License C”.

“Colon Cancer Test” shall mean any Laboratory Developed Test using genes, gene products or other biomarkers for differentiating clinically significant colon cancer from other colon conditions, including without limitation clinical laboratory testing and clinical trials, but expressly excluding manufacture of IVD Test Kits. For reference purposes, the license granted for the Colon Cancer Test is identified as “License D”.

“Cytogenetics Interpretation System” shall mean any interpretive software and related technology for computer-aided karyotype analysis for genetic screening and detection of chromosomal abnormalities. For reference purposes, the license granted for the Cytogenetics Interpretation System is identified as “License E”.

“Flow Cytometry Interpretation System” shall mean interpretive software and related technology for computer-aided analysis of flow cytometry tests. For reference purposes, the license granted for the Flow Cytometry Interpretation System is identified as “License F”.

“Urine Prostate Cancer Test” shall mean any Laboratory Developed Test using genes, gene products, or other biomarkers present in urine samples for differentiating clinically significant prostate cancer from other prostate conditions, including without limitation clinical laboratory testing and clinical trials, but expressly excluding manufacture of IVD Test Kits. For reference purposes, the license granted for the Urine Prostate Cancer Test is identified as “License G”.

“Tissue Prostate Cancer Test” shall mean any Laboratory Developed Test using genes, gene products, or other biomarkers present in tissue samples for differentiating clinically significant prostate cancer from other prostate conditions, including without limitation clinical laboratory testing and clinical trials, but expressly excluding manufacture of IVD Test Kits. For reference purposes, the license granted for the Tissue Prostate Cancer Test is identified as “License H”.

Licensed Patents
Patent/Application No.
Title
Filing Date/
Expires

Issue Date

Patent/Application No.
Title
Filing Date/
Expires

Issue Date

U.S. Patent No. 6,128,608
Enhancing Knowledge Discovery Using Multiple Support Vector Machines
05-01-1999/
5/1/2019

10/3/2000

U.S. Patent No. 6,157,921
Enhancing Knowledge Discovery Using Support Vector Machines in a Distributed Network Environment
05-01-1999/
5/1/2019

12/5/2000

U.S. Patent No. 6,427,141
Enhancing Knowledge Discovery Using Multiple Support Vector Machines.
05-09-2000/
5/1/2019

7/30/2002

U.S. Patent No. 6,658,395
Enhancing Knowledge Discovery from Multiple Data Sets Using Multiple Support Vector Machines.
05-24-2000/
5/1/2019

12/2/2003

U.S. Patent No. 6,714,925
System for Identifying Patterns in Biological Data Using a Distributed Network.
08-07-2000/
5/1/2019

3/30/2004

U.S. Patent No. 6,760,715
Enhancing Biological Knowledge Discovery Using Multiple Support Vector Machines.
08-07-2000/
5/1/2019

7/6/2004

U.S. Patent No. 6,789,069
Method of Identifying Patterns in Biological Systems and Method of Uses.
08-07-2000/
4/13/2020

9/7/2004

U.S. Patent No. 6,882,990
Method of Identifying Biological Patterns Using Multiple Data Sets.
08-07-2000/
5/1/2019

4/19/2005

U.S. Patent No. 6,944,602
Spectral Kernels for Learning Machines
03-01-2002/
2/19/2023

9/13/2005

U.S. Patent No. 6,996,549
Computer-Aided Image Analysis
01-23-2002/
4/21/2021

2/7/2006

U.S. Patent No. 7,117,188
Methods of Identifying Patterns in Biological Systems and Uses Thereof
01-24-2002/
3/9/2022

10/3/2006

U.S. Patent No. 7,299,213
Method of Using Kernel Alignment to Extract Significant Features from a Large Dataset
09-12-2005/
3/1/2022

11/20/2007

U.S. Patent No. 7,318,051
Methods for Feature Selection in a Learning Machine
11-18-2003/
2/25/2021

1/8/2008

U.S. Patent No. 7,353,215
Kernels and Methods for Selecting Kernels for Use in Learning Machines
11-07-2003/
1/27/2023

4/1/2008

U.S. Patent No. 7,383,237
Computer-Aided Image Analysis
02-06-2006/
11/4/2019

6/3/2008

U.S. Patent No. 7,444,308
Data Mining Platform for Bioinformatics and Other Knowledge Discovery
12-15-2003/
5/28/2022

10/28/2008

U.S. Patent No. 7,475,048
Pre-Processed Feature Ranking for a Support Vector Machine
05-07-2004/
7/22/2021

1/6/2009

U.S. Patent No. 7,542,947
Data Mining Platform for Bioinformatics and Other Knowledge Discovery
10-30-2007/
5/20/2022

6/2/2009

U.S. Patent No. 7,542,959
Feature Selection Method Using Support Vector Machine Classifier
08-21-2007/
8/7/2020

6/2/2009

U.S. Patent No.  7,617,163
Kernels and Kernel Methods for Spectral Data
10-09-2002/

11/10/2009

U.S. Patent No. 7,624,074
Methods for Feature Selection in a Learning Machine
10-30-2007/
8/7/2020

11/24/2009

U.S. Patent No. 7,676,442
Selection of Features Predictive of Biological Conditions Using Protein Mass Spectrographic Data
10-30-2007/
8/7/2020

3/9/2010

U.S. Patent No. 7,788,193
Kernels and Methods for Selecting Kernels for Use in Learning Machines
10-30-2007/
8/6/2023

8/31/2010

U.S. Patent No. 7,797,257
System for Providing Data Analysis Services Using a Support Vector Machine for Processing Data Received from a Remote Source
10-31-2007/
7/28/2020

9/14/2010

U.S. Patent No. 7,805,388
Method for Feature Selection in a Support Vector Machine Using Feature Ranking
10-30-2007/
8/7/2020

9/28/2010

U.S. Patent No. 7,890,445
Model Selection for Cluster Data Analysis
10-30-2007/
6/8/2024

12/15/2011

U.S. Patent No.  7,921,068
Data Mining Platform for Knowledge Discovery from Heterogeneous Data Types and/or Heterogeneous Data Sources
10-30-2007/
5/20/2022

4/5/2011

U.S. Patent No.  7,970,718
Method for Feature Selection and for Evaluating Features Identified as Significant for Classifying Data
09-26-2010/
1/24/2022

6/28/2011

U.S. Patent No.  8,008,012
Biomarkers Downregulated in Prostate Cancer
09-30-2008/
1/13/2026

8/30/2011

U.S. Patent  No. 8,095,483
Support Vector Machine-Recursive Feature Elimination (SVM-RFE)
12-01-2010/
8/7/2020

1/10/2012

U.S. Patent Publ. No. 2005/0165556
Colon Cancer-Specific Biomarkers
01-11-2005/
08-07-2020 + PTA

U.S. Patent Publ. No. 2010/0256988
System for Providing Data Analysis Services Using a Support Vector Machine for Processing Data Received from a Remote Source
06-11-2010/
5/1/2019

U.S. Patent Publ. No. 2011/0106735
Recursive Feature Elimination Method Using Support Vector Machines
11/11/2010
08-07-2020 + PTA

U.S.Patent Publ. No. 2010/0318482
Kernels for Identifying Patterns in Datasets Containing Noise or Transformation Invariances
08-25-2010/
05-07-2022 + PTA

U.S.Patent Publ. No. 2011/0184896
Method for Visualizing Feature Ranking of a Subset of Features for Classifying Data Using a Support Vector Machine
04-04-2011/
05-20-2022  PTA

U.S. Patent Publ. No. 2010/0205124
Support Vector Machine-Based Method for Analysis of Spectral Data
02-04-2010/
08-07-2020 + PTA

U.S.Patent Publ. No. 2011/0125683
Identification of Co-Regulation Patterns by Unsupervised Cluster Analysis of Gene Expression Data
02-02-2011/
05-17-2022 + PTA

U.S. Patent Publication No. 2009/0204557
Method and System for Analysis of Flow Cytometry Data Using Support Vector Machines
02-08-2009/
02-08-2029 + PTA

U.S. Patent Publication No. 2008/0050836
Biomarkers for Screening, Predicting, and Monitoring Benign Prostate Hyperplasia
07-26-2007/
11-14-2025 + PTA

U.S. Patent Publication No. 2009/0215024
Biomarkers Upregulated in Prostate Cancer
02-04-2008/
11-14-2025 + PTA

U.S. Patent Publication No. 2009/0286240
Biomarkers Overexpressed in Prostate Cancer
09-30-2008/
11-14-2025 + PTA

U.S. Patent Publication No. 2009/0215058
Methods for Screening, Predicting and Monitoring Prostate Cancer
12-04-2008/
11-14-2025 + PTA

U.S. Patent Publication No. 2009/0226915
Methods for Screening, Predicting and Monitoring Prostate Cancer
01-06-2009/
11-14-2025 + PTA

U.S.Patent Publication No.  2011/0312509
Biomarkers Downregulated in Prostate Cancer
08-29-2011/
11-14-2025 + PTA

U.S. Patent No. 6,920,451
Method for the Manipulation, Storage, Modeling, Visualization and Quantification of Datasets
01-19-2001/
6/9/2021

7/19/2005

U.S. Patent No. 7,366,719
Method for the Manipulation, Storage, Modeling, Visualization and Quantification of Datasets
10-06-2004/

4/29/2008

Field of Use
“Field” or “Field of Use” shall mean the fields of laboratory testing, molecular diagnostics, clinical pathology, anatomic pathology, and digital image analysis, excluding non-pathology-related radiologic and photographic image analysis, relating to the development, marketing, production or sale of any Laboratory Developed Tests or other products used for diagnosing, ruling out, predicting a response to treatment, and/or monitoring treatment of any or all hematopoietic and solid tumor cancers excluding cancers affecting the retina and breast cancer; provided, however, the manufacture and sale of IVD Test Kits for sales to third parties and the melanoma screening system and methods described in the patent applications listed in Exhibit D are specifically excluded from the Field or Field of Use; and provided further that the foregoing exclusion of “and breast cancer” immediately prior to the first proviso of this section shall be in effect only so long as the License Agreement among and between LICENSOR.

The Licensee is a high-complexity CLIA-certified clinical laboratory that specializes in cancer genetics diagnostic testing. The Licensee's testing services include cytogenetics, fluorescence in-situ hybridization (FISH), flow cytometry, immunohistochemistry, morphology studies, anatomic pathology and molecular genetic testing. Headquartered in Fort Myers, FL, The Licensee services the needs of pathologists, oncologists, urologists and other clinicians, and hospitals throughout the United States.

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.
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