Royalty Report: Medical, Diagnostic, Device – Collection: 306255

License Grant

Assignee re-grants the Assignor certain rights in and to the IP by a License Agreement and Royalty Agreement.

Licensee grants to Licensor an exclusive perpetual license of the IP

(a)
to make, use, and practice the IP for research, clinical, teaching, or other non-commercial purposes, but not for purposes of commercial development, use, manufacture, or distribution of any product in the field of the detection of microbial pathogens other than as authorized with the written consent of Licensee; and

(b)
to make, use, and practice the IP for research, clinical, teaching, or other non-commercial purposes as well as for any commercial purposes including but not limited to commercial development, use, manufacture, or distribution of any product in any field save and except for the field of the detection of microbial pathogens. Licensor covenants not to use the IP for all of the licensed IP rights granted to Licensor.

License Property

The Technology A portable instrument and associated software for measuring fluorescence resonance energy transfer (FRET) between pairs of fluorophores. The instrument, software, and methods developed can be used to measure FRET between any fluorophore pair and can make simultaneous measurements of multiple fluorophore pairs. The present instrument, software, and methods have been developed specifically for measurement of BAI-2 concentrations with single proteins containing FRET pairs and a BAI-2 binding domain. BAI-2 is a quorum-sensing molecule synthesized by bacterial pathogens. By measuring BAI-2, the instrument provides a method for detection of pathogenic bacteria and has applications in several industries including healthcare (the said invented portable instrument and associated software are, collectively, the Technology).

Fluorescence Resonance Energy Transfer or “FRET” is a physical phenomenon that is increasingly being used in biomedical research and drug discovery. It is the distance-dependent transfer of energy from one fluorescent molecule (the donor) to another fluorescent molecule (the acceptor). The transfer of energy leads to a reduction in the donor’s fluorescence intensity and an increase in the acceptor’s emission intensity. Due to its sensitivity to distance, FRET has been used to investigate molecular interactions.

Product means a device for detecting bacteria in bio-samples whereby such device is produced using any of the IP.

Field of Use

The instrument provides a method for detection of pathogenic bacteria and has applications in several industries including healthcare.

Pathogenic bacteria is a disease-causing bacteria. Pathogenic bacteria can contribute to many worldwide diseases, including tuberculosis, cholera, anthrax, leprosy, the bubonic plague, pneumonia, and food-borne illnesses. The most common fatal bacterial infectious diseases are respiratory infections

Licensee has a technology platform that measures the signature of infectious bacteria, enabling real-time and rapid response in medical, veterinary, pharmaceutical and aquatic applications.

License Grant

Licensor grants to Licensee an exclusive perpetual license to make, use, and practice the Patent for research, clinical, teaching, or other non- commercial purposes, but not for purposes of commercial development, use, manufacture, or distribution of any product other than as authorized with the written consent of Licensor.

Assignor hereby assigns to Assignee One Hundred Percent (100%) of its right, title and interest in the invention and IP and any reissues or extensions and for the entire terms of any patents, reissues or extensions that may issue from foreign applications, divisions, continuations in whole or part or substitute applications filed claiming the benefit of the IP. The right, title and interest conveyed in this Assignment is to be held and enjoyed by Assignee and Assignee’s successors as fully and exclusively as it would have been held and enjoyed by Assignor had this Assignment not been made.

License Property

Patent means Improved Fluorescent Resonance Energy Transfer Based Biosensor Proteins and their Methods of Use Thereof, U.S. Provisional Patent No. 62730424, filed on September 12, 2018.

Product means biosensors that use the patented technology described in the Patent.  Förster (or fluorescence) resonance energy transfer (FRET) is a process involving the radiation-less transfer of energy from a donor fluorophore to an acceptor fluorophore. FRET technology enables the quantitative analysis of molecular dynamics in biophysics and in molecular biology, such as the monitoring of protein-protein interactions, protein-DNA interactions, and protein conformational changes. FRET-based biosensors have been utilized to monitor cellular dynamics not only in heterogeneous cellular populations, but also at the single-cell level in real time.

Fluorescence Resonance Energy Transfer or “FRET” is a physical phenomenon that is increasingly being used in biomedical research and drug discovery. It is the distance-dependent transfer of energy from one fluorescent molecule (the donor) to another fluorescent molecule (the acceptor). The transfer of energy leads to a reduction in the donor’s fluorescence intensity and an increase in the acceptor’s emission intensity. Due to its sensitivity to distance, FRET has been used to investigate molecular interactions.

Licensor is a biotechnology company developing solutions to safely and sustainably increase natural crop yield and food security. Its mission is to develop breakthrough disruptive technologies that address the greatest agriculture, aquaculture, and environmental challenges facing the globe.

Field of Use

This agreement pertains to the agriculture industry for solutions to emerging diseases in plant and animal food production.

Licensee has a technology platform that measures the signature of infectious bacteria, enabling real-time and rapid response in medical, veterinary, pharmaceutical and aquatic applications.

License Grant

University grants Licensee (a) an exclusive, non-transferable license, limited to the Territory and the Field, with the right to sublicense, under the Patent Rights to make, have made, use, sell, offer for sale and import Licensed Products; and (b) a non-exclusive, non-transferable license, limited to the Territory and the Field, to use the Technical Information to develop, manufacture and sell Licensed Products.

License Property

Invention PadLock-RCA-Nuclease Protection Lateral Flow Assay (PLAN-LFA) for the Detection of Pathogen Sequences at the Point of Care, known as University Technology # 2020-070 (including the RNA sequence of the same).

Licensed Product(s) means any product, process, or service (a) that is covered by the Patent Rights, infringes the Patent Rights, or would infringe the Patent Rights (but for a valid statutory exception in the U.S. or other countries); (b) the development, manufacture, use, sale or importation of which is, incorporates, uses, or is derived from, any Technical Information; or (c) meeting the qualifications of both (a) and (b).

Patent Rights US Provisional Application No. 62/989,592 “Padlock Probe-Based Rolling Circle Amplification Paired with Nuclease Protection for Point of Need Nucleic Acid Detection”

Field of Use

The field of use relating to this diagnostic device is used for the detection of Pathogen Sequences (infectious diseases) at the Point of Care.  These pathogens or biomarkers can occur in humans or animals, or contaminants in water supplies, foodstuffs, or animal feeds. In public health, sequence data are used to reconstruct the evolution of pathogens, to anticipate future spread, and to target interventions. Such sequence data are increasingly being used to track the spread of pathogens and to predict their phenotypic properties. Both applications have great potential to inform public health and treatment decisions if sequence data can be obtained and analyzed rapidly.

Pathogenic bacteria is a disease-causing bacteria. Pathogenic bacteria can contribute to many worldwide diseases, including tuberculosis, cholera, anthrax, leprosy, the bubonic plague, pneumonia, and food-borne illnesses. The most common fatal bacterial infectious diseases are respiratory infections.

The license certain intellectual property will allow Licensee to develop a device to detect virulent viral pathogens such as HIV, hepatitis C, dengue, Zika and severe acute respiratory syndrome coronavirus 2 (“SARS-Cov-2”), responsible for COVID-19.

Licensee has a technology platform that measures the signature of infectious bacteria, enabling real-time and rapid response in medical, veterinary, pharmaceutical and aquatic applications.

License Grant

This agreement goal is
– To engage University faculty in the development of various detection devices for pathogens like, but not exclusively, SARS-CoV-2, and food-borne pathogens.
– To engage University faculty in the development of various sensors for detection of gases, chemicals and other analytes. Such sensors can include electrochemical sensors that use doped or undoped nanoparticles or bioreagent layers.
– To engage University faculty in the improvement of Licensees detection platforms including increasing sensor sensitivity and specificity of target analytes as well as produce antifouling agents, gels (hydrogel, sol-gel and aero-gel) polymers, coatings and technologies that help sensor stability and prolong accurate readings in the food cold chain.
– To engage University service facilities and roll-to-roll capabilities for scale-up manufacturing of thin film, paper-based nanoelectronic devices and various printing of sensors and microelectronics.

University grants a first option to exclusively license Project IP, and agrees to reasonably timely notify Licensee of the Project IP. This notification will identify all contributors of the disclosed Project IP and the final inventorship and ownership of the corresponding intellectual property will be determined at the time of drafting and filing the intellectual property.

The Parties shall negotiate in good faith the terms of an exclusive license which shall be in University’s standard form, and will contain terms and conditions customary to copyright, patent and technology licenses normally granted by University, including without limitation a defined licensed field; terms consistent with the provisions of U.S. law applicable to intellectual property funded in whole or in part by the U.S. Government; a reservation of the rights to practice and to grant other not-for-profit organizations the right to practice the Project IP for research, teaching and other incidental educational purposes; license fees; royalty payments; milestone payments; reimbursement of expenses; commercially reasonable due diligence obligations for the development and commercialization of the Project IP, the right of Licensor to terminate the license for failure to meet specified due diligence milestones; liability limitations; warranty disclaimers consistent with an “as is” license; and indemnity and insurance provisions in favor of University.

The Parties shall negotiate in good faith the terms of a non-exclusive license which shall be in University’s standard form, and will contain terms and conditions customary to copyright, patent and technology licenses normally granted by University, including without limitation a defined licensed field; terms consistent with the provisions of U.S. law applicable to intellectual property funded in whole or in part by the U.S. Government; a reservation of the rights to practice and to grant other not-for-profit organizations the right to practice the Project IP for research, teaching and other incidental educational purposes; reimbursement of expenses; commercially reasonable due diligence obligations for the development and commercialization of the Project IP, liability limitations; warranty disclaimers consistent with an “as is” license; and indemnity and insurance provisions in favor of University.

License Property

University is a developer of intellectual property related to the detection of COVID-19, including a portable test for COVID-19 and a cell phone integrated device for the detection of analytic targets.

Field of Use

Licensee is a for profit, high technology sensor company that produces sensors for medical diagnostics, among other things.  The Licensee intends that the researchers can quickly develop a point of care detection device for COVID-19 and other pathogens that could be capable of transmitting detection data to disease control centers. Such technology intends to enable quicker treatment and preventive measures, and significantly help to contain massive disease outbreaks.

License Grant

Licensee is hereby granted the non-exclusive right to make and have made, to use and to have used, to sell and have sold Licensed Products and to practice Licensed Processes and to use the Technology, in the Territory, all in accordance with this Agreement.

License Property

ViriChipâ„¢ A novel, patented device for detection and identification of known and unknown pathogens. US Patent No. 6,897,015 and US Patent Application No. 20050239193
Chip On A Tipâ„¢ (COAT) A patented ultraminiaturized device for detection of biomarkers from extremely small sample volumes (e.g., a single cell). US Patent No. 7,344,832
Force Panning A patented method for differentiating between materials bound to surfaces by virtue of their binding force. US Patent No. 7,060,448 and US Patent Application No. 20050059091
Force Assessment Screening Technology (FAST) A novel method for screening intermolecular interactions based on direct force measurements at the molecular level. US Patent Application No. 20030186311

CellWellâ„¢ A novel device for detection of multiple biomarkers from a single cell.
NanoArrays. Protein arrays with sub-micron feature sizes. US Patent No. 6,573,369