Royalty Report: Drugs, Pain, Disease – Collection: 310525

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 12

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: 12

Primary Industries

  • Drugs
  • Pain
  • Disease
  • Therapeutic
  • Pharmaceuticals
  • Delivery
  • Biotechnology
  • Diabetes Treatment

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: 310525

License Grant
Licensor grants a sole and exclusive license, including the right to sublicense, to all of the Intellectual Property Rights including the rights to develop,  use, market, promote, and sell the Product in the Territory.

For the Option for additional Territories of Canada and Mexico, Licensor grants an option to extend this Agreement to cover a sole and exclusive, license, on royalty terms that are substantially similar to those set forth in this Agreement, with the right to sublicense, to the Intellectual Property Rights including the right to develop, use, market, promote, and sell Product in Canada and Mexico.

For the Trademark License Grant, Licensor grants an exclusive right and license, to use the Trademark in connection with the marketing, promotion, advertising, and sale or other distribution of the Product in the Territory.

For the Submission Package, Licensor grants an option for a sole and exclusive license, with the right to sublicense, to the Intellectual Property Rights including the right to develop, use, market, promote, and sell a topical formulation of lidocaine in a gel formulation (Development Product), whether sold over-the-counter or by prescription, for human use which falls within the claims of the Licensed Patents.

If Licensee exercises its option, the parties agree to license such Intellectual Property Rights on terms to be mutually agreed to by the parties.based substantially on the terms of this Agreement.

License Property
Licensor is the owner of certain patents, know-how and trademarks for the topical treatment of post-herpetic neuralgia, other forms of neuralgia and neuropathy and has the right to grant licenses to said patents, know-how, and trademarks.

The Patents are titled Method for Treating Nerve Injury Pain Associated with Shingles;  Method for Treating Nerve Injury Pain Associated with Shingles Herpes-Zoster and Post-Herpetic Neuralgia) by Topical Application Of Lidocaine;  Method for Treating Pain Associated with Herpes Zoster and Post-Herpetic Neuralgia;  and,  Method for Treating Nerve Injury Pain Associated with Shingles (Herpes-zoster and Post Herpetic Neuralgia) by Topical Application of Lidocaine.

Product means any topical formulation of lidocaine in a bandage and/or transdermal (Patch) formulation, whether sold over-the counter or by prescription, for human use which falls within the claims of the Licensed Patents.

Trademark shall mean the trademarks LIDODERM or TAKON that may be used to market the Product in the Territory.

Lidocaine patches are used to relieve the pain of post-herpetic neuralgia (PHN; the burning, stabbing pains, or aches that may last for months or years after a shingles infection). Lidocaine is in a class of medications called local anesthetics. It works by stopping nerves from sending pain signals.

Field of Use
This agreement is for the topical treatment of post-herpetic neuralgia, other forms of neuralgia and neuropathy in the United States.

Lidoderm(R) (Lidocaine Patch 5%) is a transdermal pharmaceutical patch product for the treatment of post-herpetic neuralgia.

Postherpetic neuralgia is the most common complication of shingles. The condition affects nerve fibers and skin, causing burning pain that lasts long after the rash and blisters of shingles disappear. The chickenpox (herpes zoster) virus causes shingles.

Licensee is a pharmaceutical company engaged in research, development, and marketing of various products, including pain management products.

IPSCIO Record ID: 256229

License Grant
Licensee desires to acquire certain assets and rights pertaining to Eladur® and obtain a license to Licensor's proprietary TRANSDUR® transdermal delivery technology and other intellectual property to develop and commercialize Eladur®, and Licensor desires to transfer such assets and grant such a license to Licensee.

For the  License to Product, Licensor grants an exclusive license under the Licensed Technology, other than specific third party patents, solely to make, have made, use, import, sell, offer for sale and otherwise develop and Commercialize Products in the Field in the Territory, and, as permitted, an exclusive sublicense under Licensors license to Licensee Patents solely to make, have made, use, import, sell, offer for sale and otherwise Develop and Commercialize Products that contain bupivacaine, and no other Bupivacaine compound as the sole active ingredient, in the Field in the Territory.

Licensor grants to a limited right to use the trademark 'TRANSDUR®' solely in connection with the sale and marketing of Products in the Field within the Territory in accordance with this Agreement.

License Property
Licensor owns and controls rights in and to its product known as Eladur®, which is a transdermal bupivacaine patch based on Licensors proprietary TRANSDUR® transdermal delivery technology.

Bupivacaine shall mean bupivacaine, or any enantiomer, polymorph, salt form, racemate, isomer, diastereomer, tautomer, solvate, hydrate, or ester of bupivacaine.

Product shall mean any transdermal patch containing Bupivacaine as the sole active ingredient, including Eladur® as further described in IND No. 75,436.

TRANSDUR® Technology is defined as pharmaceutical transdermal patch drug delivery systems for use with a range of pharmaceutical preparations for sustained release of medication into the body, wherein the transdermal patch comprises a backing layer; a pressure-sensitive adhesive layer; and a release liner, wherein the pressure-sensitive adhesive layer comprises active agent, polyisobutylene, and plasticizer.

ELADUR is an investigational transdermal drug patch intended to deliver bupivacaine for up to 3 days from a single application.
Bupivacaine is an anesthetic (numbing medicine) that blocks nerve impulses in your body. Bupivacaine is used as a local (in only one area) anesthetic. Bupivacaine is given as an epidural injection into the spinal column to produce numbness during labor, surgery, or certain medical procedures.

Field of Use
The agreement is for the rights to develop and commercialize ELADUR®, Licensor's investigational transdermal bupivacaine patch for the treatment of pain associated with post-herpetic neuralgia (PHN).

Postherpetic neuralgia s the most common complication of shingles. The condition affects nerve fibers and skin, causing burning pain that lasts long after the rash and blisters of shingles disappear. The chickenpox (herpes zoster) virus causes shingles.  Postherpetic neuralgia is a painful condition that affects your nerves and skin. It is a complication of herpes zoster, commonly called shingles. When the pain caused by shingles doesn't go away after the rash and blisters clear up, the condition is called postherpetic neuralgia.

IPSCIO Record ID: 6808

License Grant
The Licensee entered into a License Agreement with the Licensor, for the sole and exclusive right to develop, use, market, promote and sell Lidoderm in the United States. In addition, The Licensee pays the Licensor non-refundable royalties based on net sales of Lidoderm. Royalties are recorded as a reduction to net sales due to the nature of the License Agreement and the characteristics of the License involvement by the Licensor in Lidoderm.
License Property
Lidoderm® (lidocaine patch 5%) is an FDA approved lidocaine -based patch, available by prescription, that can be applied to the skin for pain relief from postherpetic neuralgia, commonly called after-shingles pain.
Field of Use
The rights granted apply to the medical industry.

IPSCIO Record ID: 273277

License Grant
Licensor grants a royalty-bearing, exclusive right and license, with the right to grant sublicenses under the Licensor Intellectual Property and Licensor Product Registration Data to develop, market, use, sell, offer for sale and import the LidoPAIN® BP Product within the Territory and develop, make, have made, manufacture, market, use, sell, offer for sale and import the Licensee BP Product in the Territory.
License Property
Licensor is currently developing a topical lidocaine patch product currently known as LidoPAIN® BP.

Licensed Products means, collectively, the Licensee BP Product and the LidoPAIN® BP Product.

LidoPAIN® BP Product means a non-sterile adhesive backed topical patch, for sale by prescription only, containing lidocaine as the only active ingredient and indicated, and approved by the FDA, for the treatment of acute low back pain or a substantially similar indication.

Licensee BP Product means a non-sterile adhesive backed topical patch, for sale by prescription only, containing lidocaine as the only active ingredient.

Field of Use
The field of use is for the treatment of acute low back pain and owns patents covering the use of a topical lidocaine patch product for the treatment of low back pain.

IPSCIO Record ID: 369241

License Grant
Licensor grants to the Licensee of Ireland
– the exclusive right and license to make, have made, use, offer for sale, sell and import the Product in the Territory, including the right to record sales for its own account;
– in each case, solely for use in the Field and Territory and in connection with Licensees development and Commercialization of the Product and to otherwise exercise Licensees rights and perform its obligations under this Agreement
Know-How;
— an exclusive license under the Product Patents Rights and Product
— an exclusive license under the SAIB Patent Rights;
— an exclusive license under the Re-appliable Patent Rights; and
— an exclusive sublicense under Licensors license to the Epicept Intellectual Property; and,
– an exclusive license and right of cross-reference to all Development Data Controlled by Licensor in existence as of the Effective Date solely to exercise its rights and licenses under this Agreement with respect to the Product.

Licensor grants an exclusive license to use the Licensor Trademark in the Territory solely in connection with the Commercialization of Product in the Territory.

License Property
Licensor is the owner of a proprietary product for pain treatment consisting of a bupivacaine transdermal patch as described below and certain patents and know-how relating thereto.

Product means the product under development by Licensor currently known as ELADURâ„¢.

Bupivacaine means 1-butyl-N-(2,6-dimethylphenyl) piperidine-2-carboxamide, including any and all pharmaceutically acceptable salts, solvates, prodrugs, esters, free base forms, enantiomers (and racemic or other mixtures of said enantiomers) thereof.

Topical Bupivacaine Product means any formulation containing Bupivacaine, either alone or in combination with one or more other active ingredients. for use in the Field.

Licensor Trademark means the trademark rights to the mark ELADURâ„¢ and similar rights under the laws of any Governmental Entity, including all goodwill associated therewith, and all applications, registrations, extensions and renewals relating thereto.

Patents rights include Transdermal Delivery System, and, Methods for Transdermal Drug Administration.

Field of Use
ELADUR is an investigational transdermal drug patch intended to deliver bupivacaine for up to 3 days from a single application.

Bupivacaine is a prescription medication used as a local anesthetic (numbing medicine). Bupivacaine blocks the nerve impulses that send pain signals to your brain.  Bupivacaine injection is used to numb an area of your body during or after surgery or other procedures, childbirth, or dental work.

The Field means all pharmaceutical applications, including the treatment of pain, for human health.

IPSCIO Record ID: 256269

License Grant
Licensor grants an exclusive license, with the right to grant sublicenses under the Licensor Licensed Patents and Patents within the Licensor Improvements to make, have made, develop, use, sell, offer for sale, have sold, and import Licensed Products in and for the Field throughout the Territory.
License Property
Licensor has certain patent rights relating to methods and compositions for use in the topical treatment of back pain, muscle tensions and myo-fascial pain, where such methods and compositions feature a topical carrier system containing a local anesthetic agent and are intended for use on intact mammalian skin and/or outer synovial membranes, and certain additional patent rights relating to methods and compositions that include the use of certain intradermal pharmaceutical penetration enhancing excipients.

“Licensed Product” means a transdermal pharmaceutical patch product for sale only by prescription containing bupivacaine as the only active ingredient, indicated and approved by a Regulatory Authority for use in the Field, wherein such product and/or indication is covered by a Valid Claim of the EpiCept Licensed Patents or a Valid Claim of a Patent under the EpiCept Improvements.

Field of Use
The Field shall mean all pharmaceutical applications for the palliative, prophylactic and/or therapeutic treatment of Back Pain in humans.

IPSCIO Record ID: 6647

License Grant
The Company entered into a License Agreement granting exclusive rights to develop and commercialize DM-1796 for pain indications in the United States, Canada and Mexico.
License Property
DM-1796 is for post-herpetic neuralgia.
Field of Use
In March 2010, the Licensee submitted a New Drug Application for DM-1796 to the U.S. Food and Drug Administration for the management of post-herpetic neuralgia.

IPSCIO Record ID: 3948

License Grant
Licensor grants to Dutch Licensee under the Licensor's Technology (i) an exclusive license to develop, have developed, make, have made, use, market, have marketed, promote, have promoted, commercialize, have commercialized, exploit, import, export, sell, have sold and offer to sell the Product and (ii) a nonexclusive license to develop, have developed, make, have made, import and export the Product.

The Licensor will remain responsible for completion of the ongoing Phase 3 clinical trial for DM-1796 for the treatment of pain associated with post-herpetic neuralgia.  The Licensee will be responsible for the NDA filing and has the option to develop DM-1796 in further pain indications other than post-herpetic neuralgia.

License Property
Licensor has used its proprietary AcuForm™ gastric retentive technology to develop an oral dosage form of gabapentin known as Gabapentin GR®, and is conducting Phase III clinical development of Gabapentin GR®.

“Product” means the product known as Gabapentin GR® in the formulation and at the dosage being studied in Depomed Protocol 81-0062, “A Phase 3 Multicenter, Randomized, Double-Blind, Placebo-Controlled, Flexible-Dose Study of the Safety and Efficacy of Gabapentin Extended Release (G-ER) Tablets in the Treatment of Patients with Postherpetic Neuralgia,” dated the 25th day of January, 2008, and any alternative strengths of such dosage form, or line extensions of such product for use within the Field.

Extending the duration of drug release within the stomach during the fed mode

6,340,475

1/22/2002

U.S.

Extending the duration of drug release within the stomach during the fed mode

6,635,280

10/21/2003

U.S.

Optimal polymer mixtures for gastric retentive tablets

6,723,340

4/20/2004

U.S.

Tablet shapes to enhance gastric retention of swellable controlled-release oral dosage form

6,488,962

12/3/2002

U.S.

Methods of Treatment using a Gastric Retained Gabapentin Dosage

7,438,927

10/21/2008

U.S.

Field of Use
Field means the treatment or amelioration of pain, including without limitation treatment of post-herpetic neuralgia (“PHN”), pain associated with diabetic neuropathy (“DPN”), Phantom Pain and fibromyalgia.

IPSCIO Record ID: 3523

License Grant
On April 3, 2014, the parties entered into a Waiver and Amendment to the License Agreement, dated June 29, 2007, by and between us and Dalhousie, effective February 4, 2014.  Pursuant to the Amendment, the University has agreed to irrevocably waive the Licensee's obligation to pay a maintenance fee that was due on August 27, 2012 and August 27, 2013 and in any subsequent year. In addition, the parties have agreed to royalties. The parties also agreed to amend the timing and increase the amounts of the milestone payments payable under the Agreement.  In the original 2007 agreement, the Licensee was granted an exclusive license to certain patents for the topical use of tricyclic anti-depressants and NMDA antagonists as topical analgesics for neuralgia. The license covers worldwide rights to make, use, develop, sell and market products utilizing the licensed technology in connection with passive dermal applications.
License Property
These and other patents cover the combination treatment consisting of amitriptyline and ketamine in AmiKet. This technology has been incorporated into AmiKet.  It is indicated for post herpetic neuralgia, diabetic peripheral neuropathies, chemotherapy induced peripheral neuropathy, and erythromelalgia.
Field of Use
AmiKet has completed phase 1 and 2 clinical trials involving 1,600 subjects for the treatment of neuropathic pain.

Neuropathic pain is pain caused by damage or disease affecting the somatosensory nervous system. Neuropathic pain may be associated with abnormal sensations called dysesthesia or pain from normally non-painful stimuli (allodynia).

IPSCIO Record ID: 28144

License Grant
The Licensee entered into a binding memorandum of understanding the Israeli Licensor, the technology transfer company of the University, regarding certain patents in connection with nanoparticles for topical delivery of the Licensee's neuropathic pain drug candidate ready for a Phase III clinical trial. The parties will be entered into a definitive license agreement within six months of the date of the MOU for the commercial development and marketing of the Technology worldwide.
License Property
The Licensor's patents in connection with nanoparticles for topical delivery for the Licensee's neuropathic pain drug candidate.
Field of Use
The pain compound AmiKetâ„¢, a topical cream consisting of a patented combination of amitriptyline and ketamine that is in late stage development for the treatment of peripheral neuropathies and has received Orphan Drug Designation for Post Herpetic Neuralgia.

IPSCIO Record ID: 285022

License Grant
Licensor grants to Licensee an exclusive, as to all persons including Licensor and its affiliates, customers, agents, successors and/or assigns, sublicense able right and license under the Licensed Technology to use, promote, offer for sale, import, export, sell and distribute Licensed Products within the Field throughout the world.
License Property
The patents are Solubilization and Targeted delivery of drugs with self-addembling amphiphilic polymers; and, Self-assembling Amphiphilic Polymers as Antiviral Agents.

Varicella zoster is a virus. It causes chickenpox, also called varicella and shingles, called herpes zoster. After the chickenpox runs its course, the virus retreats to nerve tissues near your spinal cord and brain, where it hides out.

Field of Use
The field of use is  the treatment of varicella zoster virus-derived indications, which includes shingles and chickenpox virus.

IPSCIO Record ID: 253915

License Grant
Licensor grants the Licensee, of England, an exclusive license, with the right to grant sublicenses, under the Licensor Patents and Licensor Know-How to develop, use, make, have made, offer for sale, sell, import, market, distribute and promote the Compound and Products, in each case solely in the Field in the Territory.

Licensee shall have a non-exclusive license, with the right to grant sublicenses, to use the Licensor Trademarks solely for market research and other similar activities to determine whether Licensee will use the Licensor Trademarks or Licensee Trademarks in connection with the commercialization and promotion of the Product in the Field in the Territory.

License Property
Licensor has developed a Transported Prodrugâ„¢ of gabapentin for the treatment of restless legs syndrome (RLS) and the management of neuropathic pain (which includes post-herpetic neuralgia and diabetic peripheral neuropathy.

The Compound shall mean that certain compound, referred to internally at Licensor as XP13512, and all esters, hydrates, metabolites [(excluding gabapentin), polymorphs, prodrugs of gabapentin], salts, solvates, isomers and/or mixtures of isomers thereof.

The patents are for the Compound Family,  Analog Prodrug Sustained Release Oral Dosage Form Families, Crystalline Form Family, Convergent Synthesis Family, Alternative Synthesis Method Families,  Therapeutic Use to treat RLS Family, Therapeutic Use to treat Hot Flashes Family,  Therapeutic Use to treat Incontinence Family,  Therapeutic Use to treat Premature Ejaculation Family,  Therapeutic Use to treat Vulvodynia Family,  Therapeutic Use to treat Tinnitus Family,  and,  Topical Composition/Use to treat Local Pain Family.

XP13512 is a patented, new chemical entity that is designed to improve upon the clinical utility of gabapentin by taking advantage of high-capacity transport mechanisms in the gut to improve absorption.

Field of Use
XP13512 is currently in Phase III development for Restless Legs Syndrome (RLS) and in Phase II development for neuropathic pain.

Restless legs syndrome (RLS) is a condition that causes an uncontrollable urge to move your legs, usually because of an uncomfortable sensation. It typically happens in the evening or nighttime hours when you're sitting or lying down. Moving eases the unpleasant feeling temporarily.

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