Royalty Report: Drugs, Respiratory, Viral Infection – Collection: 314368

License Grant

University grants to Licensee an exclusive, worldwide license under the Licensed Patents in the Field of Use to (a) make, have made, use, offer for Sale, import, and Sell Licensed Products and Licensed Services, and (b) to practice Licensed Methods.

University grants to Licensee a nonexclusive, royalty-fee bearing, worldwide license for Licensed Technical Knowledge to manufacture, have made, use, offer for Sale, import, and Sell Licensed Products and Licensed Services. In furtherance of the foregoing, University will not grant a license to the Licensed Technical Knowledge to any third party to commercialize a product in the Field of Use that would be competitive with the Licensed Patents or Licensee’s use or proposed use of the Licensed Patents and/or Licensed Technical Knowledge, absent Licensee’s prior written consent.

License Property

United States Provisional Patent Application no. 63/001,308; Methods of Inhibiting or Treating a Coronavirus Infection; Filing date March 28, 2020; University ref. #20050.

Licensed Patents means (a) the United States and foreign patents and/or patent applications identified in the Agreement; (b) any and all patents issuing from the foregoing; (c) any and all claims of continuation-in-part applications that claim priority to the United States patent applications identified in the Agreement, but only where such claims are directed to inventions disclosed in the manner provided in 35 U.S.C. § 112(a) in the United States patent applications identified in the Agreement, and such claims in any patents issuing from such continuation-in-part applications; (d) any and all foreign patent applications, foreign patents or related foreign patent documents that claim priority to the patents and/or patent applications identified in the Agreement; and (e) any and all divisionals, continuations, reissues, reexaminations, renewals, substitutions, and extensions of the foregoing. Any claim of a pending or of an issued and unexpired Licensed Patent is presumed to be valid unless it has been held to be invalid by a final judgment of a patenting authority or a court of competent jurisdiction from which no appeal can be or is taken.

Licensed Product means any product, material, kit, or other article of manufacture or composition of matter, the making, use, Sale, or offer for Sale, or import of which, absent the license granted pursuant to this Agreement, infringes, induces infringement, or contributes to infringement of a Licensed Patent and/or embodies, contains, uses, is used or made through the use of, or was in whole or part derived from Licensed Technical Information.

Licensed Service means a service provided using Licensed Products or Licensed Methods, including, without limitation, any such service provided in the form of contract research or other research performed by Licensee on behalf of a third party.

Licensed Method means any process or method, the use or practice of which, absent the license granted pursuant to this Agreement, infringes or contributes to or induces the infringement of a Licensed Patent or relies on Licensed Technical Knowledge.

Licensed Technical Knowledge means proprietary data and information which are not generally known that are acquired and controlled by University and are provided to Licensee by University in order to practice the Licensed Patents. Technical Knowledge shall be limited only to those proprietary data and information to which University has an ownership or other interest during the term of this Agreement; all to the extent and only to the extent that University has the right to grant licenses or other rights thereunder.

Field of Use

The License granted is for the use in all medical fields relating to the treatment of diseases, including the Coronavirus Infection.

Coronaviruses are a group of related RNA viruses that cause diseases in mammals and birds. In humans and birds, they cause respiratory tract infections that can range from mild to lethal.

License Grant

University grants to Licensee an exclusive, worldwide license under the Licensed Patents in the Field of Use to (a) make, have made, use, offer for Sale, import, and Sell Licensed Products and Licensed Services, and (b) to practice Licensed Methods.

University grants to Licensee a nonexclusive, royalty bearing, worldwide license for Licensed Technical Knowledge to manufacture, have made, use, offer for Sale, import, and Sell Licensed Products and Licensed Services.

License Property

Licensed Patents means (a) the United States and foreign patents and/or patent applications identified; (b) any and all patents issuing from the foregoing; (c) any and all claims of continuation-in-part applications that claim priority to the United States patent applications identified, but only where such claims are directed to inventions disclosed in the manner provided in 35 U.S.C. § 112(a) in the United States patent applications identified, and such claims in any patents issuing from such continuation-in-part applications; (d) any and all foreign patent applications, foreign patents or related foreign patent documents that claim priority to the patents and/or patent applications identified; and (e) any and all divisionals, continuations, reissues, reexaminations, renewals, substitutions, and extensions of the foregoing.

*
United States Provisional Patent Application no. 62/575,858 (abandoned); Compounds, their preparation, related compositions, and uses thereof; Filing date October 23, 2017; University ref. #17036 and #16069.
*
United States Provisional Patent Application no. 62/669,926 (converted); Compounds, their preparation, related compositions, and uses thereof; Filing date May 10, 2018; University ref. #17036 and #16069.
*
PCT Patent Application no. PCT/US19/31885 (pending); Inhibitors of the ras oncoprotein, methods of making, and methods of use thereof; Filing date May 10, 2019; University ref. #17036 and #16069.

Invention(s) means a valuable invention or inventions as described in University Case Nos. 16069 and 17036, was/were developed during the course of research conducted at University by the individuals hereinafter listed in this Agreement.

Licensed Product means any product, material, kit, or other article of manufacture or composition of matter, the making, use, Sale, or offer for Sale, or import of which, absent the license granted pursuant to this Agreement, infringes, induces infringement, or contributes to infringement of a Licensed Patent and/or embodies, contains, uses, is used or made through the use of, or was in whole or part derived from Licensed Technical Information.

Licensed Technical Knowledge means proprietary data and information which are not generally known that are acquired and controlled by ULRF and are provided to Licensee by ULRF in order to practice the Licensed Patents. Technical Knowledge shall be limited only to those proprietary data and information to which ULRF has an ownership or other interest during the term of this Agreement; all to the extent and only to the extent that ULRF has the right to grant licenses or other rights thereunder.

Licensed Service means a service provided using Licensed Products or Licensed Methods, including, without limitation, any such service provided in the form of contract research or other research performed by Licensee on behalf of a third party.

Licensed Method means any process or method, the use or practice of which, absent the license granted pursuant to this Agreement, infringes or contributes to or induces the infringement of a Licensed Patent or relies on Licensed Technical Knowledge.

The University is a research institution for the purpose of promoting and supporting research projects, investigations, and other activities relating to the educational, scientific, literary, artistic, health care and public service missions of the University.

The RAS oncogenes comprise the most frequently mutated class of genes in human cancers, which is why targeting RAS has been fiercely pursued for decades.

Cells can proliferate uncontrollably when hyper-activating mutations occur in one of the three human RAS gene isoforms (KRAS, HRAS or NRAS). These RAS mutations are present in approximately one-third of all cancers, including a high percentage of pancreatic, colorectal and lung cancers. Although drugs that target downstream signaling of RAS are available, they have shown limited clinical activity (most likely because RAS acts like a hub that activates multiple effectors). As such, blocking any single pathway, or even two, typically provides disappointing clinical effect. By contrast, the RAS-F small molecules' intended mechanism of action is to inhibit or block the binding of mutated RAS to their effector proteins, thereby leaving the proteins from mutated RAS unable to cause further harm.

Field of Use

Intellectual property covers the 'RAS-F' family of RAS oncogene protein-protein interaction inhibitor small molecule drug candidates. Licensee will evaluate these patent-pending compounds in order to identify a lead drug candidate for further development against one or more cancers.

Licensee is a biotechnology company focused on developing novel therapeutics for the treatment of cancer and infectious diseases.

License Grant

Licensor hereby grants to Licensee (a) an exclusive license, with the right to sublicense to Sublicensees, under the Licensed Product Rights to research and develop Product Candidates in one or more Project Fields in the Territory during the term of this Agreement (the Development License); and (b) an exclusive (even as to Licensor) license, with the right to sublicense to Sublicensees, under the Licensed Product Rights to use, sell, have sold, make, have made, offer for sale, or import Products in one or more Indications in the Territory (the Product License) during the term of this Agreement.

License Property

Licensor Patent Rights shall means
IAN PCT/US2020/048370
IPN WO 2021/041787 A1; published 4 March 2021
Entitled COMPOSITIONS AND METHODS FOR TREATING VIRAL INFECTIONS

U.S. Provisional Application No. Serial No. 63/157,676 Filed March 6, 2021,
Entitled COMPOSITIONS AND METHODS FOR TREATING AND PREVENTING CORONAVIRUS INFECTIONS

Delivery Technology means all Know-How Rights Controlled by Licensor as of the Effective Date or during the term of this Agreement to the extent Covering (a) formulating nucleic acids into applicable gene constructs to enable the delivery of such nucleic acids specifically by utilizing (i) AAV-mediated gene transduction technology or (ii) nanoparticle DNA delivery technology, in each case to target cells in vivo in humans for the purposes of one or more Indications; or (b) techniques, methodologies, procedures or processes for such delivery for such purposes; or (c) any Improvements to the foregoing.

Field of Use

Project Field shall mean Coronavirus Project Field, Influenza Project Field or Combination Project Field.

Coronavirus means any coronavirus, variants or sub-variants thereof (including without limitation severe acute respiratory syndrome coronavirus 2 (“SARS-CoV-2”) and any variants or sub-variants of SARS-CoV-2), as such coronaviruses, variants or sub-variants thereof are named and classified during the term of this Agreement by the International Committee on the Taxonomy of Viruses (the “ICTV”), the World Health Organization (the “WHO”) or applicable Regulatory Authority.

Coronavirus Project Field shall mean in vivo gene transduction utilizing the Delivery Technology for Coronavirus Indication. Coronavirus Indication means (a) the treatment of any disease arising from Coronavirus in humans or (b) prevention of such diseases in humans.

Combination Project Field shall mean in vivo gene transduction utilizing the Delivery Technology for any Combination for Combination Indication.

Influenza Project Field shall mean in vivo gene transduction utilizing the Delivery Technology for Influenza Indication.

License Grant

University hereby grants and Licensee hereby accepts an Exclusive license under the Licensed Patents and Licensed Materials to make, have made, import, use, lease, sell and offer for sale and otherwise commercialize and exploit Licensed Products in the Licensed Territory, and practice any method process or procedure within the Licensed Patents in the Licensed Territory.  Said license is Exclusive, including the right to sublicense  in the Licensed Field of Use for a term commencing as of July 1, 1997 and ending on the expiration of the last to expire of the Licensed Patent(s).  University shall have the right to practice the Invention(s) and use the Technology for its own bona fide research, including sponsored research and collaborations. University shall have the right to publish any information included in Licensed Materials and Licensed Patent(s).

License Property

Licensed Product(s) means any product or part thereof in the Licensed Field of Use, the manufacture, use, or sale of which

(a)I s covered by a valid claim of an issued, unexpired Licensed Patent(s) directed to the Invention(s). A claim of an issued, unexpired Licensed Patent(s) shall be presumed to be valid unless and until it has been held to be invalid or unenforceable by a final judgment of a court of competent jurisdiction from which no appeal can be or is taken or is disclaimed, or rejected or found invalid or unenforceable in a reissue application or re- examination proceeding or otherwise;
  
(b) Is covered by any claim being prosecuted in a pending application directed to the Invention(s); or

(c) Incorporates any of the Licensed Materials.

Licensed Patent(s) means any (i) U.S. patent application Serial Number 270,631 filed July 1, 1994 (issued on July 22, 1997 as U.S. Patent Number 5,650,135), (ii) all divisions, substitutions, and continuations in whole or part of any of the preceding, (iii) all foreign patent applications corresponding to or claiming priority from (including International Application Number PCT/US95/15040 and all national applications claiming priority therefrom), and (iv) all U.S. and foreign patents issuing on any of the preceding, including patents of addition, reexaminations, reissues and extensions.

5,650,135 – Non-invasive localization of a light-emitting conjugate in a mammal

Licensed Materials means those biological materials listed, and such other agreed materials as University may provide to Licensee during the term of this Agreement, which shall be added.
– Individual components of light systems (Vectors, genes and gene fragments)
– Bacteria
– Tumor cells
– Indicator cells for HIV
– Transgenic mouse lines

Field of Use

Licensed Field of Use means all uses.

License Grant

University hereby grants to Israel Corporation and Corporation hereby accepts from University the License. License shall mean the exclusive worldwide license to practice University’s share in the University Research Technology (as hereinafter defined) for the development, manufacture, use and sale of the Licensed Products (as hereinafter defined). At the initiative of Corporation or University, the parties shall consult with each other regarding the prosecution of all patent applications with respect to the University Research Technology. University and Corporation shall assist, and cause their respective employees and consultants to assist, each other in assembling inventorship information and data for the filing and prosecution of patent applications on inventions pertaining to the Research Technology. Corporation shall be entitled to grant sublicenses under the License on terms and conditions in compliance and not inconsistent with the terms and conditions of this Agreement (except that the rate of royalty may be at higher rates than those set forth in this Agreement) (i) to a Corporation Entity or (ii) to other third parties for consideration and in an arms-length transaction.

License Property

Licensed Products shall mean all products, drugs, diagnostic reagents, diagnostic methods, therapeutic agents and therapeutic methods covered by a claim of any unexpired University Patents (as hereinafter defined) which has not been disclaimed or held invalid by a court of competent jurisdiction from which no appeal has been or can be taken.

University Research Technology shall mean all University Patents and all University Know-How.

University Patents shall mean all United States and foreign patents and patent applications, and any divisions, continuations, in whole or in part, reissues, renewals and extensions thereof, and pending applications therefor
(1)  
which claim Pre-Existing Inventions and which are identified hereto; or
(2)  
which claim inventions that are made, in whole or in part, by students or employees of SAMSF during the term and in the course of the Research Project;  
with the exception of all such patents which are Corporation Patents as hereinafter defined.
U.S. Patent Application Serial No. 08/801,301, filed February 18, 1997 entitled Use if Nekatibub To Prevent Cytotoxic effects of Amyloid Protein by Pappolla.
U.S. Provisional Patent Application Serial No. 60/075,555 filed February 23, 1998 entitled Use of 3-Indol-Proprionic acid by Pappolla
U.S. Provisional Patent Application Serial No. 60/079,349 filed March 25, 1998 entitled Inhibition of Alzheimer of Alzheimer Beta-Fibrillogenesis by Mela Tonm by Pappolla.

Corporation Patents shall mean all United States and foreign patents and patent applications, and any divisions, continuations, in whole or in part, reissues, renewals and extensions thereof, and pending applications therefor which claim inventions that are made, in whole or in part, by students or employees of Corporation.

Research Technology shall mean all University Patents, University Know-How, Corporation Patents and Corporation Know-How.

Field of Use

Field shall mean research, development and testing within pharmaceutical, biotechnological and diagnostic development programs in the field of Alzheimer’s Disease and other central nervous system and neurodegenerative diseases, and in the field of all other possible utilities for melatonin analogs.