Royalty Report: Drug Discovery, Medical, Diagnostic – Collection: 324647

License Grant

Licensor hereby grants to German Licensee a world-wide, non-exclusive, non-transferrable license of Assays notifiable to Licensee  to
1) use the Assays in any form for Internal Drug Development. No royalties or fees shall be payable by Licensee to Licensor in respect of this exercise of the rights so licensed;
2) Subject to royalty payments, commercially exploit the Assays in any form without restriction, including by the utilization of the Assays, in combination with screening and/or other technology owned by or licensed to Licensee, for the provision of services to Clients; by way of license of the Assays; and by way of sale of the Assays.

License Property

Assay is an assay which falls within the definition of Jointly Developed Technology or an assay created, invented or discovered by Licensor using the ADME Hardware or Read Out Technology.

ADME Hardware Licensees ADME hardware known as CESCA described as Example of High throughput screening of gastrointestinal bioavailibility.

Jointly Developed Technology shall have the meaning in respect of technology which is created, invented or discovered in the course of carrying out any Project.

Licensor is focused on accelerating drug discovery from disease targets to clinical candidates through its iDiscovery-TM- technologies. Such technologies include (i) the IDEA-TM- ('In Vitro Determination for the Estimation of ADME (absorption, distribution, metabolism and excretion)') computerized predictive models for, among other things, the prediction and selection of compounds with essential drug-like characteristics for further development.

The collaboration combines Licensee's expertise in ultra high-throughput screening technology, miniaturized assay development and its detection expertise based on its proprietary single molecule detection technology with Licensor's capabilities in the field of ADME screening and assay development.

Field of Use

Field of use is for the creation of new assays in the field of ADME, screening of Gastrointestinal bioavailibility.

Gastrointestinal bioavailibility is the ability of a drug or other substance to be absorbed and used by the body.

The Parties will collaborate on the development of new, miniaturized, high-throughput ADME assays for pre-clinical lead optimization. The objective of the collaboration is to develop assays that will aid in the faster and more cost efficient development of drug candidates with higher chances of success prior to clinical testing.

License Grant

The Licensee and Swiss Licensor are establishing a research program to identify and validate a limited number of antibacterial targets and to develop a select number of validated assays for high-throughput screening to identify new lead compounds active against such validated targets for the development of drugs.

For Discontinued Licensor Compounds
—  Globally Discontinued Licensor Compounds, in the event that the Swiss Licensor determines, or is forced, to discontinue the development or the global commercialization of a Licensor Product based on a Licensor Compound or an Active Licensee Compound Derivative, such Licensor Compound or Active Licensee Compound Derivative being referred to herein as a Globally Discontinued Novartis Compound, and if Licensor, at its sole discretion, decides to license to a Third Party such Globally Discontinued Licensor Compound, then Licensor shall notify Licensee in writing of the occurrence of the above. Licensee shall then have the right of first refusal.

—  Locally Discontinued Licensor Compounds, in the event that in any country, following the First Commercial Sale of a Licensor Product based on a Licensor Compound or an Active Licensee Compound Derivative, there is a continuous one (1) year period in which no such Licensor Product is sold in such country, and if Licensor, at its sole discretion, decides to license to a Third Party such Locally Discontinued Licensor Compound, Licensor shall notify Licensee in writing of the occurrence of the above. Licensee then
shall have the right of first refusal.

This agreement also includes exclusive, non-exclusive and co-exclusive grants from Licensee to Licensor.

License Property

The know-how, expertise and intellectual property rights pertain to anti-infective drug discovery and to a proprietary drug discovery technology known as VITA TM which couples the validation of the inhibition of a target in an animal model during an established infection with assay development and screening for the discovery of novel drug leads.

VITA TM or Validation In Vivo of Targets for Anti-infectives shall mean Licensors proprietary technology for the validation of anti-infective targets during an established infection in a mouse model system and the development of assays.

The technology couples the validation of target proteins in a pathogen during an established infection in an animal with assay development. The assay is used in high throughput screening to discover novel drug leads that act on therapeutically relevant targets. It is broadly applicable to a number of different targets, including proteins encoded by open reading frames (ORFs), which have previously been intractable to traditional screening paradigms.

Field of Use

Licensee possesses know-how, expertise and intellectual property rights pertaining to antiinfective drug discovery and to a proprietary drug discovery technology known as VITA(TM) which couples the validation of the inhibition of a target in an animal model during an established infection with assay development and screening for the discovery of novel drug leads.

License Grant

Licensor grants a perpetual, non-exclusive, worldwide license, with the right to sub- license, under the `277 patent, the `582 patent, and any patents issuing from International Application No. PCT/US96/19698, any and all continuing applications, divisional applications, continuation-in-part applications, reissues, extensions, renewals and reexaminations thereof, and any U.S. and foreign counterparts thereof. In addition, Licensor agrees not to file any future patent infringement actions against Licensee for Licensees use of ThermoFluor Screening Technology that is consistent with the terms of this Agreement.

License Property

Licensor is a biopharmaceutical company dedicated to the development of a novel class of small molecule drugs that regulate gene expression. The Licensors lead therapeutic candidate is a novel anti-HIV compound that acts by inhibiting a viral protein/RNA interaction that is critical for the expression of viral structural proteins and essential for virus production.

Licensor is the owner of U.S. Patent 5,585,277, and U.S. Patent No. 5,679,582.

Atlas Technology shall mean the methods and processes generally disclosed in the specifications and claims of the `277 patent, the `582 patent and/or International Application No. PCT/US96/19698.

ThermoFluor Screening Technology shall mean the methods, processes and apparatus generally disclosed in the specifications and claims of U.S. Patent No. 6,020,141 and/or allowed U.S. Patent Application Serial no. 08/853,459.

Licensor was granted a limited, nonexclusive license to the method claims of ThermoFluor screening technology. As part of this settlement agreement, until March 7, 2003, Licensee is precluded from using ThermoFluor screening technology in the Hepatitis C Virus infection area as part of collaborative agreements or as part of our internal drug programs. In addition, Licensee is precluded from using ThermoFluor screening technology as part of more than one collaboration agreement in the area of infection.

Field of Use

Licensee Internal Program(s) shall mean drug discovery and/or development program(s) in any therapeutic field conducted for and by Licensee on-site at a Licensee facility.

During the Restriction Period, Licensor may refer to Licensee any third parties that have requested that Licensor screen multiple targets to identify leads or drugs that are effective in any field other than Infection.

Licensee shall be free to use ThermoFluor Screening Technology without restriction in any Licensee Internal Program, except in the Hepatitis C Virus Field during the Restriction Period, and to license or transfer, in any manner, any compounds discovered or optimized through such use of ThermoFluor Screening Technology. Licensee shall not use ThermoFluor Screening Technology in the Hepatitis C Virus Field during the Restriction Period.

ThermoFluor screening process and our ability to rapidly select and synthesize compounds from our libraries compress an important segment of the R&D process, from assay set-up to the generation of a series of lead compounds with potential in vivo efficacy, from fourteen to thirty months at many pharmaceutical companies to as little as seven to ten months. This is expected to reduce resources required and development costs per target, allow more targets to be discovered with a given set of resources and accelerate time to market of successful drugs

Licensee is a post-genomics drug discovery company that has developed a unique integration of proprietary technologies to provide an accelerated and improved methodology for gene-to-clinic small molecule drug discovery.

License Grant

The Licensor and Canadian Licensee are entering a collaborative research and development program to develop screens against agreed targets, and use such screens to identify compounds having activity against one or more of such targets.

Licensor grants to the Canadian Licensee, on a Screen-by-Screen basis, a world-wide, non-transferable, non-exclusive license, without the right to grant sublicenses, under Licensor Technology to make and use any Screen and use any Screening Supplies paid for by Licensee.

License Property

Licensor designs, develops, and manufactures proprietary fluorescent bioassay technologies and chemistries used therein for screening systems.

Agreement Compound shall mean any Hit or Derivative.

Screen shall mean an assay developed by Licensor pursuant to this Agreement to an agreed molecular target.

Licensor designs, develops, and manufactures proprietary fluorescent bioassay technologies and chemistries used therein for screening systems, useful for the acceleration of novel drug discovery and to increase the productivity of drug discovery programs.

Field of Use

The field of use is for the acceleration of novel drug discovery and to increase the productivity of drug discovery programs.

Licensee will then proceed with a medicinal chemistry program to develop drug candidates from which pharmaceutical products may be derived.