Category: Technology Licenses
Created On: 2022-04-28
Record Count: 14
- Diagnostic Substances
- nucleic acid
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: 324667
US Patent #5,185,243 – Method for detection of specific nucleic acid sequences
US Patent #5,516,641 – Method for detection of specific nucleic acid sequences
The term Licensed Product(s) shall mean any human vitro diagnostic testing product and any other product whose manufacture, use, or sale would, but for the license granted under this Agreement, infringe any claim of a Licensed Patent which claim has not been held unpatentable, invalid or unenforceable by a decision of a competent tribunal from which no appeal has or can be taken or which claim has not been admitted by the patentee to be invalid or unenforceable.
The term Licensed Services shall mean any services performed by using Licensed Products and any services the performance of which would in the absence of the license granted herein infringe any claim of a Licensed Patent which claim has not been held unpatentable, invalid or unenforceable by a decision of a competent tribunal from which no appeal has or can be taken, or which claim has not been admitted by the patentee to be invalid or unenforceable.
Licensor is a leading manufacturer and distributor of in vitro diagnostics, or IVD, products worldwide with a strong market position in each of the core product markets, which include chemistry/immunochemistry, hemostasis, microbiology and infectious disease diagnostics.
In Vitro diagnostics (IVDs) are diagnostic tests that that can detect diseases, conditions, or infections. In vitro diagnostics test a sample of tissue or bodily fluids, as opposed to testing inside the body
Licensee develops products for applications in the life sciences, oncology, reproductive health and other segments.
IPSCIO Record ID: 223141
applications and patents.
W003023057 (PCT /EP02/05489) – Method and Diagnosis Kit for Selection and/or for Qualitative and/or Quantitative Detection of Cells
Licensed Products shall mean in-vitro diagnostic assays to isolate, detect, identify, quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of prostate cancer and/or bladder cancer, for the purpose of research, diagnosis or medical care, the manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the AdnaGen Patent Rights.
'Group 1 Additional Products' shall mean in-vitro diagnostic assays to isolate, detect, identify or quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of kidney cancer, cervical cancer, and/or ovarian cancer, for the purpose of research, diagnosis or medical care, the manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the Licensed Patent Rights.
'Group 2 Additional Products' shall mean in-vitro diagnostic assays to isolate, detect, identify or quantify, or test for drug susceptibility of, one or more proteins or nucleic acid sequences as diagnostic indicators for the presence of lung cancer, colon cancer, and/or breast cancer, for the purpose of research, diagnosis or medical care, the manufacture, use, sale offer for sale or importation of which would, but for the license herein granted by AdnaGen to Gen-Probe, infringe one or more Valid Claims of the Licensed Patent Rights.
IPSCIO Record ID: 29416
IPSCIO Record ID: 605
PCR Technology shall mean polymerase chain reaction technology covered by Valid Claims of United States Patent Nos. B1 4,683,195, B1 4,683,202, and 4,965,188 and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.
Quantitation Technology shall mean the method claims (if they are Valid Claims) of United States Patent Nos. 5,389,512 and 5,219,727, and any reissue or reexamination patents thereof, and claims 1-4, 8, 9 and 15-18 (if they are Valid Claims) of United States Patent No. 5, 476,774, and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.
RT and RT-PCR Technology shall mean the reverse transcription process covered by the method claims (if they are Valid Claims) of United States Patent Nos. 5,407,800, 5,310,652, 5,561,058, 5,618,703 and 5,322,770, and any reissue or reexamination patents thereof, and the claims (if they are Valid Claims) of United States Patent No. 5,693,517, and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.
'5' Nuclease Technology' shall mean only the processes defined by the method claims (if they are Valid Claims) of United States Patent Nos. 5,210,015 and 5,487,972 and any reissue or reexamination patents thereof and the reaction mixture claims (if they are Valid Claims) of United States Patent No. 5,804,375 and any reissue or reexamination patents thereof; and any Valid Claims of the foreign counterparts of the foregoing listed patents or claims.
IPSCIO Record ID: 203305
The products are any assay kit or other composition manufactured for use within the Field, the manufacture, use, sale, or import of which would, but for the license, infringe one or more valid claims of one or more of the issued Patents.
U.S.A. Patent 5,525,494 – Non-amplifiable Tails Patents
Scorpions(TM) probes are highly sensitive, sequence-specific, bi-functional molecules containing a PCR primer covalently linked to a probe. Scorpions probes provide strong fluorescent signals, excellent sequence discrimination, short reaction times, and predictable probe design. The interaction of the probe and the desired target occurs very rapidly and in advance of any competing side reactions such as the formation of internal secondary structures or re-annealing. The unique intra-molecular nature of the Scorpions reaction means that it is ideally suited for fast, quantitative, real-time PCR analysis.
Scorpions(TM) technology will provide benefits in speed and in developing highly multiplexed tests. The first commercial products expected to use the Scorpions probes for Licensee will be in the recreational water testing area.
IPSCIO Record ID: 352725
The Parties desire for Licensee to have the exclusive right to Exploit the Pooled Patents in the NIPT IVD Field.
Licensee will have
– the exclusive, worldwide, sublicensable right under the Pooled Patents to Exploit NIPT IVD Products in the NIPT IVD Field,
– the exclusive, worldwide, sublicensable right under the Pooled Patents, excluding the Isis Patents, to Exploit NIPT LDT Tests in the NIPT LDT Field, subject to the non-exclusive rights granted to, or reserved by, the Licensor Parties, and
– the nonexclusive, worldwide, sublicensable right under the Isis Patents to Exploit NIPT LDT Tests in the NIPT LDT Field.
Licensor on behalf of itself and its Affiliates, grants to Licensee and its Affiliates an exclusive, irrevocable and perpetual, non-transferable and non-assignable, worldwide license, with the exclusive right to grant sub licenses, under the Licensor Owned Patents and Isis Patents, to Exploit NIPT LDT Tests in the NIPT LDT Field and to Exploit NIPT IVD Products in the NIPT IVD Field, provided that the license is Royalty bearing with respect to NIPT IVD Products and the license is Test Fee-bearing with respect to NIPT LDT Tests.
NIPT IVD Product means a distributable in vitro diagnostic device that has either received applicable Regulatory Approval for sale and use to conduct or perform, in whole or in part, NIPT or is otherwise particularly labeled and marketed for use to conduct or perform NIPT, in whole or in part, excluding general purpose products and components labeled for research use only.
Licensor noninvasive prenatal testing (NIPT) is a chromosome counting method that analyzes genetic information in fetal cell-free DNA in maternal blood to determine risk for specific fetal chromosomal and subchromosomal abnormalities.
IPSCIO Record ID: 28762
Licensor grants Licensee a non-exclusive License to make, use, develop, have developed, manufacture, have manufactured, offer to sell, sell and have sold Licensed Products utilizing blood, serum, plasma, or urogenital swab as the sample material under the Licensee brand name.
Licensed Technology shall mean human in vitro clinical diagnostic and non-therapy screening rapid test and sample applicator device technology described in European Patent Application 04003603.0 and corresponding foreign counterparts thereof; Finnish Patent Application FI200040825 and all issues, reissues, amendments divisions, continuations, continuations-in-part, and corresponding foreign counterparts thereof; and all confidential know-how proprietary to Licensor needed to assist Licensee in developing and manufacturing Licensed Products.
The use is the worldwide professional and OTC human in vitro clinical diagnostic markets.
IPSCIO Record ID: 279313
(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)
– Tumor cells
– Indicator cells for HIV
– Transgenic mouse lines
IPSCIO Record ID: 233461
– to make, have made, import, use, offer to Sell and Sell Licensed Products in the In Vitro Human Diagnostics Field in the Territory, and authorize End-Users to perform Diagnostic Services using such Licensed Products in processes covered by the Licensed Patents in accordance with the label license provided with the purchase of such Licensed Products.
– to grant a limited, non-transferable, royalty free sublicense under the Licensed Patents to Research Collaborators of Licensee and/or its Affiliates to practice PCR under their respective contracts with Licensee and/or its Affiliates, in accordance with the terms and conditions of this Agreement, solely for purposes of doing applied research and development for Licensee and/or its Affiliates of Licensed Products to be Sold in the In Vitro Human Diagnostics Field in accordance with the other terms and conditions of this Agreement; and
– to use PCR technology for the research, development, improvement and quality control and quality assurance of Licensed Products, in each case by Licensee and its Affiliates, internally, for Sale in the In Vitro Human Diagnostics Field.
For Label Licenses on Licensed Products Sold in the In Vitro Human Diagnostics
– Licensees right to sublicense is limited to the right to convey use rights pursuant to a Label License under process claims and composition of matter claims,not apparatus, device or system claims, only to End-User customers, and only through the Sale of Licensed Products.
– Licensee agrees that it shall mark conspicuously all Complete Diagnostic Kits made by or for it,
– Licensee agrees that it shall mark conspicuously all Component Systems for amplification made by or for it
– Licensee agrees that it shall mark conspicuously all Component Systems for detection made by or for it
– Licensee agrees that it shall mark conspicuously all Component Systems for amplification and detection made by or for it
– Licensee agrees that it shall mark conspicuously all Royalty Products other than Complete Diagnostic Kits, Component Systems for amplification, Component Systems for detection and Component Systems for amplification and detection made by or for it and Sold in the In Vitro Human Diagnostics Field.
Licensed Product means a product for use in the In Vitro Human Diagnostics Field, the manufacture, importation, use, offer for Sale or Sale of which would infringe a Valid Claim of Licensed Patents, made by or specifically for Licensee or any of its Affiliates only pursuant to Licensees or its Affiliates specifications, which is any of the following or a combination of any of the following
(a) Complete Diagnostic Kit;
(b) A reagent, accessory, device or system which is used or Sold to be used by End-Users in connection with the practice of PCR, including the steps of sample preparation, amplification and detection;
(c) A Component System; and/or
(d) Reagents Sold to be used by End-Users as replacement components in regard to a Component System.
PCR means the polymerase chain reaction process and technology.
Patents relate to Process for Amplifying, Detecting, and/or Cloning Nucleic Acid Sequences.
The Human Identity Field means the field of use comprising products and processes utilizing PCR for the sole purpose of determining human identity or distinguishing among human beings, whether living or dead. The Term Human Identity Field shall included parentage testing to determine if two or more human beings are biologically related as parent and child and forensic testing for use in, or in preparation for, death investigations or other legal proceedings, but such term shall specifically exclude testing for tissue typing.
In Vitro Human Diagnostics Field means the field of use comprising products and processes utilizing PCR for the measurement, observation or determination of attributes, characteristics, diseases, traits or other conditions of a human being for the medical management of that human being, including without limitation
(a) genetic testing, including determinations of genetic predisposition;
(b) oncology and cancer predisposition testing;
(c) testing for tissue typing (excluding the Human Identity Field);
(d) infectious disease detection, screening, confirmation and monitoring; and
(e) therapeutic drug monitoring.
For purposes of this Agreement, the term 'In Vitro Human Diagnostics Field' shall not include the Human Identity Field.
â€œPCRâ€ means the polymerase chain reaction process and technology involving the amplification of a nucleic acid sequence and the complement of that sequence by repeated cycles of oligonucleotide mediated, template directed synthesis involving the extension of a component primer oligonucleotide by incorporation of monomeric nucleotide triphosphates whereby the sequence, its complement and subsequent synthetic copies thereof are repeatedly separated and used as templates for further cycles of synthesis.
IPSCIO Record ID: 122373
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.
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
IPSCIO Record ID: 260378
MatemiT21 PLUS Test shall mean the laboratory-developed test for the non-invasive testing of a plasma sample from a pregnant woman for the detection and diagnosis of prenatal aneuploidy and/or fetal abnormalities by use of cell-free fetal nucleic acids, currently known as the MatemiT21 PLUS test, as performed by Licensors Laboratories.
The MaterniTÂ® 21 PLUS test analyzes genetic information that enters your bloodstream from the placenta. It analyzes the amount of chromosome 21 in fetal DNA picked up from the maternal blood sample. It can detect an increased amount of chromosome 21 material which is associated with trisomy 21 (Down syndrome). It is completely non-invasive as it only involves a blood sample from the mother.
IPSCIO Record ID: 203343
Pursuant to the settlement, the parties hereby irrevocably stipulate the Licensor Licensed Patents in the Territory are valid and enforceable; and, the making, use, offer for sale, sale, or importation of any Licensee Product in the Territory, where a Licensor Licensed Patent has issued and prior to the expiration of such Licensor Licensed Patent, would, in the absence of the licenses granted in the Agreements, as applicable, constitute infringement of one or more claims of such Licensor Licensed Patent.
Per the original agreement, the Parties entered a nonexclusive license in the Territory, without the right to sublicense, under the Licensor Licensed Patents to make, import, use, offer for sale and sell Licensor Licensed Products for use in Blood Screening solely for sale to or use by or on behalf of Existing Customers under the Existing Agreements and Existing Offers.
Blood Screening means the commercial use of products that detect nucleic acid sequence(s) for the screening of blood, plasma or blood components intended for transfusion or for use in blood products (e.g., without limitation, immunoglobulins); or confirmatory or supplemental testing of the same samples otherwise screened for purposes described.
Directed to HIV means that the claim or technology in question is directed to methods, compositions, reagents or kits specifically for use in nucleic acid-based diagnostic assays for the detection of HIV nucleic acid sequence(s), or specifically for use in the manufacture of any compositions or reagents for use in, or manufacture of nucleic acid-based diagnostic assays for detection of HIV nucleic acid sequence(s) (excluding, for example, polymerase chain reaction claims and technology and other methods for detection of nucleic acid sequence(s) generally which involve nucleic acid amplification).
HIV means any viral isolate of the human immunodeficiency virus classified as HIV by the International Committee on the Taxonomy of Viruses (or any body that replaces such Committee) or any subtype of such isolate and further includes any isolate that is at least forty percent (40%) homologous to any such isolate and of the same genomic type and substantially the same genomic organization, any isolate that has a genome that either hybridizes to or is substantially identical to any such isolate or its compliment, and any defective or modified form of any of the above isolates.
''Patent' means U.S. Patent No. 6,531,276 Bl
IPSCIO Record ID: 240484
4,683,195 – Process for amplifying, detecting, and/or-cloning nucleic acid sequences
4,683,202 – Process for amplifying nucleic acid sequences
Licensed Services shall mean the performance of an Assay by Specialty Labs to detect nucleic acid sequences associated with a human disease or condition within the Licensed Field. Licensed Services include but are not limited to, any combination of the steps of collecting a sample for analysis, isolating nucleic acid sequences therein, amplifying one or more desired sequences, analyzing the amplified material and reporting the results.
Diagnostic Product shall mean an assemblage of reagents, including but not limited to reagents packaged in the form of a kit, useful in performing an Assay.
Assay shall mean 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.
IPSCIO Record ID: 362520
Licensor hereby grants to Licensee and Licenseeâ€™s Affiliates, a Limited Exclusive, sublicensable, royalty-bearing license under Licensorâ€™s intellectual property rights in the Product Technical Information to Exploit the Licensed Products in the Field in the Licensee Territory during the Term through any and all means and channels of distribution now known or hereinafter discovered.
Product Patent(s) shall mean all Patents in the Licensee Territory now or in the future owned or Controlled by Licensor and/or its Affiliates that are necessary or useful for any of the Diagnostic Tests and are specifically directed to one or more elements of any of the Diagnostic Tests that are unique to such Diagnostic Test (as contrasted to methods of performance in general of tests based on microRNAs or composition of matter claims that are relevant to multiple indications), including but not limited to (a) the Patents listed as may be amended from time to time by the Parties; and (b) all Patents in the Licensee Territory (i) to which any of the Patents set forth claim priority or (ii) for which any of the Patents listed a basis for priority, including any divisionals, continuations, substitutions, continuations-in-part, extensions, renewals, re-examinations or reissues of such Patents listed, provided that Product Patents(s) shall not include the Excluded Acquisition Patents or the Platform Patents. For the avoidance of doubt, (e), the Product Patents include all methods of use claims directed to the use of microRNAs for the indications that are the targets of the Diagnostic Tests, but exclude all composition of matter claims directed to microRNAs.
Platform Patent(s) shall mean all Patents in the Licensee Territory now or in the future owned or Controlled by Licensor and/or its Affiliates that are necessary or useful for the Exploitation of a Licensed Product and cover one or more compositions of matter or technologies which can be used across two or more products, including but not limited to (a) the Patents listed as may be amended from time to time by the Parties; and (b) all Patents in the Licensee Territory (i) to which any of the Patents set forth claim priority or (ii) for which any of the Patents listed a basis for priority, including any divisionals, continuations, substitutions, continuations-in-part, extensions, renewals, re-examinations or reissues of such Patents listed, provided that Platform Patents(s) shall not include the Excluded Acquisition Patents. For the avoidance of doubt, the Platform Patents include all composition of matter claims directed to microRNAs within the Licensed Patents.
Licensed Patents shall mean the Platform Patents and the Product Patents.
Product Technical Information shall mean any Technical Information which is necessary or useful to Exploit the Licensed Products in the Licensee Territory and owned or otherwise Controlled by Licensor or any of its Affiliates as of the Effective Date or during the Term, including Licensor Improvements incorporated into the Licensed Products, if any, but excluding any Excluded Acquisition Technical Information and any Technical Information that is claimed or disclosed in the Licensed Patents.
Mets Software shall mean the source code and object code forms of a certain software application which contains, among other things, an algorithm created by or on behalf of Licensor for the purpose of processing the results of the Mets Test, in the forms that such software exists as of the Effective Date, and any updates and Improvements adopted by Licensor for the Mets Test and distributed by Licensor to Licensee during the Term.
Licensed Intellectual Property shall mean the Licensed Patents, the Product Technical Information and the Mets Software.
Licensee has the exclusive right to develop and commercialize miRviewâ„¢ mets, miRviewâ„¢ meso and miRviewâ„¢ squamous tests in the United States.
Licensor has initiated microRNA-based diagnostic programs for various cancers
1. miRviewTM mets For identification of the origin of the primary tumor of metastases;
2. miRviewTM squamous For differentiating squamous from non squamous non-small cell lung cancer; and
3. miRviewTM meso For differentiating mesothelioma from other carcinomas in the lung and pleura.