Royalty Report: Cancer, Diagnostic, Medical – Collection: 362520

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 11

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: 11

Primary Industries

  • Cancer
  • Diagnostic
  • Medical
  • Drugs
  • Disease
  • Drug Discovery
  • Device
  • Drug delivery
  • Vaccine
  • Software
  • Medical Info

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: 362520

License Grant
Israeli Licensor on behalf of itself and its Affiliates hereby grants to Licensee and Licensee’s Affiliates, a Limited Exclusive, sublicensable, royalty-bearing license under the Licensed Patents 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.

Licensor hereby grants to Licensee and Licensee’s Affiliates, a Limited Exclusive, sublicensable, royalty-bearing license under Licensor’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.

License Property
Licensed Product shall mean any Diagnostic Test (a) the Exploitation of which, or of any process, method, material, composition or assay used therein or for the performance thereof, would infringe a Valid Claim but for the licenses granted herein, (b) which was developed or manufactured using a Licensed Process, or (c) which incorporates or is developed using Royalty-Bearing Technical Information.

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.

Field of Use
Field shall mean the diagnosis of any disease or any human condition. For the purposes of this definition, diagnosis shall mean use (a) where the medical management of a human  is involved, for (i) the measurement, observation or determination of (x) the presence of a human disease, (y) the stage, progression or severity of a human disease, (z) the risk of contracting a human disease, and/or (ii) the selection of patients for a particular treatment with respect to a disease; and/or (b) in a clinical laboratory for tracking, testing or quality controlling of human body fluids or tissue samples; and/or (c) designated and regulated by the FDA as a diagnostic test or analyte specific reagent, to the extent used according to (a) and/or (b) above.

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.

IPSCIO Record ID: 223141

License Grant
The German Licensor hereby grants to Licensee an exclusive license (including the right to grant sublicenses) under the Licensed Patent Rights to conduct research and to develop, make, use, offer for sale, sell and import Licensed Products and to provide Services in the Territory.
License Property
Licensed Patent Rights shall mean (a) those certain patent applications and patents listed hereto; (b) all patents that have issued or in the future issue from such foregoing patent applications, including utility, model and design patents and certificates of invention; (c) all patents that have issued or in the future issue from any patent application that claims priority from, or common priority with, any of the foregoing patent applications, including utility, model and design patents and certificates of invention; and (d) all divisionals, continuations, continuations-in-part, reissues, renewals, extensions or additions to any such foregoing patent
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.

Field of Use
This agreement pertains to the medical industry relating to certain technology concerning the qualitative and quantitative detection of cells which may be useful in connection with nucleic acid diagnostic assays. The diagnostic indicators are used for the presence of prostate cancer and/or bladder cancer, for the purpose of research, diagnosis or medical care.

'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: 273391

License Grant
Licensor hereby grants to Licensee, subject to all the terms and conditions of this Agreement, a worldwide, nonexclusive right and license (without the right to grant sublicenses) under the Patent Rights to (a) use, offer to sell, sell and practice Diagnostic Services in the Field; (b) make, have made, use, offer to sell, sell and import Licensed Reagents in the Field; and (c) make, have made, use, offer to sell, sell and import Kits in the Field. Notwithstanding the foregoing, Licensor hereby grants to Licensee the worldwide, non-exclusive right to convey to the end-user (purchaser) of FDA (U.S. Food and Drug Administration) Approved Kits manufactured by Licensee the right to perform Diagnostic Services solely in conjunction with the use of FDA Approved Kits manufactured by or on behalf of Licensee (without the right to grant sublicenses).
License Property
Patent Rights shall mean collectively the Gene Patent Rights and the Methodology Patent Rights.

Diagnostic Service(s) shall mean the performance of laboratory-based assays covered in whole or in part by a Valid Claim of the Patent Rights.

Gene Patent Rights shall mean the United States and foreign patents and patent applications relating to the APC (Adenomamus polyposis coli) gene and/or the p53 gene and licensed (with the right to grant sublicenses) to Licensor pursuant to the JHU (Johns Hopkins University) License Agreement together with patents arising therefrom and any extensions, registrations, confirmations, reissues, divisions, continuations or continuations-in-part, re-examinations or renewals thereof, including without limitation the patents and patent applications listed hereto (which may be updated from time to time to include such additional patents and patent application that may arise therefrom); provided, however, that Gene Patent Rights expressly excludes any claims of such patents and patent applications that fall outside of the Field, including, without limitation, claims to antibodies, to the treatment, prevention or remedying of a gene deficiency, to purified proteins, or to DNA (Deoxyribonucleic acid) sequences other than those sequences that correspond to the p53 gene and the APC (Adenomatous polyposis coli) gene; provided further that DNA sequences which are (i) immediately adjacent to the p53 or APC genes and (ii) necessary to the use of the p53 or APC genes, respectively, in the Field shall be considered within the Gene Patent Rights.

US Patent No.  5,352,775 – APC gene and nucleic acid probes derived therefrom
US Patent No.  5,527,676 – Detection of loss of the wild-type P53 gene and kits therefor

Methodology Patent Rights shall mean the United States and foreign patents and patent applications relating to methods of detecting mammalian nucleic acids isolated from stool specimens and reagents therefor and licensed (with the right to grant sublicenses) to Licensor pursuant to the JHU (Johns Hopkins University) License Agreement together with patents resulting therefrom and any extensions, registrations, confirmations, reissues, divisions, continuations or continuations-in-part, re-examinations or renewals thereof, including without limitation the patents and patent application listed hereto (which may be updated from time to time to include such additional patents and patent applications that may arise therefrom).

US Patent Application No. W093/20235 and 08/861,910 (detecting mammalian nucleic acids from stool)

Licensed Reagent shall mean any Reagent covered in whole or in part by a Valid Claim of the Patent Rights.

Kit shall mean a collection of one or more Reagents, including at least one Licensed Reagent, packaged in the form of a kit (including an FDA Approved kit).

Field of Use
Field shall mean (a) stool-based detection of any disease or condition (including pre-cancers, staging and monitoring of the foregoing, and therapeutic response) for research and development, Clinical Laboratory Improvement Amendments (CLIA) testing services (and their foreign equivalents), and FDA Approved Kits; and (b) a screening assay (regardless of other uses to which such assay is put) for colorectal cancer in any type of patient samples, excluding tests solely for staging and/or monitoring of colorectal cancer which do not obsolete or adversely impact such screening assay.

IPSCIO Record ID: 4690

License Grant
The Licensee agreed to sublicense certain intellectual property related to breast cancer biomarkers with the intent to develop, manufacture and commercialize a diagnostic test utilizing this technology.
License Property
The non-exclusive license is to a worldwide portfolio of patents and patent applications directed to Diagnosis and Prognosis of Breast Cancer Patients (e.g., claiming priority to U.S. Provisional Patent Nos. 60/298918 and/or 60/380710) in the fields of research, diagnosis, prognosis and/or prediction of therapeutic outcome or risk for humans or animals in the area of oncology.

IPSCIO Record ID: 362456

License Grant
University hereby grants to Israeli Licensee an exclusive license to make, have made, manufacture, provide, use, import, commercialize, distribute, offer for sale and sell the licensed product(s) in the United States and worldwide under the patent rights. This Grant shall apply to the Licensee and any affiliated company, except that any affiliated company shall not have the right to grant a sublicense to others as set forth. If any affiliated company exercises rights under this Agreement, such affiliated company shall be bound by all terms and conditions of this Agreement, including but not limited to indemnity and insurance provisions and royalty payments, which shall apply to the exercise of the rights, to the same extent as would apply had this Agreement been directly between University and the affiliated company. In addition, Licensee shall remain fully liable to University for all acts and obligations of affiliated company such that acts of the affiliated company shall be considered acts of the Licensee.
License Property
Patent Rights shall mean the (i) U.S. patent application, assigned to University entitled
“Discovery of Human miRNAs and Their Evaluation with a Dicer KO” and the invention disclosed and claimed therein, (ii) all continuations, divisions, and reissues based thereon, (iii) claims of continuation-in-part applications directed to subject matter specifically described in (i), (iv) any corresponding foreign patent applications, and (v) any U.S. patents, or foreign patents issuing, granted or registered on any of (i) through (iv).

Licensed Product)s) as used herein in either singular or plural shall mean any process or method, material, compositions, drug, or other product or service, the manufacture, use, provision or sale of which would constitute, but for the license granted to Licensee pursuant to this Agreement, an infringement of a valid claim of patent rights relating to a nucleic acid sequence (infringement shall include, but is not limited to, direct, contributory, or inducement to infringe).

Field of Use
Field of use is for diagnostic tests and therapies for many serious illnesses, including cancer and infectious diseases.

These diagnostic and therapeutic products relates to a discovered group of genes known as microRNAs. MicroRNAs are naturally expressed, or produced, using instructions encoded in DNA and are believed to play an important role in regulating protein production.

microRNAs have the potential to form the basis of a novel class of diagnostic tests and therapies for many serious illnesses, including cancer and infectious diseases.

IPSCIO Record ID: 307942

License Grant
The Italian Licensors, pursuant to the agreement, granted the Italian Licensee an exclusive, worldwide, license to commercialize certain intellectual property covered by the agreement (i.e. research, development, manufacturing, marketing, distribution, and sale of any product containing the licensable IP under the agreement).
License Property
Leukemia Licensed Product(s) – shall mean any process, product and/or service utilizing or incorporating the Licensed IP and/or Company IP or any part thereof in the field of Leukemia.

Licensed Product – shall mean any process, product and/or service utilizing or incorporating the Licensed IP and/or Company IP or any part thereof in any other fields which are not Leukemia.

Intellectual Property, IP – shall mean any and all intellectual property, whether or not registered or protected by patent rights, including, but not limited to, trade secrets, procedures, protocols, inventions, moral rights, drawings, trademarks, databases, know-how, improvements, discoveries, conceptions, ideas, techniques, designs, products, developments, specifications, methods, drawings, diagrams, models, software programs, data, data analysis, data interpretation, written reports, compounds, compositions, substances, processes, information and other results of whatsoever nature and all rights therein including copyright, patent rights, database rights, rights in designs and all registrations and applications therefore, and all continuations, continuations in part, divisional applications, and renewals of any of the foregoing, in any part of the world.

Licensed Patents or Licensed IP – shall mean (i) the Existing IP; (ii) all patent applications that may hereafter be filed by or on behalf of the Licensor, in any jurisdiction, which either are based on or claim priority from any Existing IP (iii) any issued patent(s) and pending patent application(s) relating to leukemia identification and screening and filed pursuant to this Agreement to protect the Existing IP, whether filed as an original application, continuation, continuation-in-part or divisional application; (iv) all patents which may be granted pursuant to any of the foregoing patent applications; (v) all IP using the FTIR for cancer diagnosis and follow up, which has not been developed by the Licensee.

The Licensors conduct studies for the early detection of cancer.

Field of Use
The technology granted is for the early detection of cancer in the field of Leukemia.

The Licensee is a medical diagnostics company engaged in the development and commercialization of blood tests for the detection of immune-related diseases, beginning with cancer. Their core proprietary technology centers on testing blood cells using a Fourier-transform infrared (FTIR) spectrometer to turn biological information into data, and then using our patented Total Biochemical Infrared Analysis (TBIA) deep learning data analytics platform to mine the data in order to develop algorithms that are indicative of the presence of cancer, and the tissue of origin in the body where the cancer is located. The TBIA detection method is based on cancer’s influence on the immune system that triggers biochemical changes in peripheral blood.

IPSCIO Record ID: 290553

License Grant
The parties amend certain terms of the License Agreement that includes but not limited to royalty description, sublicense section, address for notices, field of use, and the warranties section.

University furthermore grants to Licensee the right to make, have made, distribute and sell clinical diagnostic products. Licensee shall continue to have the right to commercially exploit the licensed inventions as related to diagnostic laboratory services.

The original agreement states
University hereby grants Licensee the exclusive right to conduct various technical, pre-clinical, marketing, patent, and other studies on Products in the field of use during a six (6) month period commencing on the effective date of this Agreement (the option period). The option period may be extended by mutual written agreement of the parties.

In consideration of the royalties, and subject to the terms and conditions, as set forth in this Agreement and effective upon the earlier to occur of (i) written notification to University during the option period that Licensee desires to license the Patent(s), or (ii) expiration of the option period with no written notification given, University hereby grants to Licensee i. the exclusive worldwide license in the field of use to use the Patent to make, have made, use distribute, and sell the Product(s); and ii. the right to grant sublicenses to any Patent licensed hereunder, provided that any sublicensee agrees to be bound by the terms and conditions of this Agreement applicable to sublicensees.

License Property
The term Patent or Patents shall mean any and all patent applications listed while, and to the extent, said applications remain pending, and any and all pending or unexpired patents issued thereon and any continuation, division, extension or reissue thereof, and any and all pending or unexpired foreign patents issuing from any application filed which corresponds to claims contained in any of the foregoing patents or applications.
USC#2860, filing date 12/15/1999

Product or Products shall mean any article, composition, apparatus, substance, chemical, material, method or service which is made, used, distributed or sold by Licensee which
i. is covered in whole or in part by one or more pending or unexpired claims contained in a Patent in the country in which the Product(s) is made, used, distributed or sold;
ii. is manufactured using a method or process which is covered in whole or in part by one or more pending or unexpired claims contained in a Patent in the country in which (a) the Product(s) is made, use, distributed or sold, or (b) the method or process is used or sold;
iii. the use of which is covered in whole or in part by one or more pending or unexpired claims contained in a Patent in the country in which (a) the Product(s) is made, used, distributed or sold, or (b) the method or process is used or sold; or
iv. incorporates Information transferred to Licensee pursuant to the confidential disclosure agreement dated January 7, 2000 between University and Licensee (as the term Information is defined in said agreement).

Field of Use
The patents are for RGI-1 and related technology, for use in human and veterinary diagnostic laboratory services, the sale of clinical diagnostic products, and the sale of research products to the research community.

RGI-1 enables Licensee to rapidly and reliably isolate RNA and DNA from FFPE tissues.  RGI-1 generates molecular-based tumor analyses for use in guiding chemotherapy treatment for cancer patients.

IPSCIO Record ID: 204348

License Grant
The English Licensor grants to the Licensee an exclusive license with the right to sub-license under the Licensed Technology to develop, manufacture, use, sell, offer for sale and/or import Licensed Product(s) and any improvement thereto, or have done any of these on its behalf and otherwise exploit the Licensed Technology, but only in the Licensed Field in the Territory.
License Property
The licensed technology means Resulting Intellectual Property and Licensed Patents.   The resulting intellectual property, identified in the research agreement, is any Intellectual Property which is conceived, created, discovered, developed, identified or first reduced to practice in the course of the Project, derived directly from the use of Surface Enhanced Laser Desorption/Ionization, SELDI, or from the use of SELDI together with any other technology(ies) and any patents and patent applications, including any continuations, continuations in part, extensions, reissues or divisions thereof and any patents, supplementary protection certificates and similar rights that are based on or derive priority from the foregoing.

The licensed products are any and all processes, products and services practiced, sold or otherwise supplied by the Licensee or a Group Company of Licensee or its sub-licensee, and which Licensed Products or the use of such Licensed Products are within any Valid Claim of the Licensed Patents in the jurisdiction in which such Licensed Products are sold. A Licensed Product may include, without limitation a Diagnostic Test Kit, a Diagnostic Test, a Medical Implement or a Therapeutic.

Surface-enhanced laser desorption/ionization (SELDI) is a soft ionization method in mass spectrometry (MS) used for the analysis of protein mixtures.

Field of Use
The research, development and commercialization of Licensed Products for Diagnostics and Therapeutics for cancer.  The Licensee is in the Laboratory analytical instrument industry.

IPSCIO Record ID: 369238

License Grant
Licensor, a not-for-profit corporation formed to manage intellectual property developed at a university, grants an exclusive license under Patent Rights to manufacture, have manufactured, distribute, have distributed, use, offer for Sale, Sell, lease, loan and/or import Licensed Products in the Field of Use in the Territory and to perform Licensed Services in the Field of Use in the Territory.

Licensor grant a non-exclusive sublicense under Technology Rights to manufacture, have manufactured, distribute, have distributed, use, offer for Sale, Sell, lease, loan and/or import Licensed Products in the Field of Use in the Territory and to perform Licensed Services in the Field of Use in the Territory.

License Property
Licensor owns, controls and/or has the right to sublicense the Licensed Subject Matter.

The Licensed subject matter patents include
—  MicroRNA-Based Methods and Compositions for the Diagnosis, Prognosis, and Treatment of Ovarian Cancer using a Real-Time PCR Platform;
—  Methods and Materials Related to Ovarian Cancer;
—  MicroRNA Signatures in Human Ovarian Cancer;
—  Materials and Methods Related to Modulation of Mismatch Repair and Genomic Stability by miR-155; and,
—  Ultra conserved Regions encoding ncRNAs.

Licensed Product means any product, apparatus, kit, test having a panel of either a single nucleotide or two or more nucleotides in combination or component thereof whose manufacture, use, sale, offer for sale or import is Covered By any claim or claims included within the Patent Rights or incorporates any Technology Rights, or which is made using a Licensed Process or another Licensed Product.

Field of Use
MicroRNAs have been the subject of study by my laboratory for more than a decade, and Licensee's work and the work of others has shown that the dysregulation of these molecules plays a critical role in the development of cancer and other diseases,  The portfolio includes nearly 100 issued and pending microRNA patents that could lead to entirely new, more effective and more targeted ways to diagnose and treat prostate, ovarian, colon and lung cancers.

The Exclusive Field of Use is for the diagnosis, prognosis and therapy/treatment of ovarian cancer.

IPSCIO Record ID: 243496

License Grant
Licensor hereby grants to Licensee, and Licensee hereby accepts, an exclusive, irrevocable, perpetual, license, with the right to grant sublicenses, under the Assigned Technology to Develop, Manufacture, Commercialize, make, have made, use, have used, offer for sale, sell, have sold and import Covered Products in the Licensee Field in the Territory.

Assignment; License-Back.  Licensee hereby assigns, transfers, conveys and delivers to Licensor, and Licensor hereby accepts all and every right, title and interest of Licensee in and to the Licensee Patent Rights listed, together with all ancillary rights thereto, including the right to sue for damages by reason of past infringement of any such rights; and the Licensee Intellectual Property owned by Licensee that relates directly to such Licensee Patent Rights (collectively, the Assigned Technology).

License Property
Intellectual property relates to superentolimod product candidate and entolimod vaccine product candidate.

Covered Product(s) means any product the Development, Manufacture, use or sale of which is covered by the Licensee Patent Rights or makes use of any Licensee Intellectual Property.

Patent Rights means any and all (a) issued patents and (b) pending patent applications, including all provisional applications, substitutions, divisionals, continuations, continuations-in-part, renewals, and all letters of patent granted with respect to any of the foregoing, (c) patents of addition, restorations, reissues, extensions, supplementary protection certificates, registration or confirmation patents, patents resulting from post-grant proceedings, re-examinations; (d) inventor’s certificates; and (e) other forms of government issued rights substantially similar to any of foregoing, in each any country in the Territory.

Licensee Intellectual Property means Know-How that is Controlled by Licensee or its Affiliates during the term of this Agreement and that is reasonably necessary or useful for or directly related to the Development, Manufacture or Commercialization of the Covered Products. The term Licensee Intellectual Property does not include (a) any Know-How, which is, as of the Effective Date or later becomes, generally available to the public, excluding Licensee Confidential Information or Know-How Controlled by Licensee or its Affiliates that is publicly disclosed by a Third Party without the consent of Licensee, and Know-How included in Licensee Patent Rights

Licensee Patent Rights means those Patent Rights that Cover Licensee Intellectual Property and are Controlled by Licensee or its Affiliates at any time during the term of this Agreement.  Licensee Patent Rights as of the Effective Date are listed which shall be updated in writing from time to time, at least annually, during the term of this Agreement.

Title Flagellin compositions
Jurisdiction USA
Application Detials 15/329,870, Filing Date 07-29-2015, Priority Date 07-30-2014
Patent Details N/A
Status Pending

Title  Flagellin compositions and uses including effective vaccination
Jurisdiction  USA
Application Details  15/500,133, Filing Date 07-30-2015, Priority Date 07-30-2014
Patent Details  N/A
Status  Pending

Field of Use
Licensor Field means the prevention or treatment of any disease or condition in humans that is caused by the recent exposure to ionizing radiation including mitigation and prevention of Acute Radiation Syndrome (as defined by the Center for Disease Control and Prevention) and concurrent radiation treatment of humans or animals diagnosed with oncological conditions at the time of treatment to treat this condition. For the avoidance of doubt, it is understood and agreed that the Licensee Field shall not include (i) prevention or treatment of sickness, diseases, disorders, and frailties caused by prior exposure to radiation treatment of cancer, and (ii) prevention or treatment of any disease, disorder or frailty in humans that are “cancer survivors” (i.e., persons who has completed initial cancer management and has no apparent evidence of active disease).

IPSCIO Record ID: 7158

License Grant
Licensor hereby grants to Licensee and its Affiliates, and Licensee accepts the licenses under the Licensed Technology to exclusively use, develop, make, have made, sell, offer to sell, modify, import and otherwise commercially exploit the Licensed Uses and the Licensed Products in the Licensed Territory including, but not limited to, as follows
(1) an exclusive license for the use of the SVM Technology and the Licensed Patents in the Field in the Licensed Territory relating to Licensed Uses and Licensed Products; and

(2) an exclusive license to the Licensed Know-How in the Field in the Licensed Territory, including access to and use of the Computer Software that has been developed by or for Licensor or will be developed by or for the Licensor that may be applicable to Licensed Uses or Licensed Products; and

(3) an exclusive license for the use of Licensed Products in the Licensed Territory.
Sublicense Rights. Licensee may grant sublicenses under any of the licenses granted herein, to import, develop, make, have made, use, modify, offer for sale, and/or sell Licensed Products within the Field.

License Property
LICENSOR is the owner of intellectual property, including patents, pending and issued, and know-how relating to support vector machine and other machine learning technologies which is included within the “SVM Technology” (as defined below), based upon which it has developed, or is engaged in developing, applications including, inter alia, digital image analysis and interpretation, biomarker discovery, and gene/gene product-based and protein-based diagnostic, prognostic and predictive tests.

“SVM Technology” shall mean all technology and ownership claims related to support vector machines and other pattern-recognition algorithms (“SVM”), SVM-Recursive Feature Elimination (“RFE”), and Fractal Genomic Modelling (“FGM”) included in the Licensed Technology.

Licensor owns the Licensed Technology (as defined below), which includes inter alia, coverage of genomic biomarkers related to prostate cancer, pancreatic cancer, colon cancer and other cancers as well as certain interpretation methodologies and software associated with automated image analysis for cytogenetics and flow cytometry testing.

“IVD Test Kit” shall mean any kit or instrument manufactured for sale to third parties, which includes reagents and other supplies that enables such third party purchasers to perform in vitro diagnostic tests on biological samples or any instrument used therewith; provided that, any such IVD Test Kit must be approved by the U.S. Food and Drug Administration (“FDA”) for sales of the IVD Test Kit in the United States, or be approved by any other foreign regulatory bodies for sales of the IVD Test Kit in countries other than the United States. Notwithstanding the foregoing, any instruments sold in conjunction with or pursuant to Licenses E and F described in Sections 1.12.4 and 1.12.5 are excluded from the definition of IVD Test Kit.

“Laboratory Developed Test” shall mean any test, process or procedure used to test or assay any type of patient biological sample, the results of which would then normally be entered into the medical record of the patient providing such biological sample; provided, however, any test, process or procedure performed using an IVD Test Kit shall not be considered to be a Laboratory Developed Test.

“Plasma Prostate Cancer Test” shall mean any Laboratory Developed Test using genes, gene products, or other biomarkers present in blood plasma for differentiating clinically significant prostate cancer from other prostate conditions, including without limitation clinical laboratory testing and clinical trials, but expressly excluding manufacture of IVD Test Kits. For reference purposes, the license granted for the Plasma Prostate Cancer Test is identified as “License B”.

“Pancreatic Cancer Test” shall mean any Laboratory Developed Test using genes, gene products, or other biomarkers present in any type of biological sample for differentiating clinically significant pancreatic cancer from other pancreatic conditions, including without limitation clinical laboratory testing and clinical trials, but expressly excluding manufacture of IVD Test Kits. For reference purposes, the license granted for the Pancreatic Test is identified as “License C”.

“Colon Cancer Test” shall mean any Laboratory Developed Test using genes, gene products or other biomarkers for differentiating clinically significant colon cancer from other colon conditions, including without limitation clinical laboratory testing and clinical trials, but expressly excluding manufacture of IVD Test Kits. For reference purposes, the license granted for the Colon Cancer Test is identified as “License D”.

“Cytogenetics Interpretation System” shall mean any interpretive software and related technology for computer-aided karyotype analysis for genetic screening and detection of chromosomal abnormalities. For reference purposes, the license granted for the Cytogenetics Interpretation System is identified as “License E”.

“Flow Cytometry Interpretation System” shall mean interpretive software and related technology for computer-aided analysis of flow cytometry tests. For reference purposes, the license granted for the Flow Cytometry Interpretation System is identified as “License F”.

“Urine Prostate Cancer Test” shall mean any Laboratory Developed Test using genes, gene products, or other biomarkers present in urine samples for differentiating clinically significant prostate cancer from other prostate conditions, including without limitation clinical laboratory testing and clinical trials, but expressly excluding manufacture of IVD Test Kits. For reference purposes, the license granted for the Urine Prostate Cancer Test is identified as “License G”.

“Tissue Prostate Cancer Test” shall mean any Laboratory Developed Test using genes, gene products, or other biomarkers present in tissue samples for differentiating clinically significant prostate cancer from other prostate conditions, including without limitation clinical laboratory testing and clinical trials, but expressly excluding manufacture of IVD Test Kits. For reference purposes, the license granted for the Tissue Prostate Cancer Test is identified as “License H”.

Licensed Patents
Patent/Application No.
Title
Filing Date/
Expires

Issue Date

Patent/Application No.
Title
Filing Date/
Expires

Issue Date

U.S. Patent No. 6,128,608
Enhancing Knowledge Discovery Using Multiple Support Vector Machines
05-01-1999/
5/1/2019

10/3/2000

U.S. Patent No. 6,157,921
Enhancing Knowledge Discovery Using Support Vector Machines in a Distributed Network Environment
05-01-1999/
5/1/2019

12/5/2000

U.S. Patent No. 6,427,141
Enhancing Knowledge Discovery Using Multiple Support Vector Machines.
05-09-2000/
5/1/2019

7/30/2002

U.S. Patent No. 6,658,395
Enhancing Knowledge Discovery from Multiple Data Sets Using Multiple Support Vector Machines.
05-24-2000/
5/1/2019

12/2/2003

U.S. Patent No. 6,714,925
System for Identifying Patterns in Biological Data Using a Distributed Network.
08-07-2000/
5/1/2019

3/30/2004

U.S. Patent No. 6,760,715
Enhancing Biological Knowledge Discovery Using Multiple Support Vector Machines.
08-07-2000/
5/1/2019

7/6/2004

U.S. Patent No. 6,789,069
Method of Identifying Patterns in Biological Systems and Method of Uses.
08-07-2000/
4/13/2020

9/7/2004

U.S. Patent No. 6,882,990
Method of Identifying Biological Patterns Using Multiple Data Sets.
08-07-2000/
5/1/2019

4/19/2005

U.S. Patent No. 6,944,602
Spectral Kernels for Learning Machines
03-01-2002/
2/19/2023

9/13/2005

U.S. Patent No. 6,996,549
Computer-Aided Image Analysis
01-23-2002/
4/21/2021

2/7/2006

U.S. Patent No. 7,117,188
Methods of Identifying Patterns in Biological Systems and Uses Thereof
01-24-2002/
3/9/2022

10/3/2006

U.S. Patent No. 7,299,213
Method of Using Kernel Alignment to Extract Significant Features from a Large Dataset
09-12-2005/
3/1/2022

11/20/2007

U.S. Patent No. 7,318,051
Methods for Feature Selection in a Learning Machine
11-18-2003/
2/25/2021

1/8/2008

U.S. Patent No. 7,353,215
Kernels and Methods for Selecting Kernels for Use in Learning Machines
11-07-2003/
1/27/2023

4/1/2008

U.S. Patent No. 7,383,237
Computer-Aided Image Analysis
02-06-2006/
11/4/2019

6/3/2008

U.S. Patent No. 7,444,308
Data Mining Platform for Bioinformatics and Other Knowledge Discovery
12-15-2003/
5/28/2022

10/28/2008

U.S. Patent No. 7,475,048
Pre-Processed Feature Ranking for a Support Vector Machine
05-07-2004/
7/22/2021

1/6/2009

U.S. Patent No. 7,542,947
Data Mining Platform for Bioinformatics and Other Knowledge Discovery
10-30-2007/
5/20/2022

6/2/2009

U.S. Patent No. 7,542,959
Feature Selection Method Using Support Vector Machine Classifier
08-21-2007/
8/7/2020

6/2/2009

U.S. Patent No.  7,617,163
Kernels and Kernel Methods for Spectral Data
10-09-2002/

11/10/2009

U.S. Patent No. 7,624,074
Methods for Feature Selection in a Learning Machine
10-30-2007/
8/7/2020

11/24/2009

U.S. Patent No. 7,676,442
Selection of Features Predictive of Biological Conditions Using Protein Mass Spectrographic Data
10-30-2007/
8/7/2020

3/9/2010

U.S. Patent No. 7,788,193
Kernels and Methods for Selecting Kernels for Use in Learning Machines
10-30-2007/
8/6/2023

8/31/2010

U.S. Patent No. 7,797,257
System for Providing Data Analysis Services Using a Support Vector Machine for Processing Data Received from a Remote Source
10-31-2007/
7/28/2020

9/14/2010

U.S. Patent No. 7,805,388
Method for Feature Selection in a Support Vector Machine Using Feature Ranking
10-30-2007/
8/7/2020

9/28/2010

U.S. Patent No. 7,890,445
Model Selection for Cluster Data Analysis
10-30-2007/
6/8/2024

12/15/2011

U.S. Patent No.  7,921,068
Data Mining Platform for Knowledge Discovery from Heterogeneous Data Types and/or Heterogeneous Data Sources
10-30-2007/
5/20/2022

4/5/2011

U.S. Patent No.  7,970,718
Method for Feature Selection and for Evaluating Features Identified as Significant for Classifying Data
09-26-2010/
1/24/2022

6/28/2011

U.S. Patent No.  8,008,012
Biomarkers Downregulated in Prostate Cancer
09-30-2008/
1/13/2026

8/30/2011

U.S. Patent  No. 8,095,483
Support Vector Machine-Recursive Feature Elimination (SVM-RFE)
12-01-2010/
8/7/2020

1/10/2012

U.S. Patent Publ. No. 2005/0165556
Colon Cancer-Specific Biomarkers
01-11-2005/
08-07-2020 + PTA

U.S. Patent Publ. No. 2010/0256988
System for Providing Data Analysis Services Using a Support Vector Machine for Processing Data Received from a Remote Source
06-11-2010/
5/1/2019

U.S. Patent Publ. No. 2011/0106735
Recursive Feature Elimination Method Using Support Vector Machines
11/11/2010
08-07-2020 + PTA

U.S.Patent Publ. No. 2010/0318482
Kernels for Identifying Patterns in Datasets Containing Noise or Transformation Invariances
08-25-2010/
05-07-2022 + PTA

U.S.Patent Publ. No. 2011/0184896
Method for Visualizing Feature Ranking of a Subset of Features for Classifying Data Using a Support Vector Machine
04-04-2011/
05-20-2022  PTA

U.S. Patent Publ. No. 2010/0205124
Support Vector Machine-Based Method for Analysis of Spectral Data
02-04-2010/
08-07-2020 + PTA

U.S.Patent Publ. No. 2011/0125683
Identification of Co-Regulation Patterns by Unsupervised Cluster Analysis of Gene Expression Data
02-02-2011/
05-17-2022 + PTA

U.S. Patent Publication No. 2009/0204557
Method and System for Analysis of Flow Cytometry Data Using Support Vector Machines
02-08-2009/
02-08-2029 + PTA

U.S. Patent Publication No. 2008/0050836
Biomarkers for Screening, Predicting, and Monitoring Benign Prostate Hyperplasia
07-26-2007/
11-14-2025 + PTA

U.S. Patent Publication No. 2009/0215024
Biomarkers Upregulated in Prostate Cancer
02-04-2008/
11-14-2025 + PTA

U.S. Patent Publication No. 2009/0286240
Biomarkers Overexpressed in Prostate Cancer
09-30-2008/
11-14-2025 + PTA

U.S. Patent Publication No. 2009/0215058
Methods for Screening, Predicting and Monitoring Prostate Cancer
12-04-2008/
11-14-2025 + PTA

U.S. Patent Publication No. 2009/0226915
Methods for Screening, Predicting and Monitoring Prostate Cancer
01-06-2009/
11-14-2025 + PTA

U.S.Patent Publication No.  2011/0312509
Biomarkers Downregulated in Prostate Cancer
08-29-2011/
11-14-2025 + PTA

U.S. Patent No. 6,920,451
Method for the Manipulation, Storage, Modeling, Visualization and Quantification of Datasets
01-19-2001/
6/9/2021

7/19/2005

U.S. Patent No. 7,366,719
Method for the Manipulation, Storage, Modeling, Visualization and Quantification of Datasets
10-06-2004/

4/29/2008

Field of Use
“Field” or “Field of Use” shall mean the fields of laboratory testing, molecular diagnostics, clinical pathology, anatomic pathology, and digital image analysis, excluding non-pathology-related radiologic and photographic image analysis, relating to the development, marketing, production or sale of any Laboratory Developed Tests or other products used for diagnosing, ruling out, predicting a response to treatment, and/or monitoring treatment of any or all hematopoietic and solid tumor cancers excluding cancers affecting the retina and breast cancer; provided, however, the manufacture and sale of IVD Test Kits for sales to third parties and the melanoma screening system and methods described in the patent applications listed in Exhibit D are specifically excluded from the Field or Field of Use; and provided further that the foregoing exclusion of “and breast cancer” immediately prior to the first proviso of this section shall be in effect only so long as the License Agreement among and between LICENSOR.

The Licensee is a high-complexity CLIA-certified clinical laboratory that specializes in cancer genetics diagnostic testing. The Licensee's testing services include cytogenetics, fluorescence in-situ hybridization (FISH), flow cytometry, immunohistochemistry, morphology studies, anatomic pathology and molecular genetic testing. Headquartered in Fort Myers, FL, The Licensee services the needs of pathologists, oncologists, urologists and other clinicians, and hospitals throughout the United States.

Disclaimer: The information gathered from RoyaltySource® database was sourced from the U.S. Securities and Exchange Commission EDGAR Filings and other public records. While we believe the sources to be reliable, this does not guarantee the accuracy or completeness of the information provided. Further, the information is supplied as general guidance and is not intended to represent or be a substitute for a detailed analysis or professional judgment. This information is for private use only and may not be resold or reproduced without permission.