Royalty Report: Drugs, Delivery, Pain – Collection: 367299


Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 6


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: 6

Primary Industries

  • Drugs
  • Delivery
  • Pain
  • Pharmaceuticals
  • Disease

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: 367299

License Grant
For the Backup License in this Commercial Supply Agreement, Licensor of Germany grants Licensee a world-wide right and license, with the right to grant and authorize sublicenses, under Licensors Technology, to use, make, have made, sell, offer for sale, import, promote, market, develop, obtain regulatory approval for and otherwise commercialize Patches and any derivatives or improvements thereof made by or for Licensee, its Affiliates or Sublicensees, and to practice any methods, processes or procedures described or claimed therein in connection with the foregoing; provided that Licensee, its Affiliates or Sub licensees shall not exercise any rights set forth.

The Parties have previously entered into a Memorandum of Understanding and a Clinical Supply, Development and License Agreement, pursuant to which the Parties cooperated on the development of a Patch as and Licensor supplied Patches to Licensee for clinical trial purposes.

Licensee is engaging the Licensor of Germany to exclusively manufacture and supply Licensees requirements for the Patch, and Licensor shall manufacture and supply Licensee with all of Licensees commercial requirement for up to the Maximum Capacity for each year.

To the extent Licensee authorizes a Sublicensee to purchase directly from Licensor, Licensor agrees to supply the commercial requirements for Patches of such Sublicensee subject to the Maximum Capacity.

License Property
Technology relates to formulate the active ingredient from a powder into a dermal patch.

For inventions relating to the patch which are Licensor Owned, all inventions developed by the Parties or by either Party under this Agreement or the Clinical Supply Agreement solely relating to Licensor’s existing TTS technology, including but not limited to design, formulation, manufacturing, testing and packaging of TTS, shall be the property of Licensor (Licensor IP). Licensor shall not use any Licensor IP for the development of transdermal therapeutic patches or TTS containing VR1-Ligand until May 29, 2006, other than for Licensee. Thereafter, until May 29, 2009, Licensee shall have a right of first refusal in case Licensor commences development of TTS which contain any VR1-Ligand using Licensor IP.

Active Ingredient means the active pharmaceutical ingredient capsaicin.

VRl-Ligand is any vanilloid or related molecule selected from the group consisting of capsaicin, trans-capsaicin, cis-capsaicin, dihydrocapsaicin, nordihydrocapsaicin, homocapsaicin, homodihydrocapsaicin, resiniferatoxin, piperine, zingerone, eugenol, guaiacol, anandamide, arvanil, N-(4-hydroxyphenyl)-arachidonylamide (AM404), terpenoid unsaturated dialdehydes such as warburganol, polygodial, isovelleral, cinnamodial, aframodial, scalaradial, ancistrodial, b-acardial, sesquiterpenes such as cinnamosmolide or cinnamolide, triprenyl phenols such as scutigeral, olvanil, nonivamide, vanillin, vanillyamide, 20-homovanillyl-mezerein or 20-homovanillyl-12-deoxyphorbol-13-phenylacetate.

Kit means the commercial product form sold by Licensee, its Affiliates or Sublicensees of which the Patch is a component.

Patch or Patches means the TTS containing the Active Ingredient developed by the Parties.

Field of Use
The Field of use is an area based content above 0.2 milligrams per square centimeter or that is covered by Licensors patent continuations, continuations-in-part, divisions and foreign counterparts thereof, & patents issuing thereon, including renewals, reissues and extensions, such TTS with capsaicin as.

Qutenzaâ„¢ (formerly NGX-4010) for the treatment of peripheral neuropathic pain in non-diabetic adults either alone or in combination with other medicinal products for pain.

IPSCIO Record ID: 273586

License Grant
Licensor grants an exclusive license of the Licensor KnowHow to package, use, offer for sale and sell the Product in the Territory.
License Property
Licensor has rights to technology in relation to the development and production of drug specific dosage forms.

Licensor is knowledgeable in the development of drug specific oral and transdermal dosage forms and has developed a unique range of delivery systems designed to provide newer and better formulations of medicaments.

Field of Use
The Licensee entered into a licensing agreement to market a clonidine transdermal patch, a generic version of Catapres TTS®.
Catapres-TTS (clonidine) transdermal therapeutic system is a square, tan adhesive patch containing an active blood-pressure-lowering medication. It is designed to deliver the drug into the body through the skin smoothly and consistently for one full week.

IPSCIO Record ID: 369241

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

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

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

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

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

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

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

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

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

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

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

IPSCIO Record ID: 25850

License Grant
The University granted the Licensee an exclusive license to  make, have made, use, sell, offer to sell, import, have imported, and otherwise exploit Licensed Products and to practice Licensed Methods.  The inventions, generally characterized as High Dose Capsaicin Relieves Neuropathic Pain (or High Dose Capsaicin for Neuropathic Pain) UCSF Case No. SF00-056.
License Property
Patent Rights means the Regents’ interest in any subject matter claimed in or covered by any of the following Pending U.S. Patent Application Serial No. 08/746,207 entitled Therapeutic Method with Capsaicin and Capsaicin Analogs filed November 6, 1996, the continuation-in-part U.S. Patent Application Serial No. 08/990,633 entitled Transdermal Therapeutic Device and Method with Capsaicin and Capsaicin Analogs filed December 15, 1997 and assigned to The Regents; pending PCT Patent Application Serial No. PCT/US98/25794 of the same title, filed December 8, 1998 and assigned to The Regents; and continuing applications thereof including divisions, substitutions, continuation-in-part applications (but only to the extent however, that claims in the continuation-in-part applications are entitled to the priority filing date of the foregoing applications); any patents issuing on said applications including reissues, reexaminations and extensions; and any corresponding foreign applications or patents based on said applications.
Field of Use
The rights granted apply to the healthcare industry.  Field of Use means all fields and uses.

IPSCIO Record ID: 273277

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

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

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

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

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

IPSCIO Record ID: 294017

License Grant
The English Licensor hereby grants, on behalf of itself and its Affiliates, to the English Licensee, effective on the Effective Date, a royalty-bearing, exclusive (even as to Licensor (except to the extent necessary for Licensor to perform the Licensor Development Activities)) worldwide license, with the right to sublicense, under the Licensor Technology to Manufacture, Develop and Commercialize the Products in the Field in the Territory.

Licensee hereby grants, on behalf of itself and its Affiliates, to Licensor, effective on the Effective Date, a royalty-free, non-exclusive license, with the right to sublicense, (i) under the Licensee Technology to the extent necessary for Licensor to perform the Licensor Development Activities and (ii) under any Licensee Improvement Manufacturing Patent Rights for use other than for the Manufacture, Development and/or Commercialization of the Products in the Field in the Territory.

License Property
Xodol means the product currently marketed under the brand name 'Xodol', which is a combination of 5, 7.5 or 10 milligrams (mg) ofhydrocodone, in each case, combined with 300 mg of acetaminophen (it being understood that (x) Licensors existing sublicensee currently markets such product under a different name and (y) such product, whether marketed under such different name or any other name in the future, shall be deemed to be 'Xodol' for the purposes of this Agreement).

Product means any Hydrocodone Product or Combination Product.

Hydrocodone Product means any pharmaceutical product containing Hydrocodone as its sole Active Ingredient that is in a formulation containing the Licensee Technology and which is Developed, Manufactured and Commercialized pursuant to, and in accordance with, this Agreement.

Combination Product means any pharmaceutical product comprised of Hydrocodone and any non-opioid agonist drug as the Active Ingredients.  For purposes of clarity, S-297995 (also known as Naldemedine) is a non-opioid agonist drug.

S-297995 means (5R, 14S)-17-(Cyclopropylmethyl)-6, 7-didehydro-4,5-epoxy-3 ,6, 14-trihydroxy-N-[1-methyl-l-(3-phenyl-1,2,4-oxadiazol-5-yl)ethyl]morphinan-7-carboxamide Monotosylate including any metabolites, prodrugs, solvates (including hydrates), esters, salts, stereoisomers, racemates, tautomers and polymorphs (including crystal forms), of such compound.

Licensor Technology means the (a) Licensor Know-How and the Licensor Patent Rights, including Licensor Core Technology (b) the Licensor Core Technology Improvements, and (c) all intellectual property rights therein.

Licensor Patent Rights means any Patent Right that Licensor or its Affiliates Controls on the Effective Date or that comes into the Control of Licensor or its Affiliates during the Term (other than any Patent Rights which are Licensee Patent Rights), to the extent that such Patent Right is necessary or useful to Develop, Manufacture, or Commercialize in the Territory, the Products in the Field, including any method of making the Products, any composition or formulations of the Products, or any method of using or administering the Products provided that Licensee Patent Rights excludes any Patent Rights to the extent relating to an Licensee API.  The Licensor Patent Rights existing on the Effective Date are set forth.
8,298,581 – Matrix compositions for controlled delivery of drug substances
8,563,038 – Formulations and methods for the controlled release of active drug substances

Licensor Core Technology means, to the extent covered by any Licensor Patent Rights or Licensor Know-How, in each case, Controlled by Licensor and its Affiliates as of the Effective Date,  (i) any abuse-deterrent drug delivery system, (ii) the formulation of products for which any such abuse-deterrent drug delivery system is used and/or (iii) manufacturing of products containing any such abuse-deterrent drug delivery system.  

Licensor Core Technology includes the Licensor Patent Rights and Licensor Know-How, in each case, Controlled by Licensor and its Affiliates as of the Effective Date to the extent covered by clause (i), (ii) and/or (iii) above.  Notwithstanding anything herein to the contrary, in the event there is a dispute as to whether anything in clause (i), (ii) and/or (iii) above was covered by any such Licensor Know-How as of the Effective Date, Licensor shall have the burden of proof with respect to establishing that it was so covered.

Generic Product means, on a country-by-country basis, any pharmaceutical product that (a) is sold by a Third Party that is not an Affiliate or Sublicensee of Licensee under a marketing authorization granted by a Regulatory Authority to a Third Party and (b) results from (i) an abbreviated new drug application including any amended or successor abbreviated route of approval thereof in the United States (ANDA) or (ii) abbreviated routes of approval in any other countries in the Territory that are comparable to ANDA, which in the case of clause (i) and/or (ii), references the applicable Product, provided that (x) such pharmaceutical product has the same Active Ingredient as the Product and an abuse deterrent system or (y) the Product is the primary basis for the approval of such pharmaceutical product.

Patent Right means any and all (a) patent applications filed in any jurisdiction, including all provisional applications, substitutions, continuations, continuations-in-part, divisions, renewals, and all patents granted thereon; (b) all patents, reissues, reexaminations and extensions or restorations by existing or future extension or restoration mechanisms, including supplementary protection certificates or the equivalent thereof; and (c) any other form of government-issued right substantially similar to any of the foregoing, including certificates of invention and applications for certificates of invention.

Field of Use
The collaboration is for the development and commercialization of abuse-deterrent hydrocodone-based product candidates.  Abuse-deterrent is for the treatment of pain and in other indications.
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