Royalty Report: Drugs, Cancer, Diabetes Treatment – Collection: 367328

License Grant

Canadian University grants to the Canadian Licensee a worldwide, exclusive license to use and sublicense the Technology, University Improvements and any Joint Improvements and to manufacture, have made, distribute, and sell the Products on the terms and conditions set out in this Agreement.

The license granted under this Agreement is granted only to the Licensee and not to any Affiliated Companies. The Licensee will not cross-license the Technology or any Improvements without the prior written consent of University, which consent will not be unreasonably withheld.

The Licensee will not grant sublicenses of the Technology, University Improvements or any Joint Improvements to Affiliated Companies or other third parties without the prior written consent of University which consent will not be unreasonably withheld.

License Property

The technology relates to Hsp27 antisense and its use in the treatment of cancer.

Technology  means the Patents and all knowledge, know-how and/or technique or techniques invented, developed and/or acquired, before the Effective Date by University or the Licensee relating to, and including, the technology and materials described, as amended from time to time, including, without limitation all related research, data, specifications, instructions, manuals, papers or other related materials of any nature at all, whether written or otherwise, and University’s Confidential Information.
U.S. Provisional filed
April 18, 2003, Serial No.
60/463,952 Hsp27 Antisense to Treat Prostate and other Solid Tumours.

Patents mean collectively the rights in and to any and all inventions which are disclosed in the U.S., Canadian and foreign patents and patent applications identified and all
(i)            counterparts, continuations, divisionals, continuations-in-part, continuing prosecution applications, and requests for continued examinations, extensions, term restorations, renewals, reissues, re-examinations, or substitutions thereof;
(ii)           corresponding international patent applications;
(iii)          corresponding foreign patent applications, including supplementary protection certificates and other administrative protections; and
(iv)          international and foreign counterpart patents resulting therefrom, all of which will be deemed added, from time to time.
U.S. Provisional filed October 2, 2002, Serial
No. 60/415,859 Hsp27 Antisense to Treat Prostate and other Solid Tumours.

Product(s) means goods or services manufactured or provided in connection with the use of all or some of the Technology and/or any Improvements.

Field of Use

Field of use is for the treatment of cancer relating to Hsp27 antisense technology.

License Grant

In consideration of the equity in the Licensee, the royalty payments reserved herein, and the covenants on the part of the Canadian Licensee contained herein, the Canadian University hereby
(a)           grants to the Licensee an exclusive worldwide license to use and sublicense the Technology, any University Improvements and Confidential Information on the terms and conditions hereinafter set forth during the term of this Agreement;  and
(b)           grants to the Licensee an exclusive worldwide license to use and sublicense to manufacture, distribute, have distributed, sell and have sold, Products on the terms and conditions hereinafter set forth during the term of this Agreement.

The Licensee shall have the right to grant sublicenses to Affiliated Companies and other third parties with respect to the Technology and any University Improvements with the prior written consent of the University, which consent shall not be unreasonably refused.

License Property

Technology  any and all knowledge, know-how and/or technique or techniques invented, developed and/or acquired, prior to the Date of Commencement by the University or the Licensee relating to, and including the technology described hereto, as amended from time to time, including, without limitation, all research, data, specifications, instructions, manuals, papers or other materials of any nature whatsoever, whether written or otherwise, relating to same.

98-083
U.S. Provisional filed February 26, 1999, – Serial No. 60/121,726
Inventors Martin Gleave, Hideaki Miyake and Colleen Nelson
Antisense Therapy for Prostate Cancer

PCT flied February 25, 2000 – Serial No. PCT/US00/0487
(designating U.S. and all other countries)
Inventors Martin Gleave, Paul Rennie, Hideald Miyake and Colleen Nelson
TRPM~2 Antisense Therapy

00-095
U.S. Provisional flied September 28, 2000 – Serial No. 60/236,301
Inventors Martin Gleave, H!deaki Miyake, Paul Rennie, Colleen Nelson and Toby Zellweger
chemosensitization of a Human Renal Cell Cancer Model by Antisense TRPM-2
Oligodeoxynucleotides both In Vitro and In Vivo

00-095/ 98-083
– US ClP based on the 98-083 US application (#09/913,325 – see above) and also claims the benefit of the 00-095 provisional (# 60/263,301).

Product(s)  goods manufactured in connection with the use of all or some of the Technology and/or any Improvements.

Field of Use

Field of use is for the treatment of prostate cancer and other cancers.

OGX-011 is focused on reducing clusterin production to enhance treatment sensitivity and delay tumor progression in patients who have not fully developed treatment resistance and to restore treatment sensitivity in patients who have developed treatment resistance. Clusterin is a cell survival protein that is over-produced in several cancer indications in response to many cancer treatments, including hormone ablation therapy, chemotherapy and radiation therapy. Increased clusterin production is observed in many human cancers, including prostate, non-small cell lung, breast, ovarian, bladder, renal, pancreatic, anaplastic large cell lymphoma and colon cancers and melanoma. Increased clusterin production is linked to faster rates of cancer progression, treatment resistance and shorter survival duration.

License Grant

In consideration of the equity in the Canadian Licensee, the royalty payments reserved herein, and the covenants on the part of the Licensee contained herein, the Canadian University hereby
(a)           grants to the Licensee an exclusive worldwide license to use and sublicense the Technology, any University Improvements and Confidential Information on the terms and conditions hereinafter set forth during the term of this Agreement;  and
(b)           grants to the Licensee an exclusive worldwide license to use and sublicense to manufacture, distribute, have distributed, sell and have sold, Products on the terms and conditions hereinafter set forth during the term of this Agreement.

The Licensee shall have the right to grant sublicenses to Affiliated Companies and other third parties with respect to the Technology and any University Improvements with the prior written consent of the University, which consent shall not be unreasonably refused.

License Property

Technology relating to antisense oligonucleotide therapy for the treatment of prostate cancer and other cancers.

U.S. Provisional filed July 19, 1999 – Serial No. 60/144,495
Inventors Martin Gleave and Hideaki Miyake
Antisense Therapy for Hormone–Regulated Tumors

Full U.S. application flied July 19, 2000 – Serial No. 09/619,908
Inventors Martin Gleave and Hideaki Miyake
Antisense Therapy for Hormone-Regulated Tumors

PCT filed July 19, 2000 – Serial No. PCT/CA00/00853
Inventors Martin Gleave and Hideaki Miyake
Antisense Therapy for Hormone-Regulated Tumors

Field of Use

Field of use is for the treatment of prostate cancer and other cancers.

OGX-011 is focused on reducing clusterin production to enhance treatment sensitivity and delay tumor progression in patients who have not fully developed treatment resistance and to restore treatment sensitivity in patients who have developed treatment resistance. Clusterin is a cell survival protein that is over-produced in several cancer indications in response to many cancer treatments, including hormone ablation therapy, chemotherapy and radiation therapy. Increased clusterin production is observed in many human cancers, including prostate, non-small cell lung, breast, ovarian, bladder, renal, pancreatic, anaplastic large cell lymphoma and colon cancers and melanoma. Increased clusterin production is linked to faster rates of cancer progression, treatment resistance and shorter survival duration.

License Grant

University grant to Licensee, and Licensee hereby accepts, a royalty-bearing, exclusive license under Licensed Subject Matter to make, have made, manufacture, have manufactured, use, import, offer to sell, sell and/or have sold products within Licensed Territory for use within Licensed Field. This grant is subject herein below, the payment by Licensee to University of all consideration as provided herein, and is further subject to the following rights retained by University to
(a) publish the general scientific findings from research related to Licensed Subject Matter, subject to the terms of Article XI-Confidential Information and Publication; and
(b) use Licensed Subject matter solely for its own internal, non-commercial research, teaching, and other educationally-related purposes; and
(c) request that the Licensee transfer Licensed Subject Matter to academic or research institutions for non-commercial research use or for purposes of collaboration upon terms reasonably acceptable to the Licensee and such third party; provided, however, that Licensee will not unreasonably withhold consent to University’s use of the Licensed Subject Matter in collaborations between University, and/or the National Cancer Institute (NCI).

License Property

Licensed Subject Matter means Patent Rights, Improvements and Technology Rights within Licensed Field.

Patent Rights means University’s rights in information or discoveries described in invention disclosures below or in the subsequent reductions to practice of such information or discoveries (so long as such subsequent reductions to practice are not obligated to a third party), or claimed in any patents, and/or patent applications, whether domestic or foreign, based on such invention disclosures and such reductions to practice (that are not obligated to a third party) and all domestic and foreign divisionals, continuations, continuations-in-part, reissues, reexaminations or extensions thereof, including any foreign counterparts thereto and any letters patent that issue thereon, including but not limited to (a) Provisional Application entitled, “Compounds and Methods for the Treatment of Cancer” filed July 16, 2004; (b) U.S. Application Serial Number 60/346,492 filed January 7, 2002; (c) WO 2003/057012 filed January 7, 2003; (d) U.S. Application Serial Number 10/337,969 filed January 7, 2003; and (e) national stage filings for MDA01-063 in Europe, Japan, Canada and Australia.

MDA01-063 “New Organic Arsenic Derivatives as a Treatment for Cancer,” Srdan Verstovsek, M.D., Ph.D., Ralph A. Zingaro Ph.D., Emil J. Freireich, M.D., Hatice Duzkale, M.D., Hagop M. Kantarjian, M.D.

MDA04-076 “Arsenic-Lipid Derivatives as a Treatment for Cancer,” Srdan Verstovsek, M.D., Ph.D., Ralph A. Zingaro Ph.D., Hagop M. Kantarjian, M.D., M. Gao

Licensed Products means any product or service that is covered in whole or in part by a valid claim contained in the Patent Rights in the country in which the product is made, used, leased or sold.

Field of Use

Patent applications and related improvements and know-how) are for the manufacture and commercialization of two classes of organic arsenicals (water- and lipid-based) for human and animal use. The class of water-based organic arsenicals includes ZIO-101.

ZIO-101 is an organic arsenic compound covered by an issued U.S. patent and applications internationally. A form of commercially available inorganic arsenic (arsenic trioxide (Trisenox®) or ATO) has been approved for the treatment of acute promyelocytic leukemia (APL), a precancerous condition, and is on the compendia listing for the therapy of multiple myeloma as well as having been studied for the treatment of various other cancers.

License Grant

Licensor hereby grants to Licensee the exclusive worldwide right and license, with the right to sublicense on the terms and conditions set forth, in the Field of Use under the Licensor Patent(s) to make, have made, market, have marketed, use, import, offer for sale, sell and have sold Licensed Product (the License). The License granted hereunder shall be subject to any rights of the U.S. Government, its agencies or authorities under Public Law 96-517 and Public Law 98-620 which may be applicable. Notwithstanding the License granted herein, Licensor shall have the right, subject to Licensees consent, not to be unreasonably withheld, to make and have made Licensed Product(s) for itself and distribution to non-profit organizations for research purposes only, but not for any commercial or other purpose. Nothing in the foregoing sentence shall constitute a grant by Licensee or confer upon Licensor any rights to make or use the Biological Materials.

License Property

Licensor Patent(s) shall mean those United States or foreign patents and/or applications listed hereto as amended and modified from time to time by Licensor is hereby incorporated herein by reference, the inventions disclosed therein, and any divisions, reissues, continuations, continuations-in-part or extensions relating or corresponding thereto, and disclosed in foreign patent application corresponding thereto.

US Application Serial No. 09/546,733  

Biological Materials shall mean the vascular endothelial growth factor-2 gene referred to as “VEGF-2” and proprietary naked plasmid DNA encoding for VEGF-2, including the plasmid DNA sometimes referred to as “phVEGF-2” or “pVGI.1(VEGF2)”, together with any Progeny, Derivatives and Modifications therefrom.

Initial Product shall mean a product for the treatment of peripheral diabetic neuropathy that incorporates Biological Materials.

Licensed Product shall mean any product or method in the Field of Use covered by one or more Valid Claims.

Intellectual Property shall mean all intellectual property rights, including (i) United States and other national patents and patent applications, divisions, continuations, continuations-in-part, reissues, renewals, reexaminations, requests for continued examination, supplemental registrations or extensions thereof, (ii) trademarks, whether registered or unregistered and applications for registration thereof, (iii) copyrights, whether registered or unregistered and applications for registration thereof, and (iv) trade secrets, know-how, technology, proprietary information and data, including formulae, procedures, plans, methods, processes, specifications, models, protocols, techniques and experimentation, and design, testing and manufacturing data, and products, compositions, and procedures.

Field of Use

Field of Use shall mean the use of Biological Materials for treating a peripheral neuropathy, including, without limitation, diabetic neuropathy.

Peripheral neuropathy refers to the conditions that result when nerves that carry messages to and from the brain and spinal cord from and to the rest of the body are damaged or diseased. The peripheral nerves make up an intricate network that connects the brain and spinal cord to the muscles, skin, and internal organs.

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).