Royalty Report: Medical, Detection, Diagnostic – Collection: 372441

License Grant

Licensor, an independent agency of the U.S. federal government responsible for the civilian space program, as well as aeronautics and space research, hereby grants to Licensee a terminable, royalty-bearing, exclusive license to practice, i.e., to make, have made, use, offer to sell, sell, transfer, or dispose of, the Licensed Invention in accordance with the Licensed Area and Licensed Field(s) of Use. Unless either Party terminates this agreement, Five (5) years from the License Commencement Date, the license shall automatically convert to a non-exclusive license to practice, i.e., to make, have made, use, offer to sell, sell, transfer, or dispose of, the Licensed Invention in accordance with the Licensed Area and Licensed Field(s) of Use.

License Property

Patents
7,623,972 – Detection of presence of chemical precursors
7,801,687 – Chemical sensors using coated or doped carbon nanotube networks
7,968,054 – Nanostructure sensing and transmission of gas data
8,000,903 – Coated or doped carbon nanotube network sensors as affected by environmental parameters

Field of Use

Licensee is developing personalized and point-of-care screening using applications based upon chemical sensing residing within a small device attached to a smartphone.

Patents relate to chemical sensing nanotechnology.

Licensed Fields of Use shall mean chemical sensing applications for cancer detection and narcotics detection.

License Grant

The University hereby grants to the Licensee an exclusive license in the Field of Use, including the right to sublicense under the Patent Rights to make, have made, use, Sell, offer for Sale, import Licensed Products, and to practice the Licensed Method in the United States and in other countries where the University may lawfully grant such licenses.

The University also grant to the Licensee, so long as it retains exclusive rights under this Agreement, the right to issue Sublicenses.

License Property

Whereas, certain inventions are characterized as 'Chemical Nanowire Sensor Arrays' ('Invention');
Whereas, the Invention covered under UC Case Number 2004-177 ('Bio-receptor Embedded Conductive Polymer Nanowire Sensor Arrays');
Whereas, the Invention covered under UC Case Number 2007-108 ('Metal Nanoparticles Decorated Carbon Nanotubes for Gas Sensors');
Whereas, certain of the Inventions covered under UC Case Numbers 2010-170 ('Synthesis of Nanopeapods by Galvanic Displacement of Segmented Nanowires') and 2010-240 ('Metal and Metal Oxides Co-Functionalization SWNT's as High Performance Gas Sensors');

The License was granted within certain fields of use relating to “Bio-receptor Embedded Conductive Polymer Nanowire Sensor Arrays”, “Metal Nanoparticles Decorated Carbon Nanotubes for Gas Sensors”, the “Synthesis of Nanopeapods by Galvanic Displacement of Segmented Nanowires”, “Metal and Metal Oxides Co-Functionalization SWNT’s as High Performance Gas Sensors”, “Ultra-Sensitive Gas Sensors Based on Tellurium-Single Walled Carbon Nanotube Hybrid Nanostructures” and “Selective Nanoscale Asymmetric Gas Sensors”.

The license relates to patented and patent-pending sensor technologies based on nano materials that can detect airborne gases to the parts-per-billion (PPB) level.

'Patent Rights' means the University's interest in the Valid Claims of the United States patents and patent applications, corresponding foreign patents and patent applications and any reissues, extensions, substitutions, continuations, divisions, and continuation-in-part applications (but only those Valid Claims in the continuation-in-part applications that are entirely supported in the specification and entitled to the priority date of the parent application) based on the following

'Bio-receptor Embedded Conductive Polymer Nanowire Sensor Arrays' filed on October 25, 2005, United States Patent Application Serial Number 11/259,557, assigned to The Regents (UC Case Number 2004-177-2);
'Metal Nanoparticles Decorated Carbon Nanotubes for Gas Sensors' filed on September 11, 2007, United States Patent Application Serial Number 12/514,050, assigned to The Regents (UC Case Number 2007-108-2);
'Synthesis of Nanopeapods by Galvanic Displacement of Segmented Nanowires' to be filed shortly and assigned to The Regents (UC Case Number 2010-170); and
'Metal and Metal Oxides Co-Functionalization SWNT's as High Performance Gas Sensors' to be filed shortly and assigned to The Regents (UC Case Number 2010-240).

Field of Use

'Field of Use' means the use of the Licensed Products and the Licensed Methods for chemical detection using carbon nanotube-based sensory arrays. Any use of the Licensed Products for other than chemical detection is excluded from the Field of Use.

The Licensee will try to commercialize patented and patent-pending sensor technologies based on nano materials that can detect airborne gases to the parts-per-billion level to be used in air quality monitoring, explosives detection, industrial plant toxic gas detection, gaseous chemical warfare agent detection, food and agricultural safety hazard detection and other applications.

License Grant

Foundation hereby grants Optionee an option to enter into an exclusive, worldwide license to use and otherwise exploit the Technology Rights in the Fields agreed to by the parties, including the right to make, have made, use, sell and offer to sell Licensed Products and practice Licensed Methods, pursuant to the terms of a definitive license agreement agreed upon between the parties (a 'License Agreement').

License Property

6,241,948 Low Power Solid-State Sensor Device (R 5449)
6,492,182 Micromachined Microsensor Arrays for Chemical Sensing Applications (R 5516)

Field of Use

'Fields' means the following fields of use homeland security; environmental; artificial olfactory sense detection; and medical.

The Licensee's business is to develop, commercialize and market technology in the field of micro-sensor elements and sensor arrays in the homeland security, indoor air quality, food purity and processing and medical diagnostic industries.