Royalty Report: Drugs, Pain, Therapeutic – Collection: 3948

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 12

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: 12

Primary Industries

  • Drugs
  • Pain
  • Therapeutic
  • Pharmaceuticals
  • Disease
  • Diabetes Treatment
  • Diagnostic
  • Gastrointestinal

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: 3948

License Grant
Licensor grants to Dutch Licensee under the Licensor's Technology (i) an exclusive license to develop, have developed, make, have made, use, market, have marketed, promote, have promoted, commercialize, have commercialized, exploit, import, export, sell, have sold and offer to sell the Product and (ii) a nonexclusive license to develop, have developed, make, have made, import and export the Product.

The Licensor will remain responsible for completion of the ongoing Phase 3 clinical trial for DM-1796 for the treatment of pain associated with post-herpetic neuralgia.  The Licensee will be responsible for the NDA filing and has the option to develop DM-1796 in further pain indications other than post-herpetic neuralgia.

License Property
Licensor has used its proprietary AcuForm™ gastric retentive technology to develop an oral dosage form of gabapentin known as Gabapentin GR®, and is conducting Phase III clinical development of Gabapentin GR®.

“Product” means the product known as Gabapentin GR® in the formulation and at the dosage being studied in Depomed Protocol 81-0062, “A Phase 3 Multicenter, Randomized, Double-Blind, Placebo-Controlled, Flexible-Dose Study of the Safety and Efficacy of Gabapentin Extended Release (G-ER) Tablets in the Treatment of Patients with Postherpetic Neuralgia,” dated the 25th day of January, 2008, and any alternative strengths of such dosage form, or line extensions of such product for use within the Field.

Extending the duration of drug release within the stomach during the fed mode

6,340,475

1/22/2002

U.S.

Extending the duration of drug release within the stomach during the fed mode

6,635,280

10/21/2003

U.S.

Optimal polymer mixtures for gastric retentive tablets

6,723,340

4/20/2004

U.S.

Tablet shapes to enhance gastric retention of swellable controlled-release oral dosage form

6,488,962

12/3/2002

U.S.

Methods of Treatment using a Gastric Retained Gabapentin Dosage

7,438,927

10/21/2008

U.S.

Field of Use
Field means the treatment or amelioration of pain, including without limitation treatment of post-herpetic neuralgia (“PHN”), pain associated with diabetic neuropathy (“DPN”), Phantom Pain and fibromyalgia.

IPSCIO Record ID: 310525

License Grant
Licensor grants a sole and exclusive license, including the right to sublicense, to all of the Intellectual Property Rights including the rights to develop,  use, market, promote, and sell the Product in the Territory.

For the Option for additional Territories of Canada and Mexico, Licensor grants an option to extend this Agreement to cover a sole and exclusive, license, on royalty terms that are substantially similar to those set forth in this Agreement, with the right to sublicense, to the Intellectual Property Rights including the right to develop, use, market, promote, and sell Product in Canada and Mexico.

For the Trademark License Grant, Licensor grants an exclusive right and license, to use the Trademark in connection with the marketing, promotion, advertising, and sale or other distribution of the Product in the Territory.

For the Submission Package, Licensor grants an option for a sole and exclusive license, with the right to sublicense, to the Intellectual Property Rights including the right to develop, use, market, promote, and sell a topical formulation of lidocaine in a gel formulation (Development Product), whether sold over-the-counter or by prescription, for human use which falls within the claims of the Licensed Patents.

If Licensee exercises its option, the parties agree to license such Intellectual Property Rights on terms to be mutually agreed to by the parties.based substantially on the terms of this Agreement.

License Property
Licensor is the owner of certain patents, know-how and trademarks for the topical treatment of post-herpetic neuralgia, other forms of neuralgia and neuropathy and has the right to grant licenses to said patents, know-how, and trademarks.

The Patents are titled Method for Treating Nerve Injury Pain Associated with Shingles;  Method for Treating Nerve Injury Pain Associated with Shingles Herpes-Zoster and Post-Herpetic Neuralgia) by Topical Application Of Lidocaine;  Method for Treating Pain Associated with Herpes Zoster and Post-Herpetic Neuralgia;  and,  Method for Treating Nerve Injury Pain Associated with Shingles (Herpes-zoster and Post Herpetic Neuralgia) by Topical Application of Lidocaine.

Product means any topical formulation of lidocaine in a bandage and/or transdermal (Patch) formulation, whether sold over-the counter or by prescription, for human use which falls within the claims of the Licensed Patents.

Trademark shall mean the trademarks LIDODERM or TAKON that may be used to market the Product in the Territory.

Lidocaine patches are used to relieve the pain of post-herpetic neuralgia (PHN; the burning, stabbing pains, or aches that may last for months or years after a shingles infection). Lidocaine is in a class of medications called local anesthetics. It works by stopping nerves from sending pain signals.

Field of Use
This agreement is for the topical treatment of post-herpetic neuralgia, other forms of neuralgia and neuropathy in the United States.

Lidoderm(R) (Lidocaine Patch 5%) is a transdermal pharmaceutical patch product for the treatment of post-herpetic neuralgia.

Postherpetic neuralgia is the most common complication of shingles. The condition affects nerve fibers and skin, causing burning pain that lasts long after the rash and blisters of shingles disappear. The chickenpox (herpes zoster) virus causes shingles.

Licensee is a pharmaceutical company engaged in research, development, and marketing of various products, including pain management products.

IPSCIO Record ID: 6647

License Grant
The Company entered into a License Agreement granting exclusive rights to develop and commercialize DM-1796 for pain indications in the United States, Canada and Mexico.
License Property
DM-1796 is for post-herpetic neuralgia.
Field of Use
In March 2010, the Licensee submitted a New Drug Application for DM-1796 to the U.S. Food and Drug Administration for the management of post-herpetic neuralgia.

IPSCIO Record ID: 253955

License Grant
Licensor grants to the Licensee of England, an exclusive license, with the right to grant sublicenses, under the Licensor Patents and Licensor Know-How to develop, use, make, have made, offer for sale, sell, import, market, distribute and promote the Compound and Products, in each case solely in the Field in the Territory.

The rights and licenses shall be exclusive even as to Licensor, except with respect to
—  the manufacture and supply of the Compound and the Products;
—  Licensors rights to co-develop Products;
—  the right of Licensor to conduct Phase I clinical trials of the Products in the Territory;
—  Licensors obligation to conduct the Clinical Studies and Activities; and
—  Licensors rights to Co-Promote Products.

License Property
Licensor is developing a Transported Prodrugâ„¢ of gabapentin.

The patents are for Analog Prodrug Sustained Release Oral Dosage Form Families and Compound.

“Compound” shall mean that certain compound, referred to internally as XP13512
XP13512 is a patented, new chemical entity that is designed to improve upon the clinical utility of gabapentin by taking advantage of high-capacity transport mechanisms in the gut to improve absorption.

XP13512 is currently in Phase III development for Restless Legs Syndrome (RLS) and in Phase II development for neuropathic pain.

Licensor has developed a Transported Prodrugâ„¢ of gabapentin for the treatment of restless legs syndrome (RLS) and the management of neuropathic pain (which includes post-herpetic neuralgia and diabetic peripheral neuropathy.

Restless legs syndrome (RLS) is a condition that causes an uncontrollable urge to move your legs, usually because of an uncomfortable sensation. It typically happens in the evening or nighttime hours when you're sitting or lying down. Moving eases the unpleasant feeling temporarily.

Field of Use
The product use is for the treatment of restless leg syndrome (RLS) and the management of neuropathic pain.  The Field shall mean the diagnosis, palliation, treatment and/or prevention of any disease or health condition in humans.

IPSCIO Record ID: 253915

License Grant
Licensor grants the Licensee, of England, an exclusive license, with the right to grant sublicenses, under the Licensor Patents and Licensor Know-How to develop, use, make, have made, offer for sale, sell, import, market, distribute and promote the Compound and Products, in each case solely in the Field in the Territory.

Licensee shall have a non-exclusive license, with the right to grant sublicenses, to use the Licensor Trademarks solely for market research and other similar activities to determine whether Licensee will use the Licensor Trademarks or Licensee Trademarks in connection with the commercialization and promotion of the Product in the Field in the Territory.

License Property
Licensor has developed a Transported Prodrugâ„¢ of gabapentin for the treatment of restless legs syndrome (RLS) and the management of neuropathic pain (which includes post-herpetic neuralgia and diabetic peripheral neuropathy.

The Compound shall mean that certain compound, referred to internally at Licensor as XP13512, and all esters, hydrates, metabolites [(excluding gabapentin), polymorphs, prodrugs of gabapentin], salts, solvates, isomers and/or mixtures of isomers thereof.

The patents are for the Compound Family,  Analog Prodrug Sustained Release Oral Dosage Form Families, Crystalline Form Family, Convergent Synthesis Family, Alternative Synthesis Method Families,  Therapeutic Use to treat RLS Family, Therapeutic Use to treat Hot Flashes Family,  Therapeutic Use to treat Incontinence Family,  Therapeutic Use to treat Premature Ejaculation Family,  Therapeutic Use to treat Vulvodynia Family,  Therapeutic Use to treat Tinnitus Family,  and,  Topical Composition/Use to treat Local Pain Family.

XP13512 is a patented, new chemical entity that is designed to improve upon the clinical utility of gabapentin by taking advantage of high-capacity transport mechanisms in the gut to improve absorption.

Field of Use
XP13512 is currently in Phase III development for Restless Legs Syndrome (RLS) and in Phase II development for neuropathic pain.

Restless legs syndrome (RLS) is a condition that causes an uncontrollable urge to move your legs, usually because of an uncomfortable sensation. It typically happens in the evening or nighttime hours when you're sitting or lying down. Moving eases the unpleasant feeling temporarily.

IPSCIO Record ID: 7705

License Grant
Licensor grants an exclusive, transferable, irrevocable, perpetual license in the Territory, with a right to sublicense, to the DDL Intellectual Property to make, have made, use, sell, lease and import Licensed Product in the Field in the Territory.

Licensee shall have the right to grant sublicenses of its rights.

License Property
Patent applications relate to Methods of Treatment Using a Gastric Retained Gabapentin Dosage.

The Compound shall mean the chemical compound known as gabapentin.

IPSCIO Record ID: 275800

License Grant
Licensor grants to Licensee of Barbados an exclusive license in the Territory under the Patent Rights, Know-How and Technical Information, with the right, to grant sublicenses of the same scope as the license granted by this Agreement, or to appoint a Distributor, to Manufacture and Market 500mg Product in, and import 500mg Product into, the Territory.

Licensor grants to Licensee of Barbados a non-exclusive license under the Foreign Patent Rights, Know-How and Technical Information, with the right, to grant sublicenses of the same scope as the license granted, to Manufacture 500mg Product in the United States or Puerto Rico for export to the Territory for sale in the Territory in compliance with this Agreement.

License Property
The Active Ingredient shall mean the chemical compound known as metformin HCl.

The 500mg Product shall mean the once-daily oral formulation of the Active Ingredient in combination with the AcuForm Delivery Technology.

The 1000mg Product shall mean the once daily oral tablet formulation of the Active Ingredient in a 1000 mg strength to be developed using proprietary Licensee drug delivery technology pursuant to the Supply Agreement.

Invention shall mean the 500mg Product, any improvement to the 500mg Product, any new use of the 500mg Product, any new performance characteristic of the 500mg Product, any new process used to Manufacture the 500mg Product, or any step or steps in any such process, and includes all formulations of the 500mg Product developed pursuant to the Prior Agreement.

The patents are titles  Extending the Duration of Drug Release Within the Stomach During the Fed Mode; Gastric-Retentive, Oral Drug Dosage Forms for the Controlled Release of Sparingly Soluble Drugs and Insoluble Matter;  Alkyl-Substituted Cellulose-Based Sustained Release Oral Drug Dosage Forms;  and, Sustained-release oral drug dosage form.

Field of Use
The field of use for the metformin product is Type II diabetes.

IPSCIO Record ID: 262471

License Grant
The Company granted Licensee the right to commercialize the NUCYNTA franchise of pain products in the United States.  Pursuant to the Commercialization Agreement, Licensee assumed all commercialization responsibilities for the NUCYNTA franchise effective January 9, 2018, including sales and marketing. The Company also agreed to provide services to Licensee, including to arrange for the supply of NUCYNTA products by the Company’s existing contract manufacturing organizations (“CMOs”) (the “Facilitation Services”).
License Property
NUCYNTA ER (Tapentadol Extended Release Tablets) and NUCYNTA IR (NUCYNTA) (Tapentadol) is an extended release version of tapentadol that is indicated for the management of pain severe enough to require daily, around-the-clock, long term opioid treatment, including neuropathic pain associated with diabetic peripheral neuropathy (DPN) in adults, and for which alternate treatment options are inadequate. NUCYNTA is an immediate release version of tapentadol that is indicated for the management of moderate to severe acute pain in adults.
Field of Use
This Agreement pertains to the drug industry relating to pain management.

IPSCIO Record ID: 1208

License Grant
Licensor grants an exclusive license under the Technology to Develop, manufacture, have manufactured, import, use and Commercialize Products in the Field in the Territory, including the right to conduct clinical Development of the Products outside the Territory in support of Development and Commercialization of such Products in the Territory, including the right to grant sublicenses.

Licensor grants an exclusive license under the Technology, including foreign counterparts and equivalents of patent rights to the extent any exist, to manufacture and have manufactured Products outside the Territory in order to import, use and Commercialize Products in the Field in the Territory, including the right to grant sublicenses.

Licensor grants an exclusive license to use the Trademarks to Commercialize, including to advertise, promote and distribute, the Products in the Field in the Territory.

Licensor grants an exclusive license to exploit the Domain Names in connection with the Products.

This agreement includes a non-exclusive grant back from Licensee to Licensor.

License Property
Licensor has developed Aversion® Technology and related products intended to deter pharmaceutical product abuse.

Aversion® Composition means a composition having a gel forming polyethylene oxide, sodium lauryl sulfate, and crospovidone.

Product A means an immediate release pharmaceutical product for human use, intended for oral administration in two tablet strengths oxycodone HCl 5.0mg and 7.5mg with each tablet containing the Aversion® Composition with niacin at 30mg.

Product B means an immediate release pharmaceutical product for human use, intended for oral administration in two tablet strengths oxycodone HCl 5.0mg and 10.0mg with each tablet containing the Aversion® Composition with niacin at 30mg and acetaminophen 325mg.

Product C means an immediate release Future Product in three tablet strengths hydrocodone bitartrate 5.0mg, 7.5mg, and 10.0mg with each tablet also containing the Aversion® Composition with niacin at 30mg and acetaminophen 325mg.

Product D means an immediate release Future Product [in three tablet strengths hydromorphone HCl 2.0mg, 4.0mg, and 8.0mg with each tablet also containing the Aversion® Composition with niacin at 30mg.

Trademarks means Aversion®, Acurox™, and Acuracet™.

The patents are for Methods and Compositions for Deterring Abuse of Opioid.

Acurox®, Acuracet® (oxycodone HCI/niacin/APAP) Tablets, Vycavert® (hydrocodone bitartrate/niacin/APAP) Tablets and a fourth undisclosed opioid analgesic product candidate utilizing our proprietary Aversion® Technology.

The Licensee has an option to License in the  territory all future opioid analgesic products developed utilizing Aversion® Technology. The Agreement provides that Licensor or Licensee may develop additional opioid analgesic product candidates utilizing our Aversion® Technology and, if Licensee exercises its option to License such additional product candidates, they will be subject to the milestone and royalty payments and other terms of the Agreement.

The drug is part of a class of opioid analgesic products for treatment for moderate to severe acute pain.

The Licensor is responsible, using commercially reasonable efforts, for all Acurox® Tablet development activities through FDA approval of a 505(b)(2) NDA, for which our expenses are reimbursed to us by the Licensee. After NDA approval the Licensee will be responsible for manufacturing and commercializing Acurox® Tablets in the U.S.

Field of Use
The Field means all present and future indications, as a human therapeutic, for use of the Products for the treatment of pain.

IPSCIO Record ID: 249768

License Grant
With this amendment, the Japanese Licensee now wishes to be responsible for the manufacture of clinical and commercial supplies of the Compound and/or Product and the Product Formulation for the development and commercialization of the Product in the Territory.

With this amendment, Licensor grants to the Japanese Licensee an exclusive license during the term of this Agreement under the Licensor Patent Rights and Licensor Know-How to
(a) formulate, have formulated, package and have packaged the Product using the Compound; and
(b) develop, make, have made, use, market, import, export, sell, distribute and promote the Compound and the Product; in each case for use in the Field.

Licensee has the non-exclusive right to make, have made, formulate and have formulated the Compound, formulate and have formulated the Product, and package and have packaged the Product, outside the Territory, in each case solely for sale of the resulting Product within the Territory.

License Property
Licensor is developing a Transported Prodrugâ„¢ of gabapentin in the United States, for the treatment of restless legs syndrome (RLS) and the management of neuropathic pain.

Competitive Compound shall mean any compound having as a primary mechanism of action modulation of the alpha28 subunit of a voltage dependent calcium subchannel, other than the Compound.

Field of Use
Licensee desires to further develop and commercialize the Product in Japan and certain other countries.  Field shall mean any and all indications for human use.

ASP8825 (gabapentin enacarbil) also known as XP13512, as a potential treatment for restless legs syndrome (RLS).
Restless legs syndrome (RLS) is a serious neurological disorder.  RLS is a disorder that causes a strong urge to move one's legs.

IPSCIO Record ID: 5599

License Grant
The agreement granted a non-exclusive license and sublicense to use the oral formulations of these two product candidates and  granted a non-exclusive license to use its controlled release technologies.
License Property
Bicifadine is a serotonin-norepinephrine reuptake inhibitor (SNRI).  It has been developed as an analgesic and is currently under development for the treatment of various pain conditions. Phase III trials were completed in 2006 for treating chronic low back pain, and the drug is currently being tested to assess its efficacy in treating pain associated with osteoarthritis, acute post-surgical pain, neuropathic pain and pain associated with dental surgery. Its usefulness in surgical or dental pain is dubious, however, as most monoamine uptake-inhibiting antidepressants have little effect in treating acute pain–they are far more effective in cases of chronic, neuropathic pain.
Field of Use
The newly formed Licensee develops controlled release formulations of bicifadine for the treatment of pain and ocinaplon for the treatment of anxiety disorders and epilepsy.

IPSCIO Record ID: 253953

License Grant
The Parties have entered into a Settlement Agreement.  As a result of and pursuant to the Settlement Agreement,  the Licensor grants a limited, non-exclusive,  non-transferable license of limited duration under the Patent to make, have made, use, offer to Sell and Sell, in the United States, up to an aggregate of 800,000 bottles, subject to the reductions set forth below, of the generic versions of 10 mg, 15mg, 20 mg, 30 mg, 40 mg, 60 mg and 80 mg dosage strengths of the Licensee Products, allocated among the dosage strengths.
License Property
The patent is relating to and protecting controlled-release oxycodone products, including the product OxyContin®, a controlled-release oxycodone product marketed and sold under NDA No. 20-553 OxyContin®.
Field of Use
Licensee is a specialty branded pharmaceutical company.  The product is for the management of pain with opioid analgesics.
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