Royalty Report: Drugs, Diagnostic, Biotechnology – Collection: 531

License Grant

Licensor hereby grants undisclosed Licensee and its Affiliates a world-wide, nonexclusive, royalty-bearing license (without the right to grant sublicenses) under Patent Rights (i) to research and develop, make, have made, use, sell and have sold Licensed Products in the Field of Use and (ii) to research and develop, make and use Licensed Intermediates in the Field of Use for sale or transfer to any Third Party Transferee.

License Property

Licensor has the right to grant licenses to and under certain technology described and claimed in U.S. Patent No. 5,223,409 entitled Directed Evolution of Novel Binding Proteins, U.S. Patent No. 5,403,484 entitled Viruses Expressing Chimeric Binding Proteins, and U.S. Patent No. 5,571,698 entitled Directed Evolution of Novel Binding Proteins, U.S. Patent No.  5,837,500 entitled Directed Evolution of Novel Binding Proteins, and associated patent rights.  

'LICENSED INTERMEDIATE' shall mean any fusion protein (including without limitation any chimeric binding protein), genetic package (including without limitation any virus, spore or cell) or other intermediate compound, or any compound derived from any of the foregoing, that is (i) discovered, made or developed by Licensee using a method covered by Patent Rights or (ii) is otherwise covered by Patent Rights.

Licensed Product shall mean any product intended for sale to an End User as an In Vitro diagnostic or research reagent, and sold in the form of an immunoassay kit or vial containing one or more antibodies as a binding moiety that is discovered, made or developed, whether by Licensee, its Affiliates or any Third Party Transferee, using a Licensed Intermediate or a method covered by Patent Rights.

Field of Use

Field of Use shall mean human In Vitro diagnostic or research reagent uses, and not for any therapeutic, In Vivo diagnostic, purification or separations, agricultural, industrial enzymes or other purposes.

License Grant

Licensor hereby grants Licensee and its Affiliates a world-wide, nonexclusive, royalty-bearing license without the right to grant sublicenses under Patent Rights (i) to make, have made, use, sell and have sold Licensed Products in the Field of Use and (ii) to make and use Licensed Intermediates in the Field of Use for sale or transfer to any Third Party Transferee.

License Property

Licensor has the right to grant licenses to and under certain  technology described and claimed in U.S. Patent No. 5,223,409 entitled “Directed Evolution of Novel Binding Proteins”, U.S. Patent No. 5,403,484 entitled “Viruses Expressing Chimeric Binding Proteins”, U.S. Patent No. 5,571,698 entitled “Directed Evolution of Novel Binding Proteins”, and associated patent rights.

Field of Use

Filed of Use shall mean human therapeutics only and not any in vitro or in vivo diagnostics, purification or separations, research products, or other purposes.

License Grant

Licensor grants a non-exclusive, worldwide license, without the right to grant sublicenses, to Licensor Patent Rights, Technology and Improvements for LIcensee to perform research and development solely on Licensees behalf in the Field of Use during the Technology Term.

Licensor grants a non-exclusive, worldwide license to Licensor Patent Rights, Technology and Improvements to research, develop, make, have made, use, import, offer to sell and sell collaboration products and non-collaboration products in the Field of Use and to sublicense solely the research, development, manufacture, use, importation and sale of such collaboration products and non-collaboration products in the Field of Use.

Licensor grants an exclusive, worldwide license to research, develop, make, have made, use, import, offer to sell and sell  collaboration products in the Field of Use and to sublicense the research, development, manufacture, use, importation and sale of such collaboration products in the Field of Use.

Licensor grants a non-exclusive, worldwide license to Licensor Patent Rights to research, develop, make, have made, use, import, offer to sell and sell non-Licensor products in the Field of Use and to sublicense solely the research, development, manufacture, use, importation and sale of such non-Licensor products in the Field of Use.

License Property

Collaboration Product shall mean any product incorporating or derived from any peptide or antibody compound, and the sequence contained therein, discovered by Licensor using the Licensor Technology during the collaboration term, and that binds to an Licensee Target.

The patents relate to Gene encoding and novel protein binding, but specifically exclude Claim 66 in U.S. Patent No. 5,223,409 to the extent that it covers DNA molecules encoding single chain antibodies, or (ii) any claim to specific protein or peptide sequences, or nucleic acids encoding the same, that bind to a specific biological or molecular target.

Field of Use

The Field of Use shall mean the Therapeutic Field, Diagnostic Field and/or Research Reagent Field, and shall not include any in vivo diagnostic uses other than as provided herein, or any purification or separations, agricultural, industrial enzymes or any other uses.

Research Reagent Field shall mean the use of one or more peptides, antibodies, or antibody-antigen or peptide-target combinations (whether in a microarray format or other format) for research purposes.

Therapeutic Field shall mean all human therapeutic and prophylactic uses, and any in vivo diagnostic uses for a Licensee Target which is necessary for HGS successful commercialization of a human therapeutic or prophylactic Collaboration Product, non-collaboration product or non-Licensor product.

Diagnostic Field shall mean all in vitro research, analysis, detection or diagnostic uses, and not for any in vivo diagnostic, therapeutic, purification_ or separations, agricultural, industrial enzyme or other uses.

Licensor Field shall mean all agricultural, industrial enzyme, and purification and separation uses.

License Grant

Licensor of the United Kingdom grants the following options to obtain Product Licenses which may be exercised by Licensee for itself and for Licensee Sublicensees
(a) an Initial License Allocation of up to (31) Product Licenses for Therapeutic Antibody Products and/or Diagnostic Antibody Products shall be available from the Commencement Date;
(b) an Additional License Allocation of up to (75) Product Licenses for Therapeutic Antibody Products and Diagnostic Antibody Products shall be available from the Commencement Date;
(c)  (35) Diagnostic Collaboration Licenses for Diagnostic Antibody Products shall be available from the Commencement Date; and
(d) (30) Additional Diagnostic Licenses for Diagnostic Antibody Products shall be available
from the Commencement Date.

Licensor grants the option for Licensee to obtain the (20) Product Licenses for both Therapeutic Antibody Products and Diagnostic Antibody Products, which may be exercised by Licensee only on a cumulative basis in accordance with the following schedule
(a) seven (7) Product Licenses on or before 31 December 2003;
(b) four (4) additional Product Licenses on or before 31 December 2004;
(c) three (3) additional Product Licenses on or before 31 December 2005;
(d) six ( 6) additional Product Licenses on or before 31 December 2006.

In addition to the options for Product Licenses granted, Licensor grants the option for a total of an additional seventy five (75) Product Licenses for both Diagnostic Antibody Products and Therapeutic Antibody Products to be granted to Licensee; provided that if any option for a Product License has not been exercised and granted to Licensee on or before 31 December 2017, then the option for such Product License will lapse irrevocably.

In addition to the options for Product Licenses granted, Licensor grants to the option for a total of an additional thirty-five (35) Product Licenses for Diagnostic Antibody Products developed by Licensee under the Specified Diagnostic Agreements (the Diagnostic Collaboration Licenses); provided that if any option for a Diagnostic Collaboration License has not been exercised by Licensee on or before 31 December 2017, then the option for such Product License will lapse irrevocably.

In addition to the options for Product Licenses granted, Licensor grants to the option for a total of an additional thirty (30), Product Licenses for Diagnostic Antibody Products (the Additional Diagnostic Licenses); provided that if any option for an Additional Diagnostic Licenses has not been exercised by Licensee on or before 31 December 2017, then the option for such Product Licenses will lapse irrevocably.

Prior to the commencement of human trials for a Product, and provided that Licensee obtains a Product License for such Product prior to commencing human trials for such Product, Licensor grants, a non-exclusive, royalty free license in the Territory during the term of this Agreement to use the Licensor Antibody Phage Display Patents and Know-How for the purposes of carrying out research and development activities in relation to identifying Licensor Licensable Antibodies or potential Products.

For the Grant of Product License by Licensor,  Licensor agrees grants a non-exclusive, license, with the right to sublicense, under the Licensor Antibody Phage Display Patents and Licensor Know-How to Exploit Products against such Nominated Target in the Territory.

For the Grant of Other Licenses, Licensor grants with effect from 3 January 2003 to Licensee a non-exclusive license in the Territory, with the right to sublicense, under the Licensor Antibody Phage Display Patents and Know-How for any purpose not already covered by the provisions of this Agreement (Other Purposes) including to Exploit any product, other than a Therapeutic Antibody Product, Diagnostic Antibody Product
or Research Product, whose development, manufacture, use or sale would, absent the license hereunder, infringe Valid Claims of the Licensor Antibody Phage Display Patents or utilize the Licensor Know-How (Other Product).

This agreement includes an exclusive option grant from Licensee to Licensor.

License Property

Licensor is the owner of certain Antibody Phage Display patents and know-how.

Product means a Diagnostic Antibody Product or a Therapeutic Antibody Product.

Licensed Product means any product intended for sale to an End User as a human or non-human therapeutic or in vitro diagnostic or research reagent ( and in the case of a diagnostic or research reagent contains one or more antibodies as a binding moiety) that prior to or after December 31, 1997 (the effective date of the Original Agreements) is discovered, made or developed, whether by Licensor, its Affiliates or any Commercial Party, using a Licensed Intermediate or a method covered in whole or in part by the Licensee Patent Rights.

Field of Use

The Field of Use means research and development and human or non-human therapeutics and human or nonhuman in vitro diagnostic or research reagent uses only and not any in vivo diagnostics, purifications or separations, or other industrial purposes.

License Grant

The existing agreement is for the rights to use Licensor’s antibody phage display technology.  This agreement is to extend the term  and amend other terms.

Licensee shall have rights to use and practice the Licensor Technology, and Licensor licensed Patent Rights and Know-How as follows
— For the Licensor Antibody library, Licensor grants to Licensee a world-wide, nonexclusive license, without the right to grant sublicenses, to use the Licensor Antibody Library and to practice the Licensor Patent Rights solely in connection with the use of the Licensor Antibody Library to research, develop and make Antibody Compounds and a world-wide, nonexclusive license, with the right to sublicense, to use the Antibody Compounds in order to make, have made, use, sell or import Licensed Products.

For Licensor Materials, In connection with the practice of the license rights set forth, Licensor grants to Licensee a worldwide, non-exclusive, non-transferable license, without the right to grant sublicenses, to use the Licensor Materials on its own behalf only to identify Antibody Compounds from the Licensor Antibody Library and to make quantities of Antibody Compounds that are reasonably required for research and development activities only.

For the Third Party Sublicense Rights, During the library License Term, Licensee shall have rights to use and practice the Licensor licensed Patent Rights and Know-How.

License Property

Licensor possesses intellectual property and know-how related to, among other things, the discovery of antibodies having novel binding properties using phage display.

Licensed Product means any Antibody Compound or product that incorporates an Antibody Compound, whether or not conjugated to another compound that is a Therapeutic Product or an In Vitro Diagnostic Product.

The licensed library is The phagemid-based Fab library.

Licensed materials include Expression vectors pXPlsacB and pXP2sacB for soluble Fab production in E. coli. IgG expression vectors (pBRV and pShuttle) for rapid subclomng and converting Fab fragments into human IgGl and IgG4 and munne IgG2a. (Streptavidin-binding antibody clones will be provided as a positive control.)

The patents include
— Phage display patents
— Focused libraries of genetic packages
— Novel methods of constricting libraries of human FAB antibody fragments displayed on filamentous phage
— Ligand Screening and Discovery
— Modular Assembly of Antibody Genes, Antibodies Prepared Thereby and Use
— Novel Plasmid Vector with Pectate Lyase Signal Sequence

Field of Use

The field of use is Therapeutic Field of Use means shall mean human therapeutics only and not for any in vitro or in vivo diagnostics, purification or separations, research products nor for any other purposes.