Royalty Report: Medical, Diagnostic, Device – Collection: 5893

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 16

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: 16

Primary Industries

  • Medical
  • Diagnostic
  • Device
  • Genome
  • Drugs
  • Biotechnology
  • Assay
  • Test/Monitoring
  • Drug Discovery
  • HIV / AIDs
  • Cancer
  • Disease
  • DNA

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: 5893

License Grant
Licensor hereby grants to Licensee an exclusive, worldwide, right and license under the Licensed Technology, with the right to sublicense, to develop, have developed, make, have made, use, have used, import, have imported, offer for sale, sell, have sold or lease, any Products, Storage Devices and/or Input/Output Devices for Type 1 Storage Devices and Chips and/or to provide any Services in the Orchid Field, provided, however, that with respect to Type 2 Storage Devices and Input/Output Devices for Type 1 Storage Devices, such License shall only be exclusive for Licensed Technology and further provided however with respect to the exercised Option of the Option Field, the license shall be exclusive for the Life Science Field and non-exclusive for materials and chemical research.
License Property
Technology refers to certain technology for the research, development and sale of products and services in the field of combinatorial chemistry and in vitro diagnostics.

'Product' shall mean a Chip or a system incorporating a Chip with or without Storage Devices, Input/Output Devices or Ancillary Devices developed using, incorporating, utilizing, manufactured using, based upon, arising out of, or derived from the Licensed Technology.

'Ancillary Device' shall mean a detector or other device (but not a Storage Device or Input/Output Device) that is specifically designed by Sarnoff to interface with a Chip, Storage Device or Input/Output Device to the extent such detector or other devices are incorporated in Delivered Chips and Instruments. Ancillary Devices shall not include (without upper or lower limitations as to size or volume), (i) generic robotic fluid delivery systems, (ii) transport through synthetic or natural membranes, tubes or capillaries except when part of a Chip or Input/Output Device, (iii) conventional, non-electrokinetic fluid pumping or valving technology except when part of a Chip or Input/Output Device and (iv) 3D microimaging and modeling.

'Storage Device' shall mean a microfabricated flat structure device containing Microchambers, but not Microchannels or other Elements, that is either (i) specifically designed for interacting with or connecting to a Chip or (ii) broadly useful with Chips and other devices or primarily designed to be interfaced with micropipetting systems. A Storage Device of the type described in clause (i) is referenced to herein as a Type 1 Storage Device. A Storage Device described in clause (ii) is referred to herein as a Type 2 Storage Device.

Storage Device or Input/Output Device to the extent such detector or other devices are incorporated in Delivered Chips and Instruments.

Storage Device or Input/Output Device to the extent such detector or other devices are incorporated in Delivered Chips and Instruments. Ancillary Devices shall not include (without upper or lower limitations as to size or volume), (i) generic robotic fluid delivery systems, (ii) transport through synthetic or natural membranes, tubes or capillaries except when part of a Chip or Input/Output Device, (iii) conventional, non-electrokinetic fluid pumping or valving technology except when part of a Chip or Input/Output Device and (iv) 3D microimaging and modeling.

'Chip' shall mean a microfabricated flat structure device in one or more layers having a plurality of Microchannels or Microchannels and Microchambers in the form of (A) arrays (containing at least (i) six (6) Microchambers or (ii) two Circuits, each of which contains at least one Active Element), or (B) at least one Circuit containing at least three (3) serially connected Elements, at least one of which is an Active Element, to carry out or enable synthesis, reactions, assays, analyses or sample preparation by transporting or retaining aqueous or organic fluids that are solvents, solutions, mixtures or suspensions, including those containing chemicals, particles, membranes, membrane fragments, cells, cell components or other biologically derived substances.

'Microchannels' shall mean enclosed channels having a cross section at least 10 microns by 10 microns and no more than 2 millimeters by 2 millimeters. 'Microchambers' shall mean chambers having a volume of at least 10 picoliters and no more than 10 microliters.

'Combinatorial Chemistry' shall mean the synthesis of one or more compounds as part of a process to create compounds or resynthesize known compounds, where such compounds are to be used in clinical applications or in the discovery, development, testing or optimization of molecules, materials, or compounds, or mixtures thereof.

Partitioned Microelectronic And Fluidic Device Partitioned Microelectronic And Fluidic Device Synthesis (08/338703)
Partitioned Microelectronic Device Array (08/455016)
Liquid Distribution System (08/556036)

Field of Use
Fields related to microfluidics, including the fields of genomics, high throughput screening, research products and cell-based assays.

'In-vitro Diagnostic Field' shall mean the use of a Chip to undertake any medical or clinical assessment of the health or physical condition of a human or animal, or the assessment of the condition of a plant, when such assessment is performed outside the body of the human, animal or plant and environmental or food testing where testing is for the presence of microbes or cellular components such as nucleic acids, proteins or toxins. Such assessment includes, but is not limited to, the testing of body tissue, fluids, or cells; nucleic acid analysis; immunological analysis; therapy monitoring; predisposition analysis; viral analysis; microbiological analysis; therapeutic or abused drug analysis; and chemical analysis of tissue, fluids or cells. Without limiting the generality of the foregoing, the In-vitro Diagnostic Field does not include the use of a Chip for the purpose of discovering, developing, manufacturing, using and selling pharmaceutical products, but does include the use of Chips for Environmental Testing.

IPSCIO Record ID: 237247

License Grant
With this agreement, the parties desire to replace all prior license agreements between the Parties relating to the Original Proprietary Rights and any and all amendments thereto collectively, the Prior Agreements with a new amended and restated sole commercial license agreement to the Original Proprietary Rights.

Licensor grants to Licensee and its Affiliates the exclusive, non-governmental, commercial right and license under the Original Proprietary Rights to manufacture, have manufactured for Licensee and its Affiliates, use, sell, offer for sale and import the Products in the Original Field of Use, including the exclusive, non-governmental,  commercial right to grant sublicenses in the Original Field of Use.

Licensor grants to Licensee and its Affiliates the exclusive, non-governmental, commercial right and license under the New Proprietary Rights to manufacture, have manufactured for Licensee and its Affiliates, use, sell, offer for sale and import the Products in All Fields of Use, including the exclusive, non-governmental, right to grant sub licenses in All Fields of Use.

License Property
The patents include Apparatus and Method for Performing Microfluidic Manipulations for Chemical Analysis, and, Apparatus and Method for Performing Microfluidic Manipulations for Chemical Analysis and Synthesis.  The new patent property includes Microfabricated Device and Method for Multiplexed Electrokinetic Focusing of Fluid Streams and A Transport Cytometry Method Using Same, and, Microfluidic Circuit Designs for Performing Electrokinetic Manipulations that Reduce the Number of Voltage Sources and Fluid Reservoirs.
Field of Use
Original Field of Use shall mean all fields of application of the Proprietary Rights excluding Analysis of Nucleic Acids for Diagnostic Applications and Non-Electrophoretic Means of Gene Discovery.

Other Field shall mean the field of Analysis of Nucleic Acids for Diagnostic Applications and Non-Electrophoretic Means of Gene Discovery.

All Fields of Use shall mean all fields of application of the Proprietary Rights.

LabChip systems miniaturize, integrate and automate many laboratory processes and put them on a chip.  Licensee developed our microfluidic LabChip technology to provide a revolutionary advance in laboratory experimentation for the pharmaceutical and other industries.

IPSCIO Record ID: 233453

License Grant
Licensor grants a worldwide, sub licensable, non-exclusive license under all right, title and interest in, to and under the Ramsey Patent Family to make, use, sell, offer to sell, and import Licensee Licensed Products in the Licensee Field of use.

Licensor grants a worldwide, excluding the right to make and use non-polymeric Chips with less than sixteen electrophoretic channels in Japan, non-exclusive limited license under all of its right, title and interest in, to and under the Ramsey Patent Family solely to make and use microfluidic Chips which fall outside of  the definition of Licensee LabCards, but which Chips would meet that definition but for the fact that they  are not constructed from a polymer or any other material that is not silica based, Licensee R&D Chips, solely for the purpose of research and development of products and technologies to be commercialized by Licensee itself, or in conjunction with others, but excluding any research and development performed on behalf of, or for the benefit of, other parties, including as part of a service business or contract research and development business.

License Property
Licensee Licensed Product shall mean a Licensee Licensed Instrument and/or an Licensee Licensed LabCard, as applicable.

The Ramsey Patent Family shall mean, to the extent of Licensors rights under to, and under the following, United States Patent No. 6,001,229;  any  Patent that directly claims priority to the 229 Patent, e.g., as a continuation, in-whole or in-part, divisional,  reexamination, or reissue of the 229 Patent; and any Patent that directly or indirectly claims priority to the 229 Patent, e.g., any Patent claiming priority to one or more Patents that directly or indirectly claim priority to the 229 Patent, and any Foreign Counterparts to any of the foregoing. The Ramsey Patent Family shall include, without limitation, United States Patent No. 6,001,229, 5,858,195, 6,010,607, 6,010,608 and 6,033,546 and any continuations, in whole or in part, divisions, reissues, reexamination, renewals, substitutions,  confirmations, registrations, revalidations, revisions, extensions and Foreign Counterparts of any of the foregoing Patents. For clarification, a Patent shall be deemed a Patent in the Ramsey Patent Family only to the extent and only so long as Licensor has rights to sublicense rights in, to and under the Ramsey Patent Family with respect to such Patent.

Licensee Licensed Product shall mean an Licensee Licensed Instrument and/or an Licensee Licensed LabCard, as applicable.

Licensee Licensed Instrument shall mean an instrument, add-on module, software or hardware including those specifically identified in the agreement, but excluding, in any event, any microfluidic Chip, (a) the manufacture, use, in the manner intended, or sale of which, by Licensee or any third party, would infringe a Valid Claim of a Patent in the Ramsey Patent Family in the country of such manufacture, use or sale, absent a license, or (b) that is designed or used, in the manner intended, by Licensee or any third party, to perform a method that would infringe a Valid Claim of a Patent in the Ramsey Patent Family in the country where such method is performed, absent a license.

Licensee Licensed LabCard shall mean a microfluidic chip or card, regardless of its size or thickness (Chip), constructed from a polymer or any other material that is not silica based, regardless of weather such Chip contains a Double T Structure or a Cross Structure or has covered or uncovered channels including but not limited to the types of Chips illustrated, (a) the manufacture, use, in the manner intended, or sale of which, by Licensee or any third party, would infringe a Valid Claim of a Patent in the Ramsey Patent Family in the country of such manufacture, use or sale, absent a license, or (b) that is designed or used, in the manner intended,  by Licensee or any third party, to perform a method that would infringe a Valid Claim of a Patent in the Ramsey Patent Family in the country where such method is performed, absent a license.

Field of Use
The Licensee field of use shall mean any and all fields, except for analysis of nucleic acids for diagnostic applications and non-electrophoretic means of gene discovery.

The Parties have agreed to settle all patent litigation and cross-license their microfluidic lab-on-a-chip systems. The devices are used to speed sampling in bioanalysis and genomic and pharmaceutical research.

Licensor's LabChip technology enables experiments that ordinarily require laboratories full of equipment and people to be conducted on a chip small enough to fit in the palm of a child's hand. The chip contains a network of microscopic channels that move fluids and chemicals electrostatically in order to perform experiments.

IPSCIO Record ID: 10553

License Grant
Licensor grants to German Licensee a world-wide and non-exclusive, except regarding Desk Top Synthesizers, license to use the Technology only within the Field only for the purposes of (i) developing Content for Catalogue Arrays and Catalogue Cassettes and (ii) marketing, distributing, selling and having sold Licensed Products, in the Territory to End Users, together with a non-exclusive right to sublicense; provided that as a condition to marketing, distributing, selling, having sold, disposing or otherwise transferring any applicable Licensed Product to any End User,  The license granted for the marketing, distribution, sale, disposal or transfer from Licensee or its Affiliates of Desk Top Synthesizers shall be co-exclusive.

For the Trademarks, Licensor grants a non-exclusive, right and license in the Territory to use and refer to the Licensor names, trademarks, logos, symbols, designs, and other designations used in connection with the Licensed Products in order to advertise and market same to End Users.

Licensor agrees to grant a limited, non-exclusive right and license to manufacture the-Failed Product for use, sale and distribution in accordance with Licensee's rights under this Agreement.

License Property
Chips are used in pharmaceutical and genetic research.  The microchips contain synthetic sequences of DNA or proteins.

Licensor is the owner of intellectual property rights including Know-How and various patents, patent applications. copyrights and trademarks in the field of array technology including its proprietary micro array-technology.

Array(s) shall mean semiconductor-based Licensor supplied biochip(s) having nucleic acid biological probe arrays synthesized thereon contained in Cassettes in sets per Cassette of up to ten Arrays ready for introduction of RNA or DNA samples prepared from biological specimens.

Cassette(s) shall mean Licensor carrier(s) capable of holding multiple Arrays; when used without qualification, this term shall refer to Blank, Custom and Catalogue Cassettes without distinction. Custom Cassette(s) shall mean Cassettes containing Custom Arrays. Catalogue Cassettes shall mean Cassettes containing only Catalogue Arrays. Blank Cassettes shall mean Cassettes containing only Blank Chips.

Licensed Product(s) shall mean Catalogue Cassettes, Catalogue Arrays, Custom Cassettes, Custom Arrays, Blank Chips, Blank Cassettes, Hybridizer/Reader(s) together with Hybridizer Software, Desk Top Synthesizers, the Phone Booth Synthesizer provided for in Section 3.l(c), Web Services, consisting of Probe Design Software and Image Capture Software initially, and related Software, in each case, for applications only in the Field.

Desk Top Synthesizer shall mean a biochip synthesis unit for synthesizing Content onto Blank Chips that are arranged in a Cassette, as more fully described in and to be developed under the R&D Agreement.

Patents include
Electromechanical Solid Phase Synthesis of Polymers;
Electromechanical Solid Phase Synthesis;
Overlying Electrode in a biochip microarray;
A method of control of and display from devices for biological and chemical processing;
A method for selecting Oligonucleotides having low cross hybridization;
Automated system and process for custom designed biological array design and analysis;
Microarrays of peptide affinity probes for analyzing gene products and methods for analyzing products; and,Method for generating Ultre-fine spotted arrays.

Field of Use
Field shall mean assays and uses of Licensed Products relating to genetic analysis, testing and research of nucleic acid based genetic materials, and the creation, maintenance and/or commercialization of nucleic acid sequence based genetic databases for research purposes (including pharmaceutical research) and all diagnostic purposes and applications.

IPSCIO Record ID: 452

License Grant
Licensor grants an exclusive, worldwide sublicense, with a right to further sublicense, under the Baylor Technology and Improvements to make, use, sell, offer for sale and import any instrumentation, device or non-drug consumable for use by customers in the Other Markets; and an exclusive, worldwide license, with a right to sublicense, under the Licensor Technology to make, use, sell, offer for sale and import any instrumentation, device or non-drug consumable for use by customers in the Other Markets.  These sublicense agreements with Licensor provide the Licensee with the exclusive right under the Baylor patents to make, use and sell instruments, devices and non-drug consumables for use by customers in the life science laboratory and drug discovery laboratory markets worldwide.
License Property
The Company develops, manufactures and markets a proprietary ProteinChip System that enables protein discovery, characterization and assay development to provide a better understanding of biological functions at the protein level.  The ProteinChip System is a novel, enabling tool in the emerging field of protein-based biology research, known as proteomics.  While recent technological advances in DNA tools have substantially changed the field of genomics, the absence of enabling protein analysis tools has limited progress in proteomics research.  Proteomics provides a direct approach to understanding the role of proteins in the biology of disease, monitoring of disease progression and the therapeutic effects of drugs.
Field of Use
The ProteinChip System incorporates the Licensee's proprietary Surface-Enhanced Laser Desorption/Ionization, or SELDI, technology on a disposable chip.  This allows proteins to be captured, separated and quantitatively analyzed directly from crude biological materials, such as whole blood, tissue and saliva, with minimal sample preparation.

IPSCIO Record ID: 27383

License Grant
The Licensee entered into a license agreement to use and sell certain licensed products and services; patents relating to electronic and optical DNA chip technology.
License Property
Licensed Product means a Chip where (i) the Chip or a functional component thereof is claimed in the Licensor Patents or (ii) the Chip is manufactured or used in accordance with or by means of the Licensed Process, or (iii) the Chip makes use of the technology claimed in the Licensor Patents in its manufacture, testing, use or sale.

CHIP means a microarray of biological probes designed to carry out or enable genomic sequencing, mutation detection, assays, syntheses, reactions, analyses or sample preparation.  
The term 'Chip' also includes assemblies of multiple Chips that are interconnected in close physical proximity to each other.  Chips may incorporate other electrical, electronic, electromechanical and mechanical components when said components are an integral part of the Chip.

IPSCIO Record ID: 26242

License Grant
By the party to the other party; Company A hereby grants to Company B of Japan the sole and exclusive license and sublicense under the Company A Patents and Company A Technology to develop, manufacture, have manufactured, sell or have sold Company B Products for the Field of Research Applications in Japan.  Company B grants to Company A the non-exclusive license to develop,  manufacture, sell and have sold the  Company A Products incorporating  Company B Technology in Non-Pacific Rim Territories for the Field of  Research Applications.
License Property
Chip means a substrate which contains a grating pursuant to the Grating SPR Technology and is coated with a conductive surface.

Flow Cell means a device which allows liquids to flow through it and consist of a Chip and has an optically clear cover slip which is attached to the Chip by a means that allows for fluid flow there through.

Grating SPR Technology means the use of thin conductive films on a surface or surfaces of a grating or other diffracting substrate to conduct chemical analysis.

US 4,931,384         Optical Assay Technique (Merlin I)                  JP 1903195

US 5,118,608         Optical Assay Technique (Merlin I)                  JP 2502222

US 4,882,288         Assay Technique and Equipment (Merlin II)           JP 1928364

US 4,992,385         Polymer-Coated Optical Structures and               JP 2528134

                     Methods of Making and Using the Same                JP 2592588

                     (Cellulose Nitrate Films)

US 4,828,387         Film Measuring Device and Method with               JP 2511057

                     Internal Calibration to Minimize the Effect

                     of Sample Movement (Calibration Notches)

US 5,310,686         Polymer-Coated Optical Structures (Sensor           JP 2710243

                     Using Photoresist)

CA 1,302,875         (Waveguide Sensor)                                  JP 2572829

US 6,093,536         (Enhanced SPR Assay)                                JP 2073383

                     Optical Array                                   JP Application #

                                                                     JP 2000-524645

Field of Use
Medical Diagnostics Field means those fields, the applications and products which under current laws and regulations of the United States would require approval of the United States Food and Drug Administration if the application or product incorporating the application were sold for clinical use in the United States.

Field of Research Applications means the field of target discovery and validation for pharmaceutical and diagnostic research; the Field of Research Applications expressly excludes the Medical Diagnostics Field, food testing applications and environmental testing applications.

IPSCIO Record ID: 7068

License Grant
The Licensor hereby grants to Licensee, an exclusive, worldwide, License under the Subject Technology to make, have made, use, market, sell, subLicense, and offer for sale Licensed Products and services in the field of Microfluidics.
License Property
Subject Technology shall mean all Licensor technology, cell lines, biological materials, compounds, hardware, software, know-how, methods, documents, materials, tests, trade secrets, Trademarks, Improvements, and all other.

Microfluidics deals with tiny bits of liquids, usually measured in infinitesimal amounts, such as microliters.
Disclosure # 157. Integrated Microfluidic System for Proteome Analysis.
Disclosure #198. Porous Capillary Interface for Microfluidic Chip System.
Disclosure # 194. Edman Degradation in Microfludic Chip System.
Disclosure # 199. Novel Electroextraction Method.
Disclosure # 201 and 217. Microfluidic Valve.
Disclosure # 202 and 214. Apparatus and Method for Edman Degradation on a Microfluidic Device Utilizing an Electroosmotic Flow Pump.
Disclosure #213. Integration of Bi-Direction Capillary Electrophoresis into the Integrated Microfluidic System for Proteome Analysis.
Disclosure # 216. An Integrated Microfluidic System for Proteome Analysis Using a Concentrating Membrane.
Disclosure # 245. Use of Laser Micromachining to Produce Hydrodynamic Flow Restrictors in Microfluidic Devices.
Disclosure #215 and # 246. Novel Interfaces for Coupling Microfluidic Systems with Electrospray Ionization Mass Spectromety.
Disclosure #255. A Novel Saw-Toothed Shaped Gradient for Chromatographic Separations.

Field of Use
The license technology is in the field of protein discovery for therapeutic, diagnostic and all other commercial fields.

IPSCIO Record ID: 282814

License Grant
For the Exclusive License, the Swiss Licensor grants an exclusive, even as to Licensor, worldwide license, with the right to sublicense, under all Licensor Intellectual Property, excluding intellectual property jointly developed by Licensor and a third party, and a nonexclusive sub-license under the Seiko License and Licensor Intellectual Property jointly developed by Licensor and a third party, to make, have made, use, sell, offer for sale, or import Licensor Pump System in the Field.

Simultaneously with the execution of this Agreement, the Parties shall enter into a parallel License, Joint Development and Manufacturing Assistance Agreement in connection ·with a micro-needle product of the Licensor.

License Property
The Intellectual property is all patents, copyrights, trade secrets, know-how and other intellectual property related to or useful to an externally-worn micro-pump utilizing MEMS technology owned by, developed by or licensed to Licensor.

Licensors Pump is an externally worn micro-pump system for the delivery of insulin incorporating a MEMS Chip and based upon Licensor Intellectual Property. In its initial configuration, Licensors Pump will comprise both a MEMS Pump and a Pump Controller according to the Specifications.

Licensors Pump System is a system incorporating Licensor Pump including Pump Accessories.

Field of Use
The Field is all uses of an externally worn micro-pumps relating to the administration of insulin which insulin may be administered through a single pump, alone or in combination with other medications, such as glucagon and insulin.

IPSCIO Record ID: 29396

License Grant
The Licensor, a UK company, entered into a definitive Agreement and increased our ownership position in Licensee, a UK company, by virtue of receiving an additional 17,168 common shares of Licensee.
License Property
Diagnostic Products means all medical diagnostics products or components falling within the claims of the Patents.

The Patent(s)
GB0028482.8
Polymer Detection System
Nov-00
Granted (UK, US, EU,

Japan & HK)

GB0604799.7

PCT Application

W02007/054710
Microfluidic Device
5-Nov
Europe Application

EP 06808492.0

GB0714341.5
Optical Detection System
7-Jul
GB Application

GB0714340.7
Optical Detection System
7-Jul
GB Application

GB0718011.0
Non-conjugated polymer interlayered
7-Sep
GB Application

photovoltaic device

GB0718010.2
Conjugated polymer interlayered
7-Sep
GB Application

photovoltaic device

1336089 /
Detection System

EP Application

10974483

2369428 /
Detection System

GB Granted

28482

3990280 /
Detection System

JP Granted

2544636

6995348 /
Detection System

US Granted

10/432296

2002/42747 /
Detection System

WO continued in EP, JP,

GB01/04521

US

Field of Use
Licensee has developed a technology platform combining microfluidics with an optical detection system based on polymer light emitting diodes (commonly referred to as pLED) to deliver potentially affordable, intelligent and readily portable point-of-care medical diagnostic devices. The technology platform combining microfluidics and pLED is known as BioLED Technology

IPSCIO Record ID: 294004

License Grant
With respect to Oasis LabCard chips and/capillary pin dispenser module developed by Licensor, Licensor  grants to a license under Licensors Intellectual Property and Intellectual Property Rights to make, have made, use, have used, sell and have sold Oasis LabCard chips developed in the Development Phase solely for incorporation into a System developed or proposed to be developed under the affected Program and commercialization of the System.

For the duration of the Commercialization Phase for each Program, Licensee is granted a license under the Intellectual Property Rights of Licensor to the extent reasonably necessary to commercialize the Systems as contemplated above and to manufacture capillary pin dispensers.

Licensee shall have the exclusive right to make or have made, use, have used, sell and have sold the affected System and Components designed specifically for the System for use with Oasis LabCard chips in the Field.

For the duration of the Development Phase for each Program, each Party is granted a license under the Intellectual Property Rights of the other Party to use Systems and Components to the extent reasonably necessary to satisfy its obligations under this Agreement.

For the duration of the Commercialization Phase for each Program, each Party is granted a license under the Intellectual Property Rights of the other Party to use Systems and the individual Components incorporated into such Systems to the extent reasonably necessary to exercise its rights and satisfy its obligations under this Agreement.

License Property
Licensor has certain skills, know-how and intellectual property for products related to microfluidic analytic devices, dispensers and reagents for use in such chips and the capability for the manufacture of such products.

LOCI shall mean the technology owned or licensed by Licensee relating to luminescent oxygen channeling assays and described in U.S. Patent application Serial No. 704,569, filed May 22, 1991 and U.S. Patent application Serial No. 718,490 filed June 20, 1991.

Oasis LabCard chips shall mean any microfluidic analytical device that has one or more small reaction vessels~connected to and over a capillary channel, which is in turn connected to a source of replenishing liquid, and that does not require the use of electrical fields to facilitate the movement of fluids through the capillary channel.

Field of Use
Field shall mean any application of an Oasis LabCard chip in performing Homogeneous Assays wherein, except for immobilization of reagents in the Oasis LabCard chip prior to sale for use with an assay not requiring a washing step, the surfaces of the Oasis LabCard chip are not modified for binding events.

Oasis LabCard chips are for small volume homogeneous assays in both genomics and pharmaceutical drug screening applications. Oasis LabCard chips will be similar in size and format to existing microwell plates.

IPSCIO Record ID: 27725

License Grant
The Japanese Licensor grants to Licensee the non-exclusive license to develop, manufacture, sell and have sold the Licensee Products incorporating Licensor's Technology in Non-Pacific Rim Territories for the Medical Diagnostics Field.
License Property
Chip means a substrate which contains a grating pursuant to the Grating SPR Technology and is coated with a conductive surface.

Flow Cell means a device which allows liquids to flow through it and consist of a Chip and has an optically clear cover slip which is attached to the Chip by a means that allows for fluid flow there through.

Grating SPR Technology means the use of thin conductive films on a surface or surfaces of a grating or other diffracting substrate to conduct chemical analysis.

PATENT NO.                          TITLE                        JAPANESE PATENT NO.
—————————————————————————————-
  US 4,931,384           Optical Assay Technique (Merlin I)             JP 1903195
  US 5,118,608           Optical Assay Technique (Merlin I)             JP 2502222
  US 4,882,288           Assay Technique and Equipment                  JP 1928364
                         (Merlin II)
  US 4,992,385           Polymer-Coated Optical Structures              JP 2528134
                         and Methods of Making and Using                JP 2592588
                         the Same (Cellulose Nitrate Films)

  US 4,828,387           Film Measuring Device and Method               JP 2511057
                         with Internal Calibration to
                         Minimize the Effect of Sample
                         Movement (Calibration Notches)
  US 5,310,686           Polymer-Coated Optical Structures              JP 2710243
                         (Sensor Using Photoresist)
  CA 1,302,875           (Waveguide Sensor)                             JP 2572829
  US 6,093,536           (Enhanced SPR Assay)                           JP 2073383

Field of Use
This agreement pertains to the medical diagnostics field.  Medical Diagnostics Field means those fields, the applications and products which under current laws and regulations of the United States would require approval of the United States Food and Drug Administration if the application or product incorporating the application were sold for clinical use in the United States.

IPSCIO Record ID: 26324

License Grant
The Licensor grants a non-exclusive, non-transferable, non-sublicensable, worldwide, royalty-bearing license, under the Current Patents and Future Patents to make, use, offer for sale, import and sell (a) Licensed Products sold by Licensee under a Licensee Mark (and no Third Party Mark) in the Non-Retail Field; (b) HIV Products sold by Licensee under a Licensee Mark (and no Third Party Mark) in the Retail or Non-Retail Field; and (c) HIV Products sold by Licensee to any Third Party for re-sale in the Retail or Non-Retail Field by such Third Party under a Third Party Mark owned by such Third Party (“Re-Branded HIV Products”). The Licensee and Licensor are parties to a Settlement Agreement and Mutual Release pursuant to which certain litigation was settled and, among other conditions, the parties agreed that the Licensor would license or sub-license to Licensee certain patents.
License Property
The license covers (i) U.S. Patent Nos. 5,714,389, 5,989,921, and 6,485,982; (ii) U.S. Patent Application No. 11/035,047; (iii) any continuations or divisionals of such patents and patent applications, whether such continuations or divisionals are filed before or after the Effective Date; and (iv) any foreign counterparts of the patents and patent applications.
Field of Use
The patents relate to a FDA approved Lateral Flow HIV Test.

IPSCIO Record ID: 233461

License Grant
The Swiss Licensor grants a non-exclusive license under the Licensed Patents as follows
– to make, have made, import, use, offer to Sell and Sell Licensed Products in the In Vitro Human Diagnostics Field in the Territory, and authorize End-Users to perform Diagnostic Services using such Licensed Products in processes covered by the Licensed Patents in accordance with the label license provided with the purchase of such Licensed Products.
– to grant a limited, non-transferable, royalty free sublicense under the Licensed Patents to Research Collaborators of Licensee and/or its Affiliates to practice PCR under their respective contracts with Licensee and/or its Affiliates, in accordance with the terms and conditions of this Agreement, solely for purposes of doing applied research and development for Licensee and/or its Affiliates of Licensed Products to be Sold in the In Vitro Human Diagnostics Field in accordance with the other terms and conditions of this Agreement; and
– to use PCR technology for the research, development, improvement and quality control and quality assurance of Licensed Products, in each case by Licensee and its Affiliates, internally, for Sale in the In Vitro Human Diagnostics Field.

For Label Licenses on Licensed Products Sold in the In Vitro Human Diagnostics
– Licensees right to sublicense is limited to the right to convey use rights pursuant to a Label License under process claims and composition of matter claims,not apparatus, device or system claims, only to End-User customers, and only through the Sale of Licensed Products.
– Licensee agrees that it shall mark conspicuously all Complete Diagnostic Kits made by or for it,
– Licensee agrees that it shall mark conspicuously all Component Systems for amplification made by or for it
– Licensee agrees that it shall mark conspicuously all Component Systems for detection made by or for it
– Licensee agrees that it shall mark conspicuously all Component Systems for amplification and detection made by or for it
– Licensee agrees that it shall mark conspicuously all Royalty Products other than Complete Diagnostic Kits, Component Systems for amplification, Component Systems for detection and Component Systems for amplification and detection made by or for it and Sold in the In Vitro Human Diagnostics Field.

License Property
The Complete Diagnostic Kit means a product dedicated for use in connection with the practice of PCR in the In Vitro Human Diagnostics Field, it being understood that a product shall be deemed to be so dedicated if it is either  a product having a package insert indicating its use primarily in connection with the practice of PCR; or a product which by virtue of its design, operation or construction has no other substantial practical utility, and which product is comprised of, at a minimum, the essential active reagents for amplification and detection of a target nucleic acid in the In Vitro Human Diagnostics Field. For purposes of this Agreement, Licensee shall only convey the necessary rights for End-Users to perform PCR in the In Vitro Human Diagnostics Field with the Sale of a Complete Diagnostic Kit.

Licensed Product means a product for use in the In Vitro Human Diagnostics Field, the manufacture, importation, use, offer for Sale or Sale of which would infringe a Valid Claim of Licensed Patents, made by or specifically for Licensee or any of its Affiliates only pursuant to Licensees or its Affiliates specifications, which is any of the following or a combination of any of the following
(a) Complete Diagnostic Kit;
(b) A reagent, accessory, device or system which is used or Sold to be used by End-Users in connection with the practice of PCR, including the steps of sample preparation, amplification and detection;
(c) A Component System; and/or
(d) Reagents Sold to be used by End-Users as replacement components in regard to a Component System.

PCR means the polymerase chain reaction process and technology.

Patents relate to Process for Amplifying, Detecting, and/or Cloning Nucleic Acid Sequences.

Field of Use
This agreement is for the purpose of developing and commercializing PCR based in vitro human diagnostic products for use in clinical diagnostic testing;

The Human Identity Field means the field of use comprising products and processes utilizing PCR for the sole purpose of determining human identity or distinguishing among human beings, whether living or dead. The Term Human Identity Field shall included parentage testing to determine if two or more human beings are biologically related as parent and child and forensic testing for use in, or in preparation for, death investigations or other legal proceedings, but such term shall specifically exclude testing for tissue typing.

In Vitro Human Diagnostics Field means the field of use comprising products and processes utilizing PCR for the measurement, observation or determination of attributes, characteristics, diseases, traits or other conditions of a human being for the medical management of that human being, including without limitation
(a) genetic testing, including determinations of genetic predisposition;
(b) oncology and cancer predisposition testing;
(c) testing for tissue typing (excluding the Human Identity Field);
(d) infectious disease detection, screening, confirmation and monitoring; and
(e) therapeutic drug monitoring.

For purposes of this Agreement, the term 'In Vitro Human Diagnostics Field' shall not include the Human Identity Field.

“PCR” means the polymerase chain reaction process and technology involving the amplification of a nucleic acid sequence and the complement of that sequence by repeated cycles of oligonucleotide mediated, template directed synthesis involving the extension of a component primer oligonucleotide by incorporation of monomeric nucleotide triphosphates whereby the sequence, its complement and subsequent synthetic copies thereof are repeatedly separated and used as templates for further cycles of synthesis.

IPSCIO Record ID: 294486

License Grant
With respect to Components of the System developed by Licensor to be used in a System in the Field, Licensor shall grant a license, under Licensors Intellectual Property and Intellectual Property Rights to make, have made, use, have used, sell and have sold such Components developed in the Development Phase solely for incorporation into a System developed or proposed to be developed under the affected Program and commercialization of the System.

Licensee shall have the exclusive right to make or have made, use, have used, sell and have sold the affected System and Components designed specifically for the System for use with Oasis LabCard chips in the Field.

For the duration of the Development Phase for each Program, each Party is granted a license under the Intellectual Property Rights of the other Party to use Systems and Components to the extent reasonably necessary to satisfy its obligations under this Agreement.

For the duration of the Commercialization Phase for each Program, each Party is granted a license under the Intellectual Property Rights of the other Party to use Systems and the individual Components incorporated into such Systems to the extent reasonably necessary to exercise its rights and satisfy its obligations under this Agreement.

License Property
Licensor has certain skills, know-how and intellectual property for products related to, reagents for homogeneous biochemical and cell-based assays, automated fluid handling devices (including piezo electric dispensers), plate tracking and stacking devices, detectors for measuring biological reactions, software and the capability for the marketing, sales and support of such products.

LOCI shall mean the technology owned or licensed by Licensor relating to luminescent oxygen channeling assays and described in U.S. Patent application Serial No. 704,569, filed May 22, 1991 and U.S. Patent application Serial No. 718,490 filed June 20, 1991.

Oasis LabCard chips shall mean any microfluidic analytical device that has one or more small reaction vessels~connected to and over a capillary channel, which is in turn connected to a source of replenishing liquid, and that does not require the use of electrical fields to facilitate the movement of fluids through the capillary channel.

Field of Use
Field shall mean any application of an Oasis LabCard chip in performing Homogeneous Assays wherein, except for immobilization of reagents in the Oasis LabCard chip prior to sale for use with an assay not requiring a washing step, the surfaces of the Oasis LabCard chip are not modified for binding events.

IPSCIO Record ID: 29089

License Grant
Licensee is hereby granted the non-exclusive right to make and have made, to use and to have used, to sell and have sold Licensed Products and to practice Licensed Processes and to use the Technology, in the Territory, all in accordance with this Agreement.
License Property
ViriChipâ„¢ A novel, patented device for detection and identification of known and unknown pathogens. US Patent No. 6,897,015 and US Patent Application No. 20050239193
Chip On A Tipâ„¢ (COAT) A patented ultraminiaturized device for detection of biomarkers from extremely small sample volumes (e.g., a single cell). US Patent No. 7,344,832
Force Panning A patented method for differentiating between materials bound to surfaces by virtue of their binding force. US Patent No. 7,060,448 and US Patent Application No. 20050059091
Force Assessment Screening Technology (FAST) A novel method for screening intermolecular interactions based on direct force measurements at the molecular level. US Patent Application No. 20030186311

CellWellâ„¢ A novel device for detection of multiple biomarkers from a single cell.
NanoArrays. Protein arrays with sub-micron feature sizes. US Patent No. 6,573,369

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