Royalty Report: Drugs, Diagnostic, Biotechnology – Collection: 6138

License Grant

The Licensee has the exclusive License to the rights to the NTP testing technology, which measures the level of a brain protein called neural thread protein (NTP), and which is elevated early in Alzheimer's disease, effective in 1997.   University and the Licensor are part of a sponsored research and licensing agreement, under which the Licensee sponsored the research of the principal investigations into the use of neural thread protein, its antibodies or genes for diagnostic or therapeutic purposes. The Licensee also paid the patent costs for the patent applications filed arising out of this research. In return under the agreement, the licensee received an exclusive worldwide license of the patents to sell products and to use processes encompassed by them.

License Property

The Licensor have discovered Neural Thread Protein, and developed antibodies, probes, and other reagents, patents, and information associated with this protein and are interested in the development of new diagnostic strategies for Alzheimer's Disease and other neurodegenerative diseases ('TECHNOLOGY');

The term 'PATENT RIGHT' shall mean (a) (i) the United States Patent Application Serial No. 07/287,207 filed December 20, 1988 entitled 'Method of Detecting Neurological Disease or Dysfunction,' (ii) the United States CIP Patent Application Serial No. 07/451,975 filed on December 20, 1989, (iii) the United States Patent Application Serial Number 08/055,778 filed May 3, 1993 as a file wrapper continuation, and, (iv) the United States Patent Application Serial Number to be assigned, filed June 6, 1995 as a divisional application,

b) (i) the United States Patent Application Serial No. 08/050,559 filed on April 20, 1993 entitled 'Neural Thread Protein Gene Expression and Detection of Alzheimer's Disease, ' (ii) the United States CIP Patent Application Serial No. 08/230,139 filed on April 20, 1994, (iii) the United States CIP Patent Application 08/340,426 filed on November 14, 1994, (iv) the United States Patent Application Serial No. 08/454,557 filed on May 30, 1995 as a divisional application, and (v) the United States Patent Application Serial No. 08/450,673 filed on May 30, 1995 as a divisional application;

Field of Use

The term 'FIELD OF RESEARCH' shall mean research pertaining to the use of any form of neural thread protein, its antibodies, and any cDNAs or genes or genomic fragments coding for neural thread protein, for diagnostic purposes.

License Grant

The Canadian Licensee has an exclusive worldwide research and License from the University for the patents to sell products and to use processes encompassed by them.

License Property

This Agreement is on neural thread protein, its antibodies or genes for diagnostic or therapeutic purposes.

License Grant

The Licensor grants a sole, non-exclusive license to use Licensor Patents, Licensor Trademarks and Know-how to the Belgium Licensee, to sell and perform the AD7C/TM/ Test in the Territory. The AD7C/TM/ test is for measuring levels of Alzheimers marker Neural Thread Protein (NTP) in cerebrospinal fluid (CSF).

License Property

The Licensor has developed the AD7C/TM/ Test to aid in the diagnosis of Alzheimers Disease and wishes to make the test available for sale in Europe.

U. S. Patent Number 8,050,559  Neural Thread Protein Gene Expression and Detection of Alzheimers Disease U. S. Patent Number 7,289,207  Method of Detecting Neurological Disease or Dysfunction

Field of Use

The Belgium Licensee has testing facilities and capabilities for conducting the Nymox AD7C/TM/ Test in Europe; and  to conduct sales and related operations in Europe.

License Grant

University hereby grants to Israel Corporation and Corporation hereby accepts from University the License. License shall mean the exclusive worldwide license to practice University’s share in the University Research Technology (as hereinafter defined) for the development, manufacture, use and sale of the Licensed Products (as hereinafter defined). At the initiative of Corporation or University, the parties shall consult with each other regarding the prosecution of all patent applications with respect to the University Research Technology. University and Corporation shall assist, and cause their respective employees and consultants to assist, each other in assembling inventorship information and data for the filing and prosecution of patent applications on inventions pertaining to the Research Technology. Corporation shall be entitled to grant sublicenses under the License on terms and conditions in compliance and not inconsistent with the terms and conditions of this Agreement (except that the rate of royalty may be at higher rates than those set forth in this Agreement) (i) to a Corporation Entity or (ii) to other third parties for consideration and in an arms-length transaction.

License Property

Licensed Products shall mean all products, drugs, diagnostic reagents, diagnostic methods, therapeutic agents and therapeutic methods covered by a claim of any unexpired University Patents (as hereinafter defined) which has not been disclaimed or held invalid by a court of competent jurisdiction from which no appeal has been or can be taken.

University Research Technology shall mean all University Patents and all University Know-How.

University Patents shall mean all United States and foreign patents and patent applications, and any divisions, continuations, in whole or in part, reissues, renewals and extensions thereof, and pending applications therefor
(1)  
which claim Pre-Existing Inventions and which are identified hereto; or
(2)  
which claim inventions that are made, in whole or in part, by students or employees of SAMSF during the term and in the course of the Research Project;  
with the exception of all such patents which are Corporation Patents as hereinafter defined.
U.S. Patent Application Serial No. 08/801,301, filed February 18, 1997 entitled Use if Nekatibub To Prevent Cytotoxic effects of Amyloid Protein by Pappolla.
U.S. Provisional Patent Application Serial No. 60/075,555 filed February 23, 1998 entitled Use of 3-Indol-Proprionic acid by Pappolla
U.S. Provisional Patent Application Serial No. 60/079,349 filed March 25, 1998 entitled Inhibition of Alzheimer of Alzheimer Beta-Fibrillogenesis by Mela Tonm by Pappolla.

Corporation Patents shall mean all United States and foreign patents and patent applications, and any divisions, continuations, in whole or in part, reissues, renewals and extensions thereof, and pending applications therefor which claim inventions that are made, in whole or in part, by students or employees of Corporation.

Research Technology shall mean all University Patents, University Know-How, Corporation Patents and Corporation Know-How.

Field of Use

Field shall mean research, development and testing within pharmaceutical, biotechnological and diagnostic development programs in the field of Alzheimer’s Disease and other central nervous system and neurodegenerative diseases, and in the field of all other possible utilities for melatonin analogs.

License Grant

The University grants an exclusive license under the patents and technology to use, have used, manufacture, have manufactured, sell and/or have sold licensed products within the licensed territory and licensed field.

License Property

The licensed patents and technology are for methods and reagents for detecting and characterizing carcinoma cells in the blood.

The technology licensed relates to the isolation, enrichment and characterization of circulating epithelial cells. Epithelial cells are cells that cover external and internal body surfaces and give rise to the majority of solid tumors. This technology and the underlying patents and know-how contribute significantly to the Licensee's cell analysis products in the field of cancer diagnostics.

1. U.S. Provisional Patent Application Serial Number 60/074,535, filed February 12, 1998, entitled 'Test For Detecting, Enumerating and Characterizing Carcinoma Cells in the Blood' (corresponding for reference purposes only to UT SOUTHWESTERN file number UTSD568-PZ1).

2. U.S. Provisional Patent Application Serial Number 60/110,202, filed November 30, 1998, entitled 'Detection and Characterization of Carcinoma Cells in the Blood' (corresponding for reference purposes only to UT SOUTHWESTERN file number UTSD568-PZ2).

3. U.S. Patent Application Serial Number 09/248,388, filed February 12, 1999, entitled 'Methods and Reagents for the Rapid and Efficient Isolation of Circulating Cancer Cells' (corresponding for reference purposes only to UT SOUTHWESTERN file number UTSD568).

Field of Use

The Licensed Field means isolation, enrichment and characterization of circulating epithelial cells, and determination of their relationship to cancer disease states.

License Grant

The Licensor, a nonprofit American academic medical center, grants to Licensee a non-exclusive License in the territory within the Field of Use, without the right to subLicense (except to its Affiliates), to use and breed the Licensed Technology, and to use the Licensed Know-How, under the Mayo Patent Rights, according to the terms of this LSRA.

License Property

Licensed Technology means mice of the Tg 2576 strain of the transgenic mouse model described in Hsiao et al, Correlative Memory Deficils, A-Beta Elevation and Amyloid Plaques in Transgenic.  All reference to the singular shall include the plural and vice-versa.  169 Patent Rights mean U.S. Patent Number 5,455,169, issued October 3, 1995. MAYO believes that dissemination of these transgenic mice to researchers is of potential great benefit to present and future patients having Alzheimer's Disease and other neurodegenerative diseases.

DEVELOPMENT PROGRAMS. means pharmaceutical, biotechnological and diagnostic development programs in the field of Alzheimer's Disease and other central nervous system and neurodegenerative diseases as performed by LICENSEE or its Affiliates.

LICENSED TECHNOLOGY. means (a) mice of the Tg 2576 strain of the transgenic mouse model described in Hsiao et al, Correlative Memory Deficils, A-Beta Elevation and Amyloid Plaques in Transgenic Mice, as published in Science on October 4, 1996, or in a U.S. continuation-in-part patent application, filed June 17, 1996, Serial No. 08/664,872 (the “CIP Application”), which mice are (1) progeny of a cross of a Tg2576 N2 male with a C57B6SJL female or (2) the progeny of a cross between (Tg2576 N2 x C57B6SJL) male with a C57B6SJL female, (such mice referred to herein as” Stock”); (b) progeny of the Stock; and (c) certain transgenic mice that may result from the Sponsored Research Activities.