Category: Technology Licenses
Created On: 2022-04-28
Record Count: 6
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: 6960
Electroconvulsive therapy (ECT) is perhaps the most effective treatment for depression, with response rate of 80% in some samples . However, it is not widely used due to the adverse side effects associated with this therapy. Although ECT has been used for almost a century for treating depressive disorders, the mechanism of its action is not clear, as the etiology of depression has not yet been defined. One reasonable hypothesis is that such repetitive treatment, which strongly stimulates the whole brain, also affects the brain reward circuitry (including the prefrontal cortex, nucleus accumbens, ventral tegmental area and other limbic structures), thereby inducing long-term neuroadaptations that normalize the activity of this circuitry.
Licensed Information – shall mean all and any inventions, products, materials, compounds, compositions, substances, methods, processes, techniques, know-how, data, information, discoveries and other results of whatsoever nature discovered or occurring in the course of, or arising from, the performance of the Research.
Patents – shall mean all patent applications or applications for certificates of invention covering portions of the Licensed Information and all patents or certificates of invention which may be granted thereon; as well as all continuations, continuations-in-part, patents of addition, divisions, renewals, reissues and extensions of any of the aforegoing patents, but excluding (a) patents that have been held unpatentable or invalid or cancelled pursuant to the final (i.e., unappealable or unappealed) judgment of a competent court; and (b) patent applications that have been withdrawn or have expired, in each case, such exclusion to be effective only from the date of such judgment, or such withdrawal or expiry, as the case may be.
A more recent approach that allows stimulation of relatively focal cortical regions non-invasively is transcranial magnetic stimulation (TMS). The stimulation is induced by passing a high alternating current through a magnetic coil, which is placed over the scalp. Due to several technical limitations it is not possible to create a coil for stimulating a specific region in a rat brain without affecting the surrounding regions, but it is possible to stimulate a relatively focal region in the human brain. Repetitive TMS (rTMS) over the prefrontal cortex was recently shown to be effective as a treatment for major depression in several studies  and in some cases, as effective as ECT . Moreover, some neurochemical alterations induced by TMS are similar to those induced by ECT . Nevertheless, the efficacy of TMS as a treatment for depressive disorders is still controversial .
For the purposes of this Agreement the term patent shall also mean Orphan Drug status (within the meaning of such term under the US Orphan Drug Act), Supplementary Protection, Certificate (within the meaning of such term under Council Regulation (EU) No. 1768/92) and/or any other similar statutory protection.
The Israeli Company engages in the development and production of transcranial magnetic stimulation (TMS) apparatus and therapies for the treatment of depression, addictions and certain brain deficiencies and/or malfunctions. The Company is interested in the performance of research at the Weizmann Institute of Science (the Institute) under the supervision of Dr. Abraham Zangen (the Scientist) of the Department of Neurobiology in the field of depression, as specified in the research program attached hereto, (the Research Program and the Research); and is willing, subject to and in accordance with the terms and conditions of this Agreement, to finance the performance of the Research in accordance with the budget attached hereto (the Research Budget). Licensor is willing, subject to and in accordance with the terms and conditions of this Agreement, to procure the performance of the Research in accordance with the Research Program and the Research Budget, at the Institute as aforesaid. By operation of Israeli law and/or under the terms of employment of the Scientist at the Institute and pursuant to an agreement between the Institute, Licensor and the Scientist, all right, title and interest of the Scientist and/or the Institute in and to any results deriving from the performance of the Research at the Institute, vests and shall vest in Licensor.
The Company declares that (i) on 10 August 2003 the Company entered into a patent license agreement with the U.S. National Institutes of Health, the U.S. Center for Disease Control and Prevention, and/or the U.S. Food and Drug Administration (the FDA) (collectively, PHS), acting for and behalf of the U.S. Department of Health and Human Services (the U.S. DHHS), pursuant to which, inter alia, PHS granted to the Company, a worldwide exclusive license in respect of U.S. provisional application no. 60/242,297 and corresponding PCT patent application number PCT/US01/50737, entitled Coil For Magnetic Stimulation and Methods For Using The Same (the U.S. DHHS Patent Applications) and in respect of certain patent applications corresponding to the U.S. DHHS Patent Applications and all patents issuing on any of the aforegoing patent applications (such agreement, the PHS Patent License Agreement); and (ii) it has received an undertaking from investor(s), pursuant to a signed agreement of July 17, 2003 to make an aggregate cumulative investment in the Company of at least US $1,000,000 (one million United States Dollars), to be expended for the purpose of the development of Products pursuant to this Agreement as part of the Companyâ€™s business activities.
IPSCIO Record ID: 6964
This amendment refers to the exclusive license agreement relating to PCT Application No. PCT/US01/50737, Coil For Magnetic Stimulation and Methods For Using The Same, (filed 10/19/2001) which claims priority from U.S. Provisional Application No. 60/242,297 (filed 10/20/2000) by Zangen et al.; the licensed Fields of Use being Transcranial Magnetic Stimulation (TMS) apparatus and therapies. The original license agreement is effective as of August 20, 2003.
Specific Paragraphs and Appendices of the Agreement are modified as specified below
Paragraph 7.01 is deleted in its entirety and replaced with the following Licensor shall bear the responsibility and shall consult with Licensee with regards to the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights pertaining to U.S. Provisional Patent Application Number 60/242,297, filed on October 20, 2000 and International Patent Application PCT/US2001/50737 and the progeny cases claiming priority therefrom.
Patent(s) or Patent Application(s) is replaced in its entirety with the following
HHS Ref. No. E-223-2000/0-US-03 U.S Patent Application Ser. No. 10/399,559;
HHS Ref. No. E-223-2000/0-CA-05 Canadian Patent Application Ser. No. 2,425,276;
HHS Ref. No. E-223-2000/0-AU-06 Australian Patent Application Ser. No. 2002229129;
HHS Ref. No. E-223-2000/0-EP-04 European Patent Application Ser. No. 01987684.6 (validated in France, Germany, the United Kingdom, Italy and Sweden);
HHS Ref. No. E-223-2000/0-JP-07 Japanese Patent Application Ser. No. 2002-535740,
HHS Ref. No. E-223-2000/0-IL-08 Israeli Patent Application Ser. No. 155320;
HHS Ref. No. E-223-2000/0-HK-09 Hong Kong Patent Application Ser. No. 03108947.4, all of which are entitled Coil For Magnetic Stimulation and are national phase applications of DHHS Ref. No. E-223-00/0
International Patent Application PCT/US01/50737, which claims priority from U.S. Provisional Patent Application Number 60/242,297, filed on October 20, 2000.
HHS Ref. No. E-301-2007 Summation Of TMS Stimulation Through Several Coils; U.S. Patent Application Serial No. 11/153,905 filed June 16, 2005 and International Patent Application No. PCT/IL2006/000694 filed June 15, 2006.
Licensee shall bear the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights that claim priority from U.S. Patent Application Serial No. 11/153,905 filed June 16, 2005 and International Patent Application No. PCT/IL2006/000694 filed June 15, 2006, and shall on an ongoing basis promptly furnish copies of all patent-related documents to Licensor. Licensee shall, subject to the prior approval of Licensor, select registered patent attorneys or patent agents to provide such services on behalf of Licensee and Licensor. Licensor shall provide appropriate powers of attorney and other documents necessary to undertake such actions to the patent attorneys or patent agents providing such services. Licensee and its attorneys or agents shall consult with Licensor in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide Licensor sufficient opportunity to comment on any document that Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office.
IPSCIO Record ID: 6965
IPSCIO Record ID: 4166
To the best of the partiesâ€™ knowledge, the right and title to PCT patent application, publication number WO/2006/134598, entitled Transcranial Magnetic Stimulation System and Method and any corresponding patent application and in any patents granted in respect of any of the foregoing patent applications (Licensorâ€™s Ref. 2005-117, as more fully specified in Agreement hereto, hereinafter, collectively the 2005 Patent) vests in its three co-owners.
The Company hereby represents that by virtue of a certain amendment agreement signed between the Company and the NIH on October 4, 2008 (the NIH Amendment), in which the NIH granted to the Company an exclusive license in and to the NIHâ€™s rights under the 2005 Patent – the NIH has also granted its consent to include the 2005 Patent in the License granted by Licensor to the Company. Subject to the aforesaid, it is hereby agreed (as between Licensor and the Company) that Licensorâ€™s rights in the 2005 Patent shall be part of the Licensed Information under the R&L Agreement and as such licensed to the Company under the License. In consideration for the aforesaid, the Company undertakes and agrees that
– it shall pay Licensor royalties and/or sublicensing receipts in respect of its commercial use of the 2005 Patent, as if the 2005 Patent were one of the Patents included in the Licensed Information under the License, in accordance with clause 9 to the R&L Agreement but subject (where applicable) to the provisions of this Agreement.
IPSCIO Record ID: 346433
Transcranial Magnetic Stimulation (TMS) uses magnetic pulses to stimulate neurons and consequently modulates the physiological activity of the brain. The technology can either increase brain activity in neuronal networks which are hypoactive, or alternatively decrease brain activity in neuronal networks which are hyperactive. The proprietary electromagnetic coils, which is referred to as H-Coils, are designed to safely stimulate deep and broad brain regions.
MDD is a common and debilitating mental disorder characterized by physiological symptoms, such as sleep disturbance and changes in appetite, emotional symptoms, such as sadness, despair, emptiness, self-hate, and critique, and cognitive symptoms, such as difficulty concentrating, memory dysfunction, suicidal thinking, and faulty judgment of reality.
OCD is a common, chronic, and long-lasting disorder in which a person has uncontrollable, reoccurring thoughts (obsessions) and behaviors (compulsions) that he or she feels the urge to repeat over and over in a manner that can interfere with all aspects of life, such as work, school, and personal relationships.
Smoking is one of the leading causes of death in developed countries. The addiction to nicotine, similar to the addiction to drugs and alcohol, involves modulation of the brain reward system and causes uncontrollable desire to smoke. 480,000 U.S. adults die from smoking each year. Cigarette smoking has been found to harm nearly every organ system in the body and is the leading cause of preventable death in the U.S. and of disease burden worldwide.
IPSCIO Record ID: 293998
License shall mean an exclusive worldwide licence under the Licensed Information and the Patents, for the development, manufacture, production, use, marketing, distribution and sale of the Products.
Licensed Information shall mean (i) the Invention; (ii) the Know-How; and (iii) all and any inventions, products, materials, compounds, compositions, substances, methods, processes, techniques, know-how, data, information, discoveries and other results of whatsoever nature discovered or occurring in the course of, or arising from, the performance of the Research.
Patents shall mean (i) the Existing Patent Applications and all patents which may be granted thereon; and (ii) all other patent applications or applications for certificates of invention covering portions of the Licensed Information and all patents or certificates of invention which may be granted thereon; as well as all continuations, continuations-in-part, patents of addition, divisions, renewals, reissues and extensions (including any patent term extension) of any of the aforegoing patents, but excluding (a) patents that have been invalidated or cancelled pursuant to the final (i.e., unappealed or unappealable) judgment of a competent court; and (b) patent applications that have been withdrawn or have expired, in each case such exclusion to be effective only from the date of such invalidation, cancellation, withdrawal or expiry, as the case may be.
Gaucher disease is the result of a buildup of certain fatty substances in certain organs, particularly your spleen and liver. This causes these organs to enlarge and can affect their function. The fatty substances also can build up in bone tissue, weakening the bone and increasing the risk of fractures.