Royalty Report: Drugs, Biotechnology, Supply – Collection: 6982

License Grant

University hereby grants to Licensee a royalty-bearing exclusive license to make, have made, use and sell any Licensed Product and to practice any Licensed Method in the Field of Use under Licensor’s Patent Rights throughout the Territory.

License Property

Proprietary biocompatible hydrogels mimic the extracellular matrix in which cells reside.

Certain inventions, generally characterized as and assigned University identification number U-3405, “In situ Crosslinkable Synthetic Extracellular Matrices”, and U-3656, “Novel Chemical Modifications of Hyaluronan”,

U No.

Matter

Application No.  Date of Filing

Title

Inventor(s)

U-3405

21101.0036U1  Provisional

60/390,504  6/21/2002

Disulfide Crosslinked Hyaluronan Hydrogels

Glenn Preswich, Xiao Shu, Yi Luo, Kelly Kirker

U-3405

21101.0036P1  PCT

PCT/US03/15519  5/15/03

Crosslinked Compounds and Methods of Making and Using Thereof

Glenn Preswich, Xiao Shu, Yi Luo, Kelly Kirker

U-3405

21101.0036U2  Nationalized, United States

10/519,173  12/20/04

Crosslinked Compounds and Methods of Making and Using Thereof

Glenn Preswich, Xiao Shu, Yi Luo, Kelly Kirker

U-3405

21101.0036CA1  Nationalized, Canada

2,489,712  5/15/03

Crosslinked Compounds and Methods of Making and Using Thereof

Glenn Preswich, Xiao Shu, Yi Luo, Kelly Kirker

U-3405

21101.0036EP1  Nationalized, Europe

03799796.2  5/15/03

Crosslinked Compounds and Methods of Making and Using Thereof

Glenn Preswich, Xiao Shu, Yi Luo, Kelly Kirker

U-3656

21101.0051P1  Provisional

60/526,797  12/4/2003

Modified Macromolecules and Methods of Making and Using Thereof

Glenn Prestwich, Xiao Shu

U-3656

21101.0051U1  PCT

PCT/US04/040726  12/6/2004

Modified Macromolecules and Methods of Making and Using Thereof

Glenn Prestwich, Xiao Shu

Field of Use

Licensee intend to initially use the technology in the development of therapeutic products for use in the treatment of osteoarthritis.

HyStem®-Rx is a biocompatible hydrogel that mimics the extracellular matrix in which cells reside. As an injectable product, HyStem®-Rx may address an immediate need in cosmetic and reconstructive surgery and other procedures by improving the process of transplanting adipose (fat) cells or other adult stem cells. Adult stem cell types such as adipose stem cells obtained from a patient through liposuction can be transplanted back into the same patient in another location in the body, without the risk of rejection associated with the transplant of donor tissues.

The Licensee is developing cellular therapeutics for orthopedic repair diseases and injuries. The lead project is the development of human embryonic progenitor cell (hEPC) lines for cartilage repair. A tissue engineered product is defined as living human tissues or cells on a polymer platform, created at a place other than the point-of-care facility, for transplantation into a human patient.

License Grant

Licensor hereby grants to Licensee a royalty-bearing exclusive license to make, have made, use and sell any Licensed Product and to practice any Licensed Method in the Field of Use under Licensor’s Patent Rights throughout the Territory.

License Property

Whereas, certain inventions, generally characterized as and assigned University of Utah identification number U-3405, In situ Crosslinkable Synthetic Extracellular Matrices, and U-3656, Novel Chemical Modifications of Hyaluronan, hereinafter collectively referred to as the Invention.

Patent Rights

U No.
  
Matter
  
Application No.
  
Title
  
Inventor(s)

Date of Filing

U-3405
  
21101.0036U1
  
60/390,504
  
Disulfide Crosslinked Hyaluronan Hydrogels
  
Glenn Preswich, Xiao Shu, Yi Luo, Kelly Kirker

Provisional

6/21/2002

U-3405
  
21101.0036P1
  
PCT/US03/15519
  
Crosslinked Compounds and Methods of Making and Using Thereof
  
Glenn Preswich, Xiao Shu, Yi Luo, Kelly Kirker

PCT

5/15/2003

U-3405
  
21101.0036U2
  
10/519,173
  
Crosslinked Compounds and Methods of Making and Using Thereof
  
Glenn Preswich, Xiao Shu, Yi Luo, Kelly Kirker

Nationalized, United States

12/20/2004

U-3405
  
21101.0036CA1
  
2,489,712
  
Crosslinked Compounds and Methods of Making and Using Thereof
  
Glenn Preswich, Xiao Shu, Yi Luo, Kelly Kirker

Nationalized, Canada

5/15/2003

U-3405
  
21101.0036EP1
  
3799796.2
  
Crosslinked Compounds and Methods of Making and Using Thereof
  
Glenn Preswich, Xiao Shu, Yi Luo, Kelly Kirker

Nationalized, Europe

5/15/2003

U-3656
  
21101.0051P1
  
60/526,797
  
Modified Macromolecules and Methods of Making and Using Thereof
  
Glenn Prestwich, Xiao Shu

Provisional

12/4/2003

U-3656
  
21101.0051U1
  
PCT/US04/040726
  
Modified Macromolecules and Methods of Making and Using Thereof
  
Glenn Prestwich, Xiao Shu

PCT

12/6/2004

Field of Use

Field of Use shall mean exclusive use all of Patent Rights excluding human and animal therapeutics, animal health, medical devices and pharmaceutical uses and applications.

License Grant

Licensor has granted to Licensee a sublicense of certain patents licensed to Licensor by the University of Utah Research Foundation (the “Utah Sublicense”), and has granted to Licensee a direct license of certain patents held by Licensor.  This License will not permit sublicensing and will be non-exclusive for medical products, devices, and services related to human tendon, and will be exclusive for all other licensed fields linked to the HyStem® Technology.

We may only develop, sell, and otherwise commercialize a product under the Utah Sublicense and HyStem License if we spend at least a low seven figure amount on research with respect to the product. Licensor will agree to provide us with a reasonable amount of the hydrogel product for the purpose of our research for we will pay Licensor’s cost of manufacturing and supplying the hydrogel.

License Property

The agreement is related to HyStem® hydrogel technology for use outside of the Licensor Exclusive Field for products that include cells. The intellectual property is connected to PSC-derived clonal embryonic progenitor cell lines (PureStem® technology) and HyStem® delivery matrices.  HyStem® is a patented biomaterial that mimics the extracellular matrix that is the structural network of macromolecules surrounding cells in the body. The extracellular matrix is essential for normal cellular function and survival of transplanted cells. Many tissue engineering and regenerative cell-based therapies are expected to benefit from the delivery of therapeutic cells in a matrix for precise localized delivery and survival. HyStem is a unique hydrogel that has been shown to support cellular attachment in vivo. Current research at medical institutions has shown that HyStem is compatible with a wide variety of cells and tissue types including those of the brain, bone, skin, cartilage, vascular system and heart. The technology underlying HyStem hydrogels was developed at the University of Utah and was been exclusively licensed to Licensor for human therapeutic applications and sublicensed to Licensee for certain fields. The HyStem technology is based on a unique thiol cross-linking chemistry to prepare hyaluronan-based matrices as hydrogels. Since the first published report in 2002, there have been numerous academic scientific publications supporting the biocompatibility of thiol cross-linked hyaluronan-based matrices and their applications as medical devices and in cell culture, tissue engineering, and animal models of cell-based therapies.

Field of Use

This agreement pertains to the medical industry.

License Grant

Licensor hereby grants a royalty-bearing, worldwide, exclusive license, with the right to sublicense, to use the Patent Rights and Know-How to (a) research, develop, make, have made, use, sell, have sold, offer for sale, have offered for sale, import, have imported, export and have exported Licensed Products, (b) research, develop, use, practice, sell, have sold, offer for sale, have offered for sale, import, have imported, export and have exported Licensed Processes, and (c) develop, use, perform, sell, have sold, offer for sale, have offered for sale, import, have imported, export and have exported Licensed Services.

Company granted an exclusive license to use its “ACTCellerate” embryonic stem cell technology and a bank of over 140 diverse progenitor cell lines derived using that technology.

License Property

ACTCellerateâ„¢ is a recently discovered technology that allows the rapid isolation of novel highly purified embryonic progenitor cells. Embryonic progenitors are cells intermediate between embryonic stem cells and fully differentiated cells.  The progenitor cells are relatively easy to manufacture on a large scale and in a purified state, which may make it advantageous to work with these cells compared to the direct use of embryonic stem cells. Using the ACTCellerate platform technology over 140 distinguishable novel progenitor cell lines have already been created, scaled-up, and banked. These unique cell lines may possess the ability to become a wide array of products never before available to the medical community, with potential applications in research, drug discovery, and human regenerative stem cell therapy.  

The licensed rights include pending patent applications, knowledge and the existing bank of cell lines. The licence is exclusive and worldwide for all commercial purposes, including the development of research products, and therapeutic and diagnostic products for human and veterinary use.  Licensor has an option to reacquire rights to use the technology for the development of certain types of SCs for human therapeutic use in fields re-lated to its core business.

The technology allows the rapid isolation of novel, highly-purified embryonic progenitor cells. The progenitor cells are relatively easy to manufacture on a large scale and in a purified state, which may make it advantageous to work with these cells compared to the direct use of ESCs. These unique cell lines may have potential applications in research, drug discovery and human regenerative SC therapy.

Patent Rights
103080-069-WO1 (PCT/US06/13519, filed on 4-11-06) Novel uses of cells with Prenatal Patterns of prenatal gene expression, published as WO2007/058671
103080-071-P61 (USSN 60/791,400, filed on Apr. 11, 2006) Methods to accelerate the isolation of novel cell strains from pluripotent ST
103080-071-P66 (USSN 60/850,294, filed on Oct. 6, 2006), Methods to accelerate the isolation ov novel cell strains from pluripotent stem cells
103080-071-P01 (USSN 11/604,047, filed on Nov. 21, 2006), Methods to accelerate the isolation  of novel cell strains from pluripotent STE…
PCT is 103080-071-WO2 (PCT/US2006/45352, filed on Nov. 21, 2006), published as WO 2007/062198.

License Grant

The Spanish University patent families referred to as PCX006 and PCX007 are the subject of a co ownership agreement with the Spanish Licensee. Under the terms of this agreement, the University assigned all exploitation rights, including the right to license or sub-license to third parties.

License Property

University signed an agreement for the Assignment of the Rights to Exploit Spanish invention patents no. 200402355, entitled “IDENTIFICATION AND ISOLATION OF MULTIPOTENT CELLS FROM NON-OSTEOCHONDRAL MESENCHYMAL TISSUE”, and no. 200402083, entitled “Biomaterial for suture”

PCX006 is a patent family claiming a non osteochondral derived multipotent adult stem cell population characterized by a set of biological markers.
PCX007 is a patent family claiming an adipose derived stem cell composition characterized by a panel of cell surface markers, methods of preparation of such a composition and adipose tissue derived stromal stem cells in treating fistula and wounds.

(WO2006037649/11/167,061) IDENTIFICATION AND INSOLATION OF MULTIPOTENT CELLS FROM NON-OSTEOCHONDRAL MESENCHYMAL TISSUE
The present invention relates to isolated multipotent adult cells which are isolated from non-osteochondral mesenchymal tissue and are characterized by the presence and absence of a set of cell surface markers. The invention also relates to a method for identifying and isolating a population of said cells, as well as to the applications thereof, for example, in the manufacture of a pharmaceutical composition for the repair and regeneration of tissues.

Field of Use

The Licensee is an advanced biopharmaceutical company focused on developing and commercializing novel therapeutics from our proprietary technology platforms of allogeneic, or donor-derived, stem cells.

License Grant

Licensor, a University, shall execute and deliver to BRT the Assignment, which transfers, grants, conveys, assigns, and relinquishes exclusively to BRT all of Foundation’s right, title, and interest in and to the Patents and the inventions claimed therein in perpetuity.

The Licensee entered into a research Agreement with the Licensor

Pursuant to the Research Agreement, the Licensor will perform certain research services to be used by the Licensee.

License Property

The University Research Foundation is the owner of the entire right, title and interest in and to application for United States Letters Patent entitled Methods of Derivation & Isolation of Human Brown Fat Cell Lines, filed in the United States Patent and Trademark Office as Serial No. 61/632,122 on January 18, 2012 and to application for United States Letters Patent entitled Methods of Derivation & Isolation of Human Brown Fat Cell Lines, filed in the United States Patent and Trademark Office as Serial No. 61/632,516 on January 25, 2012 which applications are incorporated herein by this reference

Field of Use

The goal of the Licensee is to become a medical center of excellence using adult stem cells (non-embryonic) and tissue protocols, primarily involving a patient’s own cells, allowing patients to undergo cellular-based treatments.