Description
Category: Technology Licenses
Created On: 2022-04-28
Record Count: 6
Primary Industries
- Drugs
- Disease
- Therapeutic
- Pharmaceuticals
- Cancer
- Delivery
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: 839
Licensor hereby grants to Licensee and its Affiliates an exclusive, royalty-bearing right and license under the MB07133 Technology to make, have made, use, sell, have sold, import and export MB07133 in the HCC Field in China and under the HepDirect Technology to make, have made, use, sell, have sold, import and export other HCC Compounds and HCC Products in the HCC Field in China.
Licensor hereby grants to Licensee and its Affiliates a non-exclusive, royalty-bearing right and license under the HepDirect Technology to Develop, make, have made, use, sell, have sold, import and export HepB Compounds and HepB Products in the HepB Field and HCC Compounds and HCC Products in the HCC Field, each in the Territory.
HCC Compound means any Licensed Compound other than MB07133 developed using or incorporating HepDirect Technology, which is selected by Chiva for Development and/or commercialization by Chiva in the HCC Field.
HCC Product means any product intended for use in the HCC Field that contains a HCC Compound, whether alone or in combination with another active pharmaceutical ingredient, the manufacture, use, sale, offer for sale, import or export of which would, but for the rights granted, infringe a Valid Claim.
HepB Compound means any Licensed Compound other than Pradefovir developed using or incorporating HepDirect Technology, which is selected by Chiva for use in the HepB Field.
HepB Product means any product intended for use in the HepB Field that contains a HepB Compound, whether alone or in combination with another active pharmaceutical ingredient, the manufacture, use, sale, offer for sale, import, or export of which would, but for the rights granted, infringe a Valid Claim.
HepDirect means the proprietary prodrug technology that targets delivery of drugs to the liver by using compositions, and methods of making and using the same, of any and all.
The Licensor is entitled to receive a portion of any sublicensing revenue generated from sublicensing of collaboration compounds to third parties in a major world market.
The Licensee is obligated to develop these programs to address the high unmet medical need in China’s fast growing pharmaceutical market. The Chinese government is offering financial support to pharmaceutical companies like the Licensee who can develop innovative therapies in China for public health needs such as infectious disease and oncology.
HCC Field means the treatment or prevention of hepatocellular carcinoma in humans.
HepB Field means the treatment or prevention of hepatitis B virus infection in humans.
IPSCIO Record ID: 385607
Pradefovir is a prodrug that targets adefovir to the liver for the treatment of hepatitis B.
Hepatocellular carcinoma (HCC) is the most common type of primary liver cancer. Hepatocellular carcinoma occurs most often in people with chronic liver diseases, such as cirrhosis caused by hepatitis B or hepatitis C infection.
IPSCIO Record ID: 48421
IPSCIO Record ID: 239036
For the License under Prior Technology and Collaboration Technology, Licensor grants to Merck an exclusive, even as to Licensor, license, with the right to sublicense, under Licensors interest in Prior Technology and Collaboration Technology solely to perform Licensees obligations under the Research Program during the Research Program Term and to develop, make, have made, use, sell, have sold, offer for sale and import Collaboration Compounds and Products in the Field in the Territory.
For the License under Licensor Technology, Licensor grants a non-exclusive license, with the right to sublicense as described below, under Licensors interest in Licensor Technology solely to perform Licensees obligations under the Research Program during the Research Program Term and to develop, make, have made, use, sell, have sold, offer for sale and import Collaboration Compounds and Products in the Field in the Territory.
For the Limited License Grant, Licensor grants, effective at the time such determination is made, to the extent Licensor is then legally able to do so, a non-exclusive license, including the right to sublicense as described below, under the HCV Claims solely to develop, make, have made, use, sell, offer for sale, have sold or import Collaboration Compound(s) and Product(s) in the Field in the Territory.
Licensor technology, know-how and patents relate to HepDirect Technology.
IPSCIO Record ID: 291131
Licensor hereby grants to Licensee a non-exclusive, royalty-bearing license in the Territory, without the right to sublicense (except that Licensee may subcontract), under Licensor Technology Controlled by Licensor solely to perform Licensee’s obligations under the Research Program during the Research Term, and (B) Licensor hereby grants to Licensee a non-exclusive, royalty-bearing license in the Territory, with the right to sublicense as described below through multiple tiers of sublicense, under Licensor Technology Controlled by Licensor solely to develop, make, have made, use, sell, have sold, offer for sale and import Development Candidates and Products in the Field during the Term.
Licensor hereby grants to Licensee, a non-exclusive, royalty-bearing (included within the royalties as set forth) in license in the Territory, including the right to sublicense as described below through multiple tiers of sublicense, under such Specific Claims solely to develop, make, have made, use, sell, offer for sale, have sold or import such Development Candidate in the Field during the Term.
Joint Technology shall mean Joint Inventions and Joint Patents. Joint Patents shall mean Patents claiming any Joint Invention. Joint Invention shall mean any Invention conceived jointly by the Parties (or on their behalf) in the course of the Research Program during the Research Term; but excluding, in each case, Collaboration Technology, Licensee Technology and Licensor Technology.
Collaboration Technology shall mean Collaboration Know-How and Collaboration Patents.
Collaboration Patents shall mean Patents first filed after the Effective Date with claims or portions thereof, to the extent that they describe or claim a Collaboration Compound or a method of making or using a Collaboration Compound, where such Invention is conceived solely by a Party (or on its behalf) or jointly by the Parties (or on their behalf) in the course of the Research Program during the Research Term; provided that any Patent with the same disclosure as an Licensee Patent described in Agreement or a Licensor Patent described in Agreement, such as a renewal, division, continuation (in whole), or request for continued examination (RCE), reissue, reexamination or the like, will be included, as applicable.
Licensee Patents shall mean (a) Patents with claims or portions thereof, to the extent directed to any Invention that is an Licensee Nucleoside or Collaboration Compound or a method of making or using an Licensee Nucleoside or Collaboration Compound, where such Patents are Controlled by Licensee as of the Effective Date, (b) Patents with claims or portions thereof, to the extent directed to any Invention that is an Licensee Nucleoside or a method of making or using an Licensee Nucleoside, where such Invention first becomes Controlled by Licensee during the Research Term (provided that any such Patent with the same disclosure as a Patent described in subsection (a), such as a renewal, division, continuation (in whole), or request for continued examination (RCE), reissue, reexamination or the like, will be included in subsection (a) rather than subsection (b)) and (c) Patents with claims or portions thereof, to the extent directed to any Invention that is a Collaboration Compound or a method of making or using a Collaboration Compound, where such Invention first becomes Controlled by Licensee after the Research Term but prior to the First Commercial Sale of any Product that contains such Collaboration Compound. Notwithstanding the foregoing, subsection (b), does not include any claims of such Patents or portions thereof to the extent directed to any such Invention that is a Collaboration Compound or a method of making or using a Collaboration Compound. For purposes of clarity, Licensee Patents do not include Licensor Patents. The Licensee Patents existing on the Effective Date are listed.
6,395,716 – .beta.-L-2-deoxy-nucleosides for the treatment of hepatitis B
6,569,837 – .beta.-L-2-deoxy pyrimidine nucleosides for the treatment of hepatitis B
6,914,054 – Methods and compositions for treating hepatitis C virus
Collaboration Compound shall mean a chemical entity that is synthesized solely by a Party or jointly by the Parties (or on behalf of a Party or the Parties) in the course of the Research Program during the Research Term that covalently incorporates HepDirect Technology and is converted into an Licensee Nucleoside (including any monophosphate, diphosphate or triphosphate thereof) in the body.
Combination Therapy shall mean a fixed dose product containing more than one (1) active pharmaceutical ingredient. Separate products that are sold or promoted for sale together for co-administration shall not be considered a Combination Therapy.
Licensor Technology shall mean the Licesor Know-How and Licensor Patents.
Licensor Patents shall mean (a) Patents with claims or portions thereof, to the extent directed to any Invention that is HepDirect Technology or Collaboration Compound or a method of making or using HepDirect Technology or a Collaboration Compound, where such Patents are Controlled by Licensor as of the Effective Date, and (b) Patents with claims or portions thereof, to the extent directed to any Invention that is HepDirect Technology or a method of making or using HepDirect Technology, where such Invention first becomes Controlled by Licensor during the Research Term (provided that any such Patent with the same disclosure as a Patent described in subsection (a), such as a renewal, division, continuation (in whole), or request for continued examination (RCE), reissue, reexamination or the like, will be included in subsection (a) rather than subsection (b)). Notwithstanding the foregoing, subsection (b) does not include any claims of such Patents or portions thereof to the extent directed to any such Invention that is a Collaboration Compound or a method of making or using a Collaboration Compound. For purposes of clarity, Licensor Patents do not include Licensee Patents.
Development Candidates for purposes of this Agreement means a designate one (1) or more Collaboration Compounds that possess the properties specified to the Research Plan.
HepDirect Technology shall mean (a) (i) any and all cyclic 1,3-propanyl esters or amides of phosphates, phosphoramidates and/or phosphonates that re activated by any P450 enzyme and/or (ii) any method of making or using any of the foregoing (this clause (a), “HepDirect Base Technologyâ€); which (b) are the subject matter as originally claimed in the Licensor Core Patents as of the Effective Date or as claimed in any amendment filed in the Licensor Core Patents.
IPSCIO Record ID: 273416
Licensed Patents means any and all Patent Rights which Licensor Controls in any country of the Territory, having one or more Valid Claims Covering the Licensed Compound or Product in the Field and which are reasonably necessary or useful to research, develop, prepare, make, have made, market, export, have exported, import, use, offer for sale, sell, have sold, distribute, promote, detail or otherwise commercialize a Licensed Compound or Product in the Field in the Territory. Licensed Patents includes the Patent Rights set forth below
U.S. Patent 6312662 – Prodrugs phosphorus-containing compounds
U.S. Patent 6946115 – Prodrugs for phosphorus-containing compounds
U.S. Patent 6752981 – Prodrugs for liver specific drug delivery
Licensed Technology means all HepDirect Technology on the Closing Date or during the Term, which are necessary or useful to research, develop, prepare, make, have made, market, export, have exported, import, use, offer for sale, sell, have sold, distribute, promote, detail or otherwise commercialize a Licensed Compound or Product in the Field in the Territory. By way of clarification, Licensed Technology includes all such HepDirect Technology conceived or acquired in whole or in part by Licnesor on or after the Closing Date including the items set forth in the agreement.
Licensed Compound means all forms of MB6866 as identified (at times known as remofovir and now known as pradefovir) including any complexes, chelates, clathrates, acids, bases, esters, salts, isomers, stereoisomers, enantiomers, pro-drug form, metabolite, hydrate, solvate, polymorph, and crystalline forms thereof, or any Substitute Compound substituted in accordance with Article III, and its various forms including salts and prodrugs.
