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Spring 2000
Discovering the power of invention


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We welcome news releases and items pertaining to your licensing and technology transfer activities.
Please submit to I.P. News, P. O. Box T, Willow Grove, PA 19090


NEWSNOTES From Dr. Louis Schiffman

PRESIDENT CLINTON’S budget for fiscal 2001 calls for an increase in R&D funding of 3.1% over fiscal 2000 to $85.3 billion. A $1 billion increase is slated for biomedical research at the National Institutes of Health raising the total allocation to $18.9 billion. The National Science Foundation would receive $4.6 billion, a hike of $675 million over current funding levels. A $240 million increase over the current $196 million is designated for bio-mass fuels research. Other aspects of the president’s budget include $2.2 billion distributed among seven agencies for research on information technology; and a national nanotechnolgy initiative involving $497 million to be distributed among six agencies.

THE PRESIDENT’S Committee of Advisors on Science And Technology (PCAST) has provided the President with a list of needed R&D initiatives, including a national strategy for energy R&D and for international cooperation on diffusion of advanced energy technologies worldwide; improved understanding and management of biological resources; improved education, training, and educational research; improved protection, management, and disposition of nuclear weapons materials; and a national information infrastructure protection institute.

JUDGE VANESSA D. GILMORE of the U.S. District Court for the Southern District of Texas has ruled that Exxon Corp.’s, U.S. Patent 5,324,800, a major piece of the company’s metallocene catalyst intellectual property, is invalid. The ruling exonerates Phillips Petroleum of Exxon’s allegations that it infringed on Exxon’s patent when it made and used metallocene catalysts and made, used, and sold linear low-density polyethylene prepared with metallocene catalysts. The patent has been cited in a number of recent suits. Exxon indicated that it will move promptly to have the ruling set aside and expressed confidence that it will be reversed.

DU PONT has granted a license to BP Amoco to manufacture high-density polyethylene (HDPE) using iron and cobalt tridentate catalysts covered under DuPont’s Versipol patents. BP Amoco has also granted DuPont a license for certain of its patents covering similar catalyst technology.

LINDE has signed a $56-million contract to build a 200,000-m.t./year high-density polyethylene (PE) plant for Chemopetrol at Litvinov, Czech Republic. Univation Technologies will provide technology.

DUPONT and Fluor Daniel have formed an alliance to license, design, and construct plants for making polyethylene terephthalate (PET) packaging resins based on DuPont’s NG-3 technology. DuPont will provide technical knowledge, and licensing rights; Flour will be involved in the engineering, construction, and operations.

TARGOR, BASF’s polypropylene (PP) subsidiary, has licensed its Novolen process technology to Mossavar (Isfahan, Iran) a privately owned carpet maker. Krupp Uhde will carry out engineering work for construction of an 80,000-m.t./year polypropylene unit at Bandar, Imam.

KRUPP UHDE (Dortmund, Germany) has acquired Phillips Petroleum’s steam active reforming (Star) dehydrogenation technology. Star converts light hydrocarbons such as propane and butane to olefins. Krupp Uhde will use Star to enter into the fast-growing propane dehydrogenation licensing market.

METHANEX, ABB Lummus Global, and ICI’s Synetix have formed an alliance to commercialize a process for converting natural gas into synthesis gas (syngas). The partners claim the new process, CXR, offers increased efficiency and improved environmental performance compared with existing syngas processes. Synetix initially developed the technology. Synetix and Methanex have been working on the further development of the process. Lummus will market the process once development is completed sometime in late 2002.

CIBA SPECIALTY CHEMICALS and Nalco/Exxon Energy Chemicals LP are forming a strategic alliance in which Ciba will supply Nalco/Exxon with key products and technologies used in chemical process treatment programs including polymerization retarders and inhibitors. Nalco/Exxon will have marketing responsibility and provide on-site services. Ciba and Nalco/Exxon are also entering into a joint development agreement to provide new state-of-the-art treatment programs for the chemical process and refining industries.

EKC TECHNOLOGY (Heyward, CA) has obtained exclusive license from Simon Fraser University (Burnaby, BC) to commercialize a process that uses light in combination with metallic compounds to directly deposit metal and metal oxides on a substrate.

SYMYX CO. (Santa Clara, CA) has an exclusive license to a patent covering high-speed materials discovery methods. This combinatorial patent jointly owned by Symyx and the Regents of the University of California (Oakland), contains more that 70 claims covering the synthesis and screening of inorganic materials arrays and both liquid and thin-film deposition of materials onto arrays. It covers also screening techniques for a variety of electrical, mechanical, and chemical properties.

CANTAR PHARMACEUTICALS PLC has an exclusive option for a license to patents held by GenVec Inc. The patents cover technology exclusively licensed to GenVec from the University of Pittsburgh, which relate to gene therapy products targeting the major neurological disorders, Parkinson’s disease, Huntington’s disease and Alzheimer’s disease.

IMMUNE RESPONSE CORPORATION (Carlsbad, CA) has acquired T-cell receptor intellectual property from Connectics Corporation and Xoma LLC for cash, stock and royalties. The company intends to use the technology to develop treatments for autoimmune connective tissue, autoimmune and HIV diseases.

BRISTOL-MYERS SQUIBB and Millennium Predictive Medicine, a subsidiary of Millennium Pharmaceuticals (Cambridge, MA) have entered into a five-year alliance in the field of cancer pharmacogenomics. Under the agreement, Bristol-Myers will pay Millennium $32 million in license fees, annual fees, and for research funding. Additional royalty payments may be made, contingent on Millennium’s meeting certain milestones. Millennium will apply its pharmacogenomics technology and expertise to some of Bristol-Myers’ oncology drugs in development. The partners hope to develop anti-cancer drugs to treat specific patient populations and tumor types.

DIVERSA CORPORATION and TerraGen Discovery Inc. have signed a cross-licensing agreement for patents covering methods for discovering novel biomolecules. TerraGen will obtain a non-exclusive license to use Diversa’s patents for small molecule pharmaceutical applications. TerraGen will also receive fees from Diversa for a co-exclusive license to specific TerraGen patents for all fields of use outside of small molecule pharmaceutical applications. Those patents cover a proprietary discovery system for generating and screening molecular diversity from combinatorial gene expression libraries from mixed populations of organisms.

MYRIAD GENETICS INC. has formed a strategic alliance with Roche. Roche will use Myriad’s ProNet technology to discover drug targets for the treatment of heart disease. Myriad will receive royalties from Roche for the sale of all cardiovascular disease drugs developed under the collaboration. The arrangement is said to be worth up to $13 million.

UCB, a Belgian pharmaceutical firm, was ordered by a US federal court to pay $33 million to Ischemia Research & Education Foundation (San Francisco, CA). The decision ends a five-year dispute over ownership rights to intellectual property related to therapy to prevent heart attacks in surgery patients.

ABBOTT LABORATORIES has a licensing agreement with Wakunaga Pharmaceutical Company Ltd. (Osaka, Japan) to develop and market two compounds, both of which are broad-spectrum quinolone antibiotics in pre-clinical stages for various respiratory and urinary tract infections.

PHARMACIA & UPJOHN has signed a licensing agreement with Nova Nordisk A/S to market Novo’s hormone replacement therapy portfolio in the U.S.

YAMANOUCHI PHARMACEUTICAL COM-PANY (Tokyo, Japan) has settled a patent dispute with Hungary’s Gedeon Richter, the owner of a global patent for forms A and B of famotidine. As part of the settlement, Gedeon Richter has granted an exclusive license for the products to Yamanouchi. Yamanouchi has a patent covering polymorphic forms of famotidine in Japan. The company uses form B of famotidine as an active ingredient in its gastrointestinal agent Gaster.

CELLTECH CHIROSCIENCE PLC has acquired the patent rights in the field of humanized monoclonal antibodies from Protein Design Labs Inc. for $3 million.

NEXELL THERAPEUTICS INC. has two licensing agreements with Diaclone, SA, giving Nexell access to seven monoclonal antibodies for use in ex vivo cell therapy. The first agreement grants Nexell an exclusive license to Diaclone’s CD2 antibody, a common T-cell marker. The second agreement provides the company access to six additional antibodies, including those for purging myeloma cells, a T-cell activation marker, markers for natural killer cells, a monocyte marker and a marker for T-helper cells.

BIOTECH company Morpho-Sys (Germany) has signed a research and license agreement with Bayer A.G. valued "in the several million-dollar range" to generate human therapeutic antibodies against up to 10 targets provided by Bayer.

BRISTOL-MYERS SQUIBB COMPANY and Oxigene Inc. have formed a licensing agreement and research collaboration to develop and commercialize combretastatin anti-tumor vascular targeting agents.

LIGAND PHARMACEUTICALS (San Diego, CA), has sold its rights to receive royalties on two drugs beginning January 2001 to Pharmaceutical Partners, (New York City). The two monoclonal antibody-based drugs are Zenapax, sold by Roche, and Simulect, sold by Novartis. Ligand’s wholly owned subsidiary Seragen has rights to patents that cover the use of antibodies targeting the interleukin-2 receptor to treat transplant rejection and autoimmune diseases. Pharmaceutical Partners has paid Seragen $3.25 million for the royalty rights and may pay an additional $3.25 million, depending on Zenapax sales in 2001 through 2004. Ligand has been working to generate cash in preparation for launching of its new anticancer drug, Targretin.

MERCK CO. has an exclusive license from the South Alabama Medical Science Foundation (SAMSF), Mobile, Ala., for the use of a production patent for naturally occurring reduced folates. The company will initially focus the process for making L-5-methyl-tetrahydrofolate (L-MTHF), one of the most abundant forms of folate in nature. Research indicates that folates may reduce high levels of the protein homocysteine, a possible cause of heart disease. Studies also indicate that folates can prevent neural tube birth defects. Merck will market the folates to the fortified and functional foods industry and the dietary supplement industry. The world wide market for folates is said to be of the order of $15-20 million.

DUPONT’s PROTEIN TECHNOLOGIES subsidiary has formed a venture with General Mills to develop and market soy food products. The agreement gives General Mills access to DuPont’s proprietary soy technology in some food categories. The companies expect U.S. sales of soy foods to top $2.5 billion in 2000.

NOVARTIS SEEDS (a unit of Switzerland’s Novartis), and Monsanto have agreed to settle all pending lawsuits relating to contractual and intellectual property rights for genetically engineered insect-resistant and herbicide-tolerant corn. Under the settlement, Novartis will have a royalty-bearing license under patents held by Monsanto and one of its seed businesses, DeKalb Genetics, and royalty-bearing licenses for glufosinate tolerance in corn. Also, Novartis will make a payment for past sales of one of its engineered corn products.

AMERICAN CYANAMID, subsidiary of American Home Products, has entered into a multiyear agreement with biopharmaceutical company Hyseq (Sunnyvale, CA) to identify genes and develop gene products for agriculture. Cyanamid will pay Hyseq $60 million over three to four years to use its genomics and bioinformatics technology to develop plant-based production of pharmaceuticals; products for use as nutraceuticals, human and animal foods, industrial products, and chemical intermediates; and products for use in crop protection and production. Hyseq will also receive royalty payments for products originating from the project.

ALLIEDSIGNAL SUBSTRATE TECHNO-LOGY & INTERCONNECTS (ASTI) has formed a strategic partnership with Samsung Electro-Mechanics Co. (SEMCO) of Korea to produce advanced ball grid arrays using two-layer flex. The agreement involves licensing of ASTI’s two layer process to Samsung to produce tape ball grid arrays (TBGAs) and internal layers of multilayer ball grid arrays (MLBGAs). It allows AlliedSignal to produce TBGAs in SEMCO’s plant in Korea.

GEMPLUS (Redwood Shores, CA) a smartcard solution provider announced it will license its GemCore technology to 02Micro, a supplier of IC’s to notebook manufacturers. 02Micro is expected to deliver an innovative new CardBus IC, called SmartCard Bus, designed to provide a built-in reader for notebook computers. GemCore technology provides electronic equipment manufacturers with access to a reader operating system, interface chips and engineering support.

USA DIGITAL RADIO INC. has a joint marketing and technology agreement with digital signal processor (DSP) maker Analog Devices Inc. (ADI) to integrate its In-Band On-Channel Digital Audio Broadcast software with ADI’s 32-bit SHARC DSPs. The DSPs will be used in digital AM/FM broadcast and radio receiver products.

ESS TECHNOLOGY INC. (Fremont, CA) has acquired a license from MIPS Technologies for the MIPS324KC synthesizable processor core. ESS Technology Inc. will integrate the core into system-on-a-chip solutions.

INFINEON TECHNOLOGIES NORTH AMERICA CORP. has licensed its Carmel DSP (digital signal processor) programmable core technology to RealChip Inc., a provider of network systems-on-a-chip (SOCs). RealChip’s design focus is on new communications devices and equipment..

ZILOG INC. (Campbell, CA) and Zi Corp. (Calgary, Alberta) entered into an agreement to provide a Chinese language capability for
M@ iLTV, a system designed to deliver e-mail via television. ZiCorp. Has licensed its eZiTEXT intuitive language processing software to Zilog and will adapt it for use with M@ iLTV.

VISHAY INTERTECHNOLOGY INC. has entered into a technology exchange deal with Nichicon Corp., a Japanese tantalum capacitor maker. The companies will confine their research and development efforts to jointly develop tantalum capacitor technology, materials and production equipment to meet the market’s requirements for advanced technology capacitors.

MEETINGS, EXPOSITIONS, SEMINARS

LICENSING 2000

April 26-28, 2000

The Sunburst Resort, Scottsdale, AZ

This is the 9th annual conference directed to the pharmaceutical and biotech industries. The theme is "Business Development Strategies to Improve your Product Pipeline". Contact: Institute for International Research, 708 Third Avenue, 4th Floor, New York, NY 10017-4103. Tel: 888-670-8200; Fax: 941-365-2507:

LICENSING EXECUTIVES SOCIETY (U.S.A. & Canada)

May 10-13, 2000

Marriott Marquis, New York, NY

"Strategic Alliances Through the Next Millennium" is the theme. Topics will cover a wide range of subjects including the role of the internet/e-commerce in licensing, biotechnology, health care, electronics, etc. Contact: LES, 1800 Diagonal Road, Suite 280, Alexandria, VA 22413l Tel: 703-836-3106; Fax: 703-836-3107.


BOOKS AND REPORTS

WORLD LICENSING LAW REPORT

º 396 U.S. $675.00

Published by BNA International

This new monthly journal provides worldwide coverage of the latest developments in the licensing of intellectual property rights; practical analysis of developments in international licensing; obligations and liabilities of licensors and licensees, etc. Contact: BNA International, Heron House, 10 Dean Farrar St., London SW1HODX England.

    

 

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