AMENDMENT TWO TO THE
Exhibit 10.2
AMENDMENT TWO TO THE
EXCLUSIVE LICENSE
(CMCC Agreement #6748)
This second amendment (“Amendment Two”) is made and entered into as of August 29, 2017 (the “Effective Date”) by and between Children’s Medical Center Corporation, a corporation duly organized and existing under the laws of the Commonwealth of Massachusetts and having offices located at 000 Xxxxxxxx Xxxxxx, Xxxxxx, XX (“CMCC”) and InVivo Therapeutics Corporation, a business corporation organized and existing under the laws of the State of Delaware and having its principal office at Xxx Xxxxxxx Xxxxxx, Xxxxx X00000, Xxxxxxxxx, XX 00000 (“Licensee”).
WHEREAS, CMCC and Licensee have entered into that certain Exclusive License Agreement with an effective date of July 2, 2007 and Amendment Number One on May 12, 2011 (collectively the “Agreement”);
WHEREAS CMCC and Licensee wish to amend such Agreement as set forth in this Amendment Two; and
WHEREAS the Agreement otherwise remains unchanged.
In consideration of these premises and of the mutual promises set forth below, the parties agree to amend the Agreement as follows:
Amendment to the Agreement:
1. Appendix 1A shall be deleted in its entirety and replaced with Appendix 1A of this Amendment Two.
2. Appendix 1B shall be deleted in its entirety and replaced with Appendix 1B of this Amendment Two.
3. Licensee has declined to pay the patent annuities and maintenance fees for certain licensed patent applications contained under Patent Rights as identified in Appendix IA of this Amendment Two. CMCC and MIT acknowledge Licensee’s surrender of rights in such patent applications pursuant to Amendment One, Paragraph 6 replacing Article VI Paragraph B of the Agreement, and acknowledge that Licensee has no further obligations with respect to such surrendered patent applications. For the avoidance of doubt, a license to US Patent No. 9,173,732 remains subsisting under the Agreement, the ‘732 patent being the U.S. counterpart of several foreign applications that were surrendered by the Licensee pursuant to the Agreement. Rights in the surrendered patent application in Appendix II shall be governed by Amendment One, Paragraph 6 amending Article VI Patent Prosecution, Paragraph B. of the Agreement.
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4. The parties agree that as of the Effective Date of the Second Amendment, the $100,000 Milestone payment referenced in Article IV(c) of the Agreement is hereby due to CMCC and shall be paid by Licensee to CMCC within thirty (30) days of the Effective Date of the Second Amendment.
5. The parties acknowledge that Licensee has provided to CMCC the Commercialization Plan as defined in Article III, Paragraph B of the Agreement.
6. Upon execution, this Amendment Two shall be made a part of the Agreement and shall be incorporated therein. Except as provided herein, all other terms and conditions of the Agreement shall remain in full force and effect.
7. This Amendment Two may be executed by facsimile or a portable document format (PDF) and in any number of counterparts, each of which shall be deemed to be an original, and all of which together will constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereunto have duly executed this Amendment Two by their respective authorized signatory.
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CHILDREN’S MEDICAL CENTER CORPORATION |
INVIVO THERAPEUTICS CORPORATION |
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By |
/s/ August Xxxxxxx |
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By |
/s/ Xxxx X. Xxxxxx |
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August Xxxxxxx |
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Xxxx X. Xxxxxx |
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VP, Research Administration |
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Chief Executive Officer and Chairman |
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Date |
8/29/17 |
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Date |
August 9, 2017 |
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Appendix 1A: Patent Rights
The following patents and patent applications based on CMCC case 1455 (M.I.T. Case
Number 12084) and CMCC case 1456 (M.I.T. Case 13490Q):
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Country |
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Serial Number |
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Filing Date |
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Status |
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Issue Date |
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U.S. |
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60/794,986 |
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4/25/2006 |
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Expired |
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U.S. |
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11/789,538 |
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4/25/2007 |
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Issued |
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8,377,463 |
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U.S. |
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12/186,346 |
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8/5/2008 |
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Issued |
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9,173,732 |
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U.S. |
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14/496,742 |
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09/25/2014 |
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Issued |
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9,101,695 |
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U.S. |
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14/177,888 |
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02/11/2014 |
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Issued |
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8,858,966 |
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U.S. |
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14/694,466 |
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04/23/2015 |
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Issued |
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9,440,008 |
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U.S. |
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13/741,901 |
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01/15/2013 |
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Issued |
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8,685,434 |
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U.S. |
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15/229,551 |
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08/05/2016 |
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Pending |
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PCT |
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PCT/US08/72226 |
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8/5/2008 |
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Expired |
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Australia |
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2008360388 |
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8/5/2008 |
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Surrendered |
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Brazil |
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XX0000000‑0 |
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8/5/2008 |
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Pending |
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Canada |
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2733252 |
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8/5/2008 |
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Surrendered |
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China |
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200880131305.9 |
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8/5/2008 |
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Surrendered |
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India |
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201648000170 |
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8/5/2008 |
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Pending |
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Japan |
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2009‑507940 |
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8/5/2008 |
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Issued |
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0000000 |
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Xxxxxxxxx |
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201100824‑0 |
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Surrendered |
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Singapore |
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200807854‑5 |
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South Korea |
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10‑2011‑7005148 |
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8/5/2008 |
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Surrendered |
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00/00/00 |
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XXX |
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XX-XXX |
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0/0/0000 |
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Xxxx |
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00/00/00 |
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0
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XXX |
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XXX/XX00/000000 |
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4/25/2007 |
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Expired |
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Australia |
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2007244813 |
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4/25/2007 |
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Issued |
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2007244813 |
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Xxxxxx |
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XX 0000000‑0 |
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10/23/2008 |
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Pending |
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Canada |
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2650804 |
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4/25/2007 |
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Pending |
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China |
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200780022752.6 |
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4/25/2007 |
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Lapsed |
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India |
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5785/CHENP/2008 |
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10/24/2008 |
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Pending |
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Japan |
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2013‑086578 |
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10/23/2008 |
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Issued |
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5746726 |
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EPO |
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7761270.3 |
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4/25/2007 |
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Pending |
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Hong Kong |
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9106081.8 |
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4/25/2007 |
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Pending |
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Korea |
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10‑2015‑7005577 |
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03/03/2015 |
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Pending |
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Japan |
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2015‑095932 |
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05/08/2015 |
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Pending |
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Australia |
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2012227370 |
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09/27/2012 |
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Issued |
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2012227370 |
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Korea |
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10‑2014‑7024979 |
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09/04/2014 |
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Pending |
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Australia |
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2015271864 |
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Pending |
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Korea |
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10‑2008‑7028672 |
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Lapsed |
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Korea |
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10‑2013‑7032762 |
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Lapsed |
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Japan |
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2011‑522037 |
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Surrendered |
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Korea |
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2016‑7004639 |
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Pending |
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Canada |
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2936333 |
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Pending |
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Korea |
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20167024587 |
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Pending |
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Appendix 1B: Additional Patent Rights
I. United States Patents and Applications
CMCC Case No. 23 (M.I.T. Case No. 4973) (Expired)
United States of America Patent No. 5804178, Issued September 8, 1998
“IMPLANTATION OF CELL-MATRIX STRUCTURE ADJACENT MESENTERY, OMENTUM OR PERITONEUM TISSUE”
by Xxxxx X. Xxxxxxxx, Xxxx Xxxxxxx, Xxxxxx X. Xxxxxx and Xxxxxx X. Xxxxxxx
CMCC Case No. 25 (M.I.T. Case No. 5573) (Expired)
United States of America Patent No. 5514378, Issued May 7, 1996
“BIOCOMPATIBLE POLYMER MEMBRANES AND METHODS OF PREPARATION OF THREE DIMENSIONAL MEMBRANE STRUCTURES”
by Xxxxx X. Xxxxxxxx, Xxxxxx X. Xxxxxx, Xxxxxxxx X. Xxxxx, Xxxxxxxx Xxxxxxxxx and Xxxxxx X. Xxxxxxx
CMCC Case Nos. 20 and 30 (M.I.T. Case No. 4279) (Expired)
United States of America Patent No. 5759830, Issued June 2, 0000
Xxxxxx Xxxxxx xx Xxxxxxx Patent No. 5770417, Issued June 23, 1998
“THREE-DIMENSIONAL FIBROUS SCAFFOLD CONTAINING ATTACHED CELLS FOR PRODUCING VASCULARIZED TISSUE IN VIVO”
by Xxxxxx X. Xxxxxx and Xxxxxx X. Xxxxxxx
United States of America Patent No. 5770193, Issued June 23, 1998
“PREPARATION OF THREE-DIMENSIONAL FIBROUS SCAFFOLD CONTAINING ATTACHED CELLS FOR PRODUCING VASCULARIZED TISSUE IN VIVO”
by Xxxxxx X. Xxxxxx and Xxxxxx X. Xxxxxxx
CMCC Case No. 26 (M.I.T. Case No. 5729)
United States of America Patent No. 6309635, Issued October 30, 2011 (Expires December 30, 2018)
“PREVASCULARIZED POLYMERIC IMPLANTS FOR ORGAN TRANSPLANTATION”
by Xxxxx X. Xxxxxxx, Xxxxxx X. Xxxxxx, Xxxxxx X. Xxxxxx, Xxxxx X. Xxxxx and Xxxxxx X. Xxxxxxx
CMCC Case No. 389 (M.I.T. Case No. 6560) (Expired)
United States of America Patent No. 7462471, Issued December 9, 2008
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“POROUS BIODEGRADABLE POLYMERIC MATERIALS FOR CELL TRANSPLANTATION”
by Xxxxx X. Xxxxxxxx, Xxxxxx X. Xxxxxx, Xxxxxxxx X. Xxxxx, Xxxxxxxx Xxxxxxxxx and Xxxxxx X. Xxxxxxx
CMCC Case No. 415 (M.I.T. Case No. 6798)
United States of America Patent No. 6281015, Issued August 28, 2001 (Expires August 28, 2018)
“LOCALIZED DELIVERY OF FACTORS ENHANCING SURVIVAL OF TRANSPLANTED CELLS”
by Xxxxxx X. Xxxxxx, Xxxxx X. Xxxxxx and Xxxxxx X. Xxxxxxx
CMCC Case No. 505 (M.I.T. Case No. 7138) (Expired)
United States of America Patent No. 6095148, Issued August 1, 2000
“NEURONAL STIMULATION USING ELECTRICALLY CONDUCTING POLYMERS”
by Xxxxxx X. Xxxxxx, Xxxxxxxxx X. Xxxxxxx, Xxxxxxxxx X. Xxxxxxx and Xxxxxx X. Xxxxxxx
M.I.T. Case No. 6984 (Expired)
United States of America Patent No. 5654381, Issued August 5, 1997
“FUNCTIONALIZED POLYESTER GRAFT COPOLYMERS”
by Xxxxxxx X. Xxxxxx, Xxxxxx X. Xxxxxx and Xxxx Xxxxx
M.I.T. Case No. 13525 (CMCC Case No. 26) (Expired)
United States of America Patent No. 6689608, Issued February 10, 0000
Xxxxxx Xxxxxx xx Xxxxxxx Serial No. 12/218448, Filed July 15, 2008
“POROUS BIODEGRADABLE POLYMERIC MATERIALS FOR CELL TRANSPLANTATION”
by Xxxxx X. Xxxxxxxx, Xxxxxx X. Xxxxxx, Xxxxxxxx X. Xxxxx, Xxxxxxxx Xxxxxxxxx and Xxxxxx X. Xxxxxxx
XX. International (non-U.S.) Patents and Applications
CMCC Case No. 26 (M.I.T. Case No. 5729) (Expired)
European Patent Convention Patent No. 0610423, Issued May 7, 0000
Xxxxx Patent No. 0000000, Issued February 20, 0000
Xxxxxxx Patent No. 0610423, Issued May 7, 0000
Xxxxxxx Patent No. 0610423, Issued May 7, 0000
Xxxxxx Patent No. 0610423, Issued May 7, 0000
Xxxxxxx Patent No. 69219613, Issued May 7, 0000
Xxxxx Patent No. 0610423, Issued May 7, 1997
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Luxembourg Patent No. 0610423, Issued May 7, 0000
Xxxxxxxxxxx Patent No. 0610423, Issued May 7, 0000
Xxxxxx Patent Xx. 0000000, Xxxxxx Xxx 0, 0000
Xxxxxx Xxxxxxx Patent No. 0610423, Issued May 7, 1997
“PREVASCULARIZED POLYMERIC IMPLANTS FOR ORGAN TRANSPLANTATION”
by Xxxxx X. Xxxxxxx, Xxxxxx X. Xxxxxx, Xxxxxx X. Xxxxxx, Xxxxx X. Xxxxx and Xxxxxx X. Xxxxxxx
CMCC Case No. 30 (M.I.T. Case No. 4279) (Expired)
Canada Patent No. 1340581, Issued June 8, 1999
“CHIMERIC NEOMORPHOGENESIS OF ORGANS BY CONTROLLED CELLULAR IMPLANTATION USING ARTIFICIAL MATRICES”
by Xxxxxx X. Xxxxxx and Xxxxxx X. Xxxxxxx
CMCC Case No. 415 (M.I.T. Case No. 6798) (Expired)
European Patent Convention Patent No. 0794790, Issued April 17, 0000
Xxxxx Patent No. 0000000, Issued August 21, 2009
Canada Patent No. 2207286, Issued October 7, 2003
Ireland Patent No. 0794790, Issued April 17, 0000
Xxxxxxx Patent No. 0794790, Issued April 17, 0000
Xxxxxxxxxxx Patent No. 0794790, Issued April 17, 0000
Xxxxxxx Patent No. 0794790, Issued April 17, 0000
Xxxxxxx Patent No. 0794790, Issued April 17, 0000
Xxxxx Patent No. 0794790, Issued April 17, 0000
Xxxxxx Patent No. 0794790, Issued April 17, 0000
Xxxxxxx Patent No. 0794790, Issued April 17, 0000
Xxxxxx Patent No. 3039884, Issued April 17, 0000
Xxxxxx Patent No. 0794790, Issued April 17, 0000
Xxxxx Patent No. 0794790, Issued April 17, 0000
Xxxxxxxxxx Patent No. 0794790, Issued April 17, 2002
Monaco Patent No. 0794790, Issued April 17, 0000
Xxxxxxxxxxx Patent No. 0794790, Issued April 17, 2002
Portugal Patent Xx. 0000000, Xxxxxx Xxxxx 00, 0000
Xxxxxx Xxxxxxx Patent No. 0794790, Issued April 17, 2002
“LOCALIZED DELIVERY OF FACTORS ENHANCING SURVIVAL OF TRANSPLANTED CELLS”
by Xxxxxx X. Xxxxxx, Xxxxx X. Xxxxxx and Xxxxxx X. Xxxxxxx
CMCC Case No. 505 (M.I.T. Case No. 7138) (Expired)
New Zealand Patent No. 321886, Issued June 8, 0000
Xxxxx Patent No. 0000000, Issued February 5, 2010
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South Korea Serial No. 98‑703320, Filed October 31, 0000
Xxxxxxxxx Patent No. 720275, Issued September 11, 0000
Xxxxxx Serial No. 2236749, Filed October 31, 0000
Xxxxx Serial No. 2008‑287194, Filed October 31, 0000
Xxxxx Serial No. 2009‑244981, Filed October 31, 1996
“NEURONAL STIMULATION USING ELECTRICALLY CONDUCTING POLYMERS”
by Xxxxxx X. Xxxxxx, Xxxxxxxxx X. Xxxxxxx, Xxxxxxxxx X. Xxxxxxx and Xxxxxx X. Xxxxxxx
8
