Patent Purchase Information of Seller

Seller submits the following information as of November 19, 2013.

1. Contact Information. / Name of company/assignee / BIONOVO, INC
Name of seller
(if different) / IP Shakti, LLC
Key contact person / Jessica Morton
Is this the person most knowledgeable about the IP being sold? Yes
Address / 212 Carnegie Center Dr.
Suite 202
Princeton, NJ 08540
Phone / (609)759-1101
Fax
Email /
2. The IP being sold includes (check all that apply). / Patents, comprising:
Issued U.S. patents: 4
Pending U.S. patents: 13
Provisional U.S. patents.
Pending/issued foreign patents: 6
Copyrights
Trade Secrets/Know-how
Trademarks
3. Provide a brief description of the IP being sold. / Patents and patent applications directed to compositions and methods for the treatment of menopause, including Menerba®.
4. Desired price (OK to provide range).
5. Why are these IP assets being sold? / BIONOVO, LLC is currently the subject of a bankruptcy proceeding. The patents and patent applications are being sold as part of the bankruptcy proceeding.
6. Patent Related Information (the “Patents”).
Item / Description of Invention / Title / Status / If Issued,
Patent Number
(If Pending or Provisional, Serial Number) / Published or
Unpublished / Are Fees Current and Paid? / Foreign Patents Pending or Issued – Countries/
Numbers / Seller’s Comments
6.a. / Composition for treatment of menopause / Issued, Expired / 7482029 / Published / Yes / Related to US Provisional 60/667,887 and 11/277,811
6.b. / Composition for treatment of menopause / Issued / 8110228 / Published / Yes / Division of 11/277,811 and claims priority from 60/677,887
6.c. / LIQUIRITIGENIN AND DERIVATIVES AS SELECTIVE ESTROGEN RECEPTOR BETA AGONISTS / (abandoned 10/9/12) / 11/767,380 / Publication Date - 12-25-2008 / Revivable 10/9/14
6.d. / Liquiritigenin and Derivatives as Selective Estrogen Receptor Beta Agonists / (abandoned 4/6/12) / 12/142,670 / Publication Date - 02-12-2009 / Revivable 4/6/14
6.e. / METHOD OF QUANTIFICATION OF MULTIPLE BIOACTIVES FROM BOTANICAL COMPOSITIONS / (abandoned 12/27/12) / 12/479,630 / Publication Date - 12-17-2009 / Revivable 12/27/14
6.f / The approach head, and that device and the method of having the vacuum pipe system which inclines / Expired / Published / JP 2010-524204
6.g / ESTROGENIC EXTRACTS OF Astragalus membranaceus Fisch. Bge. Var. mongolicus Bge. of the Leguminosae Family AND USES THEREOF / Pending / 12/686,864 / Publication Date - 07-08-2010
6.h / Composition for treatment of menopause / CA 2,599,863 / Revivable by 3/30/14
6.i / COMPOSITION FOR TREATMENT OF MENOPAUSE / HK 08107231.6
6.j / Sulfonate functional polyvinyl acetals / JP 2008-504416
6.k / Composition for treatment of menopause / TW 095110861
6.l / COMPOSITION FOR TREATMENT OF MENOPAUSE / Abandoned 8/26/12 / 13/305453 / Publication Date - 05-03-2012 / revivable 8/26/14
6.m / Estrogenic extracts of Morus alba and uses thereof / Issued / 7,815,949 / Published / Window Open 10/19/2013, Surcharge Date 4/22/2014, Window Close 10/20/2014. TOTAL DUE: $800
6.n / Estrogenic extracts of Ligustrum lucidum ait. of the oleaceae family and uses thereof / Issued / 8092841 / Published / Yes
6.o / ESTROGENIC EXTRACTS FOR USE IN TREATING VAGINAL AND VULVAR ATROPHY / (abandoned 5/28/13) / 12/436,020 / Publication Date – 12/10/2009 / revivable 5/28/13
6.p / ESTROGENIC EXTRACTS OF Ligustrum lucidum Ait. of the Oleaceae Family AND USES THEREOF / (abandoned 11/8/12) / 13/323,507 / Publication Date - 05-10-2012 / revivable 11/8/14
6.q / Method of using extracts of epimedium species / CA 2588180
6.r / METHOD OF USING EXTRACTS OF EPIMEDIUM SPECIES / HK 08102313.8
6.s / Method of using extracts of epimedium species / Pending / 11/298,957 / Publication Date – 6/22/06 / (reply due 12/24/13)
6.t / ESTROGENIC EXTRACTS OF Pueraria lobata Willd. Ohwi of the Leguminosae Family AND USES THEREOF / Pending / 12/205,723 / Publication Date – 3/12/09
6.u / ESTROGENIC EXTRACTS OF Rheum palmatum L of the Polygonaceae family AND USES THEREOF / Pending / 12/205,731 / Publication Date – 3/12/09
6.v / ESTROGENIC EXTRACTS OF Asparagus conchinchinensis (Lour.) Merr of the Liliaceae Family AND USES THEREOF / Pending / 12/205,661 / Publication Date – 3/12/09
6.w. / ESTROGENIC EXTRACTS OF Scuttelaria barbata D. Don of the Labiatae Family AND USES THEREOF / Pending / 12/205,710 / Published
6.x. / Anthraquinones and Analogs from Rhuem palmatum for Treatment of Estrogen Receptor Beta-Mediated Conditions / Abandoned 12/3/12 / 12/479,607 / Published / Revivable by 12/3/14
6.y. / ESTROGENIC COMPOUNDS AND THEIR METHODS OF USE / Abandoned 12/14/12 / 12/712,980 / Published / Revivable by 12/14/14
  1. Will the assignee(s) or seller of the Patents retain rights to any other patents not being sold?
/ No.
  1. Have any licenses or encumbrances of any kind or nature been granted under the Patents?
(Note: this includes any CNTS (covenant not to sue) which is granted to other third parties. For all licenses, please identify:
  1. Any that are exclusive licenses.
  2. Any that provide the licensee with the right to past, present, or future infringement.
  3. Any field of use limitations.
  4. Royalty or other license payments associated with the licenses.
  5. Limitations or requirements for license, transfer or assignment.)
/ No.
  1. Have any federal, state or local government agencies, assistance groups, standards bodies, universities or other non-profit institutions (“Institutions”) in any way been involved with the Patents?
(Note: Institutions to be described include any institutions with which your company or individuals at your company have engaged in any research and development or other technology sharing activities of any kind over the last 10 years.) / No.
  1. Are there any technical standards or other technology-related consortiums or other organizations (“Special Interest Groups”) that your company or individuals at your company have in any way been associated with over the last 10 years?
/ No.
  1. Are there any existing or potential secured or unsecured claims of ownership or potential claims of ownership on the Patents by third party creditors or lien-holders?
/ No.
  1. Are there any existing or potential claims by any third party (other than those listed above in Question 11) or any patent office that your company or individuals at your company have reason to believe a third party could make regarding the Patents, including without limitation any ownership, licensing, infringement, validity and enforcement or other issues.
/ No.
  1. Are you aware of any known usage or suspected usage of or infringement of the Patents by any third party?
/ Yes. The website is selling herbal supplements for menopause with active ingredients covered by at least one of the patents.
  1. Is there any other information, including any studies, reports or opinions, including prior art searches, that may relate to the ownership, validity, enforceability, infringement or value of any of the Patents?
/ No.
  1. Have any of the Patents been the subject of any litigation?
/ No.
  1. Describe the likely process to sell the Patents, including timeframe.

  1. Describe the due diligence materials currently available or which could be made available, and the process to view said materials.

  1. Identify all parties or entities that must approve or could otherwise attempt to prevent the sale of the Patents, including but not limited to creditors, investors, trustees, Board of Directors, and company management.
/ Bankruptcy Trustees; contact: Michael G. Kasolas, CPA
United States Bankruptcy Trustee
P.O. Box 26650
San Francisco, CA 94126
Phone: (415) 504-1926
E-mail:

Please note that for all pending and provisional patents, we will need to obtain:

  • Patent applications (Note: if pending applications are not published at US PTO, please describe how you will provide necessary information for evaluation)
  • PTO (or other patent agency) office actions and seller responses to the office action
  • Amendments filed to the original application

Patent Rights To Be Assigned to Buyer

Patent or App. No.& Publ. No. / Country / Issue Date or Filing Date / Title and Inventor(s)
7,482,029 / U.S. / 3/29/2006 / Composition for treatment of menopause , Isaac Cohen
8,110,228 / U.S. / 10/28/2008 / Composition for treatment of menopause , Isaac Cohen
11/767,380 / U.S. / 6/22/2007 / LIQUIRITIGENIN AND DERIVATIVES AS SELECTIVE ESTROGEN RECEPTOR BETA AGONISTS , Isaac Cohen
12/142,670 / U.S. / 6/19/2008 / Liquiritigenin and Derivatives as Selective Estrogen Receptor Beta Agonists , Isaac Cohen
12/479,630 / U.S. / 6/5/2009 / METHOD OF QUANTIFICATION OF MULTIPLE BIOACTIVES FROM BOTANICAL COMPOSITIONS , Isaac Cohen
JP 2010-524204 / Japan / 2/22/2008 / The approach head, and that device and the method of having the vacuum pipe system which inclines
12/686,864 / U.S. / 1/13/2010 / ESTROGENIC EXTRACTS OF Astragalus membranaceus Fisch. Bge. Var. mongolicus Bge. of the Leguminosae Family AND USES THEREOF , Isaac Cohen
CA 2,599,863 / Canada / 3/30/2006 / Composition for treatment of menopause
HK 08107231.6 / Hong Kong / 3/30/2006 / COMPOSITION FOR TREATMENT OF MENOPAUSE
JP 2008-504416 / Japan / 6/23/2005 / Sulfonate functional polyvinyl acetals
TW 095110861 / Taiwanese / 3/29/2006 / Composition for treatment of menopause
13/305453 / U.S. / 11/28/2011 / COMPOSITION FOR TREATMENT OF MENOPAUSE , Isaac Cohen
7,815,949 / U.S. / 12/9/2005 / Estrogenic extracts of Morus alba and uses thereof, Isaac Cohen
8,092,841 / U.S. / 8/8/2008 / Estrogenic extracts of Ligustrum lucidum ait. of the oleaceae family and uses thereof, Isaac Cohen
13/323,507 / U.S. / 12/12/2011 / ESTROGENIC EXTRACTS OF Ligustrum lucidum Ait. of the Oleaceae Family AND USES THEREOF, Isaac Cohen
CA 2588180 / Canada / 12/9/2005 / Method of using extracts of epimedium species
HK 08102313.8 / Hong Kong / 12/9/2005 / METHOD OF USING EXTRACTS OF EPIMEDIUM SPECIES
11/298,957 / U.S. / 12/9/2005 / Method of using extracts of epimedium species , Isaac Cohen
12/205,723 / U.S. / 9/5/2008 / ESTROGENIC EXTRACTS OF Pueraria lobata Willd. Ohwi of the Leguminosae Family AND USES THEREOF, Isaac Cohen
12/205,731 / U.S. / 9/5/2008 / ESTROGENIC EXTRACTS OF Rheum palmatum L of the Polygonaceae family AND USES THEREOF, Isaac Cohen
12/205,661 / U.S. / 9/5/2008 / ESTROGENIC EXTRACTS OF Asparagus conchinchinensis (Lour.) Merr of the Liliaceae Family AND USES THEREOF, Isaac Cohen
12/205,710 / U.S. / 9/5/2008 / ESTROGENIC EXTRACTS OF Scuttelaria barbata D. Don of the Labiatae Family AND USES THEREOF
12/479,607 / U.S. / 6/5/2009 / Anthraquinones and Analogs from Rhuem palmatum for Treatment of Estrogen Receptor Beta-Mediated Conditions
12/712,980 / U.S. / 2/25/2010 / ESTROGENIC COMPOUNDS AND THEIR METHODS OF USE

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