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Benitec Settles Promega Suit, Regains Licensing Rights

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Benitec and Promega announced this summer that they had settled their year-old legal dispute over the licensing rights to Benitec’s expressed RNAi technology.

By settling their fight, which began last year when Benitec sued Promega for allegedly violating the companies’ licensing arrangement, Benitec has taken a big step toward its goal of overhauling its image as a company more focused on filing lawsuits than developing RNAi-based therapeutics.

The company has also managed to regain the sublicensing rights to its technology, which it handed over to Promega as part of the original licensing arrangement at the heart of the conflict.

“We are happy that the issues between Benitec and Promega have finally been resolved and that all parties will be able to concentrate their efforts on business rather than litigation,” says Benitec CEO Sara Cunningham.

Under the terms of the settlement, Promega will have a non-exclusive worldwide license to make and sell research products incorporating the ddRNAi technology. Benitec, meanwhile, has regained from Promega all ddRNAi-related sublicensing rights.

Promega will also receive an undisclosed cash payment from Benitec, as well as royalties on certain sublicenses.

The settlement completely resolves all claims and counterclaims issued by Benitec and Promega, including ones against Ambion, which had been sued by Promega for signing its licensing deal with Benitec. It also resolves any claims against Australia’s Commonwealth Scientific and Industrial Research Organization, which owns the commercial rights to the ddRNAi technology in all non-human areas but was never actually named as a defendant in the litigation.

According to a representative from Promega’s legal department, the settlement with Benitec was an outgrowth of court-ordered mediation held in June.

The legal dispute began in April 2003 when Benitec gave Promega exclusive rights to use and sublicense the expressed RNAi technology — termed DNA-directed RNAi — in non-therapeutic human fields.

— Doug Macron

 

Takara Bio, a Japanese drug maker, announced that it discovered seven new RNAi enzymes by screening various bacteria. These enzymes can identify and cleave specific sequences of single-stranded RNAs, according to the company, and are expected to have use in HIV gene therapy, RNA engineering reagents, and more.

 

Natural Selection, which has developed an algorithm to detect microRNAs, won a two-year, $406,000 Phase II SBIR grant from the National Science Foundation to further develop its detection and analysis software. The NSF will also provide up to $250,000 in matching funds if third parties invest in the technology.

 

Alnylam Pharmaceuticals received a grant of an undisclosed amount from the Michael J. Fox Foundation for Parkinson’s Research. The grant was awarded to Alnylam’s David Bumcrot for a research project exploring the possibility of using siRNAs to target alpha-synuclein.

 

Asked by Nucleonics to re-examine two RNAi patents held by Benitec, the Australian Patent Office announced that it had reviewed and upheld the Benitec patents. Nucleonics was one of the companies against which Benitec filed a patent infringement suit in March 2004.

 

Dutch biotech TNO and Japan’s Mitsubishi Pharma have formed a technology development collaboration for siRNA-based target validation studies of disease targets from Mitsubishi.

 

PATENT WATCH

US Patent 6,933,146. Methods and means for producing efficient silencing construct using recombinational cloning. Inventors: Christopher Helliwell, Susan Wesley, Peter Waterhouse. Assignee: Commonwealth Scientific and Industrial Research Corporation. Issued: August 23, 2005.

This patent covers methods, vectors, and kits “for producing chimeric nucleic acid constructs capable of producing dsRNA for silencing target nucleic acid sequences of interest using recombinational cloning.”

 

US Patent 6,924,109. High-throughput transcriptome and functional validation analysis. Inventors: Thorsten Melcher, Keith Charles McFarland, Li Gan, Shiming Ye, Mirella Gonzalez-Zulueta. Assignee: AGY Therapeutics. Issued: August 2, 2005.

This patent covers “methods for correlating genes and gene function,” according to the abstract. “Such methods generally involve selecting a candidate gene that appears to be correlated with a particular cellular state or activity and then validating the role of the candidate gene in establishment of such a cellular state or activity. Certain methods utilize RNA interference techniques in the validation process.”

 

Datapoint

$700 million

Estimated potential value of an RNAi deal between Alnylam Pharmaceuticals and Novartis Pharmaceuticals. In the three-year partnership, Novartis will take a 19.9 percent stake in the biotech and pay millions in upfront fees for the discovery and development work.

 

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