It was mid-September when Sirna announced that it had picked up from UMass the exclusive rights to the so-called “Tuschl-1” patent application (which covers the use of short interfering RNAs, 21 to 23 nucleotides in length, to induce RNAi in mammalian cells) after agreeing to the university’s demand that it widely sell sublicenses to the IP, an apparent sticking point in earlier negotiations with other interested companies.
Prior to this deal, Alnylam was the only other company with access to the Tuschl-1 IP, having exclusively licensed it from its three other owners: the Max-Planck Institute, the Whitehead Institute, and MIT. Alnylam also took an exclusive license to the Tuschl-2 patent application, which describes the two-to-three nucleotide 3’ overhanging ends on certain siRNAs, from its sole owner, the Max Planck Institute.
When Alnylam announced in February that it had acquired the rights to these patent applications, it made no mention of any intention to sublicense.
The company stressed that it had the “strongest intellectual property estate in the burgeoning field of RNA interference” and it appeared to many that Alnylam had little intention of releasing its stranglehold on the technology.
This may very well have been the case; it wasn’t until Sirna said that it would be outlicensing the Tuschl-1 IP that Alnylam CEO John Maraganore stated publicly that his company intended to do the same. On the day the Sirna deal was announced, Maraganore told RNAi News that Alnylam had long-intended to sublicense the IP in areas outside of its focus.
Regardless of how it happened, the two companies with the rights to one of the most important pieces of IP in the field of RNAi have stated they are taking offers on sublicenses.
While Sirna has gotten right into it, Alnylam is taking its time.
Barbara Yates, an independent public relations consultant for Alnylam, says the company has yet to grant any sublicenses to the Tuschl IP it controls and she declines to comment on whether deals are in the works. “If that were the case, we wouldn’t want to tip our hand to a competitor,” she says.
But less than three weeks after receiving its exclusive rights to UMass’ shares of the seminal Tuschl IP, Sirna was already entertaining offers. The company expects to have at least one deal signed by the end of the year, according to Bharat Chowrira, vice president of legal affairs and patent counsel at Sirna.
Chowrira says that interest in sublicenses has been “quite significant,” especially from companies interested in developing RNAi for therapeutic applications. As a result (and in line with UMass’ desire to see the technology in the hands of as many researchers as possible), Sirna will sell nonexclusive access to the technology to anyone willing to pay a “commercially reasonable” fee.
That fee, Chowrira says, would depend on the extent of the rights being sought: “Depending on whether they want nonexclusive, across the board [rights] on all fields, or nonexclusive [rights] in certain therapeutic areas, we have structured the deal terms accordingly.”
He also says that this fee for licensing the IP in a particular field would be the same for all licensees: “We certainly don’t want to treat different partners differently.”
He notes, however, that Sirna understands that some smaller companies and research institutions might not have the wherewithal to pay the fee up front. So the company is willing to negotiate on the structure of the payment arrangement, he says.
Chowrira declines to specify exactly how much Sirna plans to charge for various sublicenses to the IP, but says that the company will work with UMass to determine what is “commercially reasonable.”
An expanded version of this article first appeared in the October 3, 2003, edition of RNAi News.