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Court Rules Against University of Utah in RNAi IP Inventor Dispute

NEW YORK (GenomeWeb) – A US District Court this week ruled in favor of the Max Planck Society and several other defendants in a lawsuit filed over the inventorship of some of the RNAi field's most fundamental patents. The ruling marks a major setback for the University of Utah, which filed the suit in order to have one of its researchers listed as an inventor of the intellectual property.

In 2011, U of Utah sued Max Planck, Alnylam Pharmaceuticals, the Whitehead Institute for Biomedical Research, the Massachusetts Institute of Technology, and the University of Massachusetts for allegedly failing to name Brenda Bass as a co-inventor of seminal RNAi IP, known as the Tuschl-II patent family, that was awarded to researchers from the institutes.

The IP essentially covers siRNAs, 21 to 23 nucleotides in length and with 2- to 3-nucleotide-long 3' overhangs, to target specific mRNA degradation in mammals, and is named for co-inventor and former Max Planck researcher Thomas Tuschl. Alnylam holds the exclusive rights to the IP.

According to the suit, Bass "conceived the inventions of all the issued claims of Tuschl-II and at least some pending claims of [a related IP estate] well before any date asserted by the currently named inventors." She further "reduced her inventions to practice well before any date asserted" by the inventors of the two IP estates, Utah claimed.

In granting the defendants' motion for summary judgment on the lawsuit, the court stated that U of Utah had failed to demonstrate that Bass had collaborated with Tuschl and other of the IP's inventors — a "major requirement for establishing joint inventorship."

As such, the court allowed the defendants' motions for summary judgment in their favor. The University of Utah, however, may appeal the ruling.

Officials from the university were not available for comment as of press time.

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