This article has been updated from a version posted Jan. 26 to include comment from Life Technologies.
Idaho Technology said today that it has signed a broad cross-licensing agreement with Life Technologies' Applied Biosystems business that covers a range of PCR technologies, including the rights to the TaqMan and SYBR Green chemistries.
Idaho licensed from Applied Biosystems the right to use the TaqMan 5' nuclease process, while ABI licensed from Idaho the right to use SYBR Green in PCR. The agreement, which also encompasses software, hardware, and other reagents, applies to research applications only.
The deal should help untangle the licensing thicket that surrounds some of the key reagents used in PCR.
"It's a very complicated licensing landscape," Jill Powlick, legal counsel for Idaho Technology, told PCR Insider.
In the case of SYBR Green, for example, Invitrogen's Molecular Probes business — now part of Life Technologies — held the original intellectual property for the use of the dye in staining gels, but Idaho Technology had patented the use of SYBR Green for PCR.
"So for anybody to use SYBR green kits, you have to get the rights from Invitrogen to re-kit SYBR Green, you have to get the rights from ABI for PCR using any double-stranded DNA-binding dye, and you have to get the rights from Idaho to use it in PCR," Powlick said.
Under the terms of the cross-licensing agreement, Applied Biosystems is "now fully licensed on their SYBR Green kits and Idaho is now fully licensed to use the TaqMan chemistries," she said.
In a statement, John Gerace, vice president and general manager of PCR Systems at Life Technologies, said that the cross-licensing agreement is an example of how the company's licensing team "is monetizing our current intellectual property portfolio and in-licensing intellectual property that continues to strengthen our broad PCR patent portfolio, extending these assets well into the future."
Further details of the licensing agreement are confidential.
"This was a license that took many years to complete," Powlick said. "We're happy that both Idaho and ABI now have the freedom to operate that both companies needed."
One factor that helped pave the way for the agreement was an Idaho Technology patent that was allowed last September "that made it such that ABI and Idaho could agree on the scope of the portfolio," Powlick said without elaborating.
She said that the companies are also "contemplating" future IP agreements for technologies not covered by the scope of the current deal.