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Benitec Inks Another IP Deal as Dispute with Promega Continues

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Benitec announced this week that it has signed a deal granting worldwide, non-exclusive rights to its expressed RNAi technology to Genoway for use in developing transgenic animals.

"This license will strengthen our product offerings by guaranteeing our customers complete freedom to operate for the use of our transgenic animals on a world-wide basis and with no follow-on right or claim on the results," Alexandre Fraichard, CEO of Genoway, said in a statement.

Under the deal, Benitec received an upfront fee and will be paid royalties. Specific terms were not disclosed.

The agreement with Genoway is the latest in a series of licensing deals Benitec has stuck since it launched into a dispute with one-time partner Promega over which the company has the right to license the RNAi technology in areas outside human therapeutics.

In April 2003, Benitec signed a deal that gave Promega the exclusive rights to develop, sell, and distribute ddRNAi-based research products, as well as the exclusive right to sublicense the technology in areas outside of human therapeutics. While touted by Benitec's then-CEO John McKinley as key to Benitec's entrée to the US market from Australia, the Promega partnership began to fall apart about a year later. In July 2004, Benitec sued Promega for allegedly failing to make payments required under the deal and had therefore forfeited its exclusive license for a non-exclusive one (see RNAi News, 7/30/2004).

Promega has long maintained that its exclusive license is still in effect, and filed a countersuit asking that a preliminary injunction be granted to uphold this exclusive status at least until the legal dispute is resolved. The court recently rejected this request, citing Promega's failure to demonstrate that it is likely to prevail in the dispute, as well as its failure to show that not granting the injunction would result in irreparable harm to the company and have an unfavorable impact on the public interest (see RNAi News, 3/18/2005).

Sara Cunningham, CEO of Benitec, told RNAi News this week that while the company was pleased with the court's rejection of the injunction request, Benitec had not been waiting for the ruling to move ahead with the Genoway deal. "We have taken the stance that we took from the very beginning: With the failure to pay that minimum royalty, the contract [with Promega] reverted to [a] non-exclusive [one]," she said.

Eric Gogitiabois, a marketing manager at Genoway, told RNAi News this week that his company was aware of the dispute with Promega before it took the license from Benitec. He added that Genoway never entered licensing discussions with Promega at any time.

"We have all the guarantees that [Benitec is] the owner and that they are the right people to buy the license" from, he said. "We feel quite comfortable. We did take some information [about the dispute] and we were aware of that, but we believe [Benitec] was the right company to make the deal with."

Undoubtedly, Benitec feels the same way. According to Cunningham, the company is proceeding with efforts to secure additional licensing deals. And yet, she stressed that Benitec is only looking for licensees in areas outside of the research reagent market and therefore Promega's area of interest — except in cases where such a deal would resolve a legal dispute, such as with Ambion and GenScript (see RNAi News, 8/13/2004 and 9/3/2004).

Cunningham noted that the Genoway deal is "not a research reagent [one] — it's for transgenic animals, so it's outside [Promega's] core focus."

Though she declined to specify whether the avoidance of the licensing opportunities in the reagent field was part of a deliberate effort to smooth relations with Promega, this nevertheless appears to be the case. Cunningham said that while Benitec will continue to pursue licensing opportunities, it will be within a "therapeutics and … pharma/biotech research context, not research reagents. We are not chasing down those leads at all," she stressed.

Cunningham also declined to comment on whether Benitec is involved in negotiations to resolve its dispute with Promega out of court, but said that "we are seeking resolution with Promega."

"Overall, we would prefer not to comment on any ongoing contract dispute or litigation," Cunningham said. "I don't want to incite Promega."

Officials from Promega could not be reached for comment.

— DM

 

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