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In Ongoing Tuschl IP Row, USPTO OKs Planck’s Request to Pull Power of Attorney from Whitehead


By Doug Macron

Although Alnylam Pharmaceuticals and the Max Planck Institute suffered a setback earlier this month in their lawsuit over rights to certain RNAi-related intellectual property, the two scored a victory last week when one of their gambits to stymie the prosecution of disputed patent applications succeeded.

In their suit, they allege that the University of Massachusetts, the Massachusetts Institute of Technology, and the Whitehead Institute for Biomedical Research have been inappropriately trying to incorporate certain RNAi inventions from the Tuschl-II patent estate into Tuschl-I patent applications.

In an effort to prevent the issuance of any Tuschl-I patents containing the disputed inventions, Max Planck asked the US Patent and Trademark Office to revoke the power of attorney it gave Whitehead for each patent application from that family, according to court documents. Whitehead has had this power since 2001.

If granted by the USPTO, Max Planck’s petition would allow it to “unilaterally … stop the ongoing prosecution of the jointly owned applications,” UMass last month told the US District Court hearing the case.

Now, it seems, the USPTO has done just that after deciding that it should not become an arbiter in the controversy.

According to a letter Alnylam and Max Planck’s attorneys filed with the court, “Max Planck filed petitions with the [USPTO] seeking permission to revoke each power of attorney that it had executed in favor of [Whitehead’s chosen law firm] to allow that firm to represent Max Planck’s interests in the prosecution of each of the [US] Tuschl-I patent applications pending.

“Max Planck learned … that the USPTO has granted each of these petitions,” the letter noted.

The litigation began in June when Alnylam and Max Planck sued UMass, MIT, and Whitehead for allegedly incorporating various features of the Tuschl-II IP, namely the use of 3’ overhangs on siRNAs, into Tuschl-I patent applications (see RNAi News, 7/9/2009).

Alnylam holds the exclusive rights to the Tuschl-II estate through a license from the IP's sole owner, Max Planck. However, the company shares therapeutic rights to the Tuschl-I estate — invented at Max Planck, Whitehead, MIT, and UMass — with Merck subsidiary Sirna Therapeutics (see RNAi News, 9/13/2003) and, to a limited degree, CytRx spinout RXi Pharmaceuticals.

The plaintiffs charged that if any Tuschl-II inventions are included in Tuschl-I patents, companies with access to Tuschl-I will "unfairly gain access to the Tuschl-II property without paying consideration for a license,” and said that the US Patent and Trademark Office was poised to grant a Tuschl-I patent.

In a bid to prevent that patent issuance, the plaintiffs asked the court for a preliminary injunction preventing the payment of issuance fees on any Tuschl-I application unless all the IP's co-assignees, including Max Planck, agree that the fee shall be paid — a move calculated to effectively halt the prosecution of Tuschl-I IP in the US (see RNAi News, 7/16/2009).

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That effort failed earlier this month when the court denied the injunction request. In its response, the court said that Alnylam and Max Planck have “not shown a substantial likelihood of success” on the merits of their case, especially since Max Planck had previously authorized the inclusion of the dispute data in Tuschl-I filings (see RNAi News, 9/3/2009).

But Alnylam and Max Planck had another trick up their sleeves and asked petitioned the USPTO to pull the authorization Max Planck had given Whitehead to use the attorney of its choice in prosecuting Tuschl-I applications, which the patent office did earlier this month (see RNAi News, 8/27/2009).

Both UMass and Whitehead have asked the court to order Max Planck to withdraw its petitions to revoke power of attorney, but it is unclear whether the court can or will act. Meanwhile, the USPTO has sided with Max Planck on the issue.

According to a letter from the USPTO and provided to the court by the plaintiffs, “speculation that Max Planck is motivated by nefarious purposes and should not be able to appoint counsel of its choosing is not relevant since a party’s future intent is not considered by the USPTO in this situation.”

The patent office wrote that it is not “the best forum in which to determine a party’s intent. Such intent is best determined when the trier of facts can observe [the] demeanor of witnesses subjected to cross-examination … [and] a court, with subpoena power, is presently the best forum to consider such an issue.”

The USPTO noted that since the co-assignees of the Tuschl-I IP “have divergent interests, no one side can reasonably expect or be permitted to control the prosecution of [the] patent application [at issue] to the exclusion of the others. Furthermore, denying Max Planck the ability to choose its own counsel and requiring [it] to have its interests represented by an opposing party in litigation would not be appropriate for the USPTO.

“The ongoing disputes, including litigation … provide sufficient cause for Max Planck to revoke a power of attorney that it previously gave and an extraordinary situation where justice requires waiver of” existing USPTO regulations, the office added.

The patent office noted that further correspondence related to Tuschl-I applications must be signed by “registered practitioners” representing both Max Planck and the other co-assignees of the IP “in order to assure that all interests are properly and effectively represented.”

In its own letter to the court, Alnylam and Max Planck added that Whitehead and possibly the other defendants in the lawsuit are expected to appeal the USPTO’s decisions.

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