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Sirna Picks Up Tuschl IP from UMass With Promise to Sublicense

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This article has been corrected from a previous version, which mistakenly named the Whitehead Institute as the sole owner of the Tuschl-2 IP, rather than the Max-Planck Institute.

Sirna Therapeutics said this week that it has licensed the University of Massachusetts Medical School’s interest in the RNAi technology covered by one of the two international Tuschl patent applications covering the use of siRNAs to silence genes in mammals. The deal not only gives Sirna an important piece of the RNAi patent puzzle, but also appears to end Alnylam’s bid to exclusively control this seminal intellectual property.

While licenses to the fundamental Fire-Mello IP are available from the Carnegie Institution and UMass to anyone with the $35,000 upfront fee, the same in annual payments, and as much as $150,000 in milestones, access to the Tuschl patents has been much more limited.

The Tuschl patent application is based on his work with colleagues Phil Sharp, Phil Zamore, and Dave Bartel at the Whitehead Institute, MIT, Max Planck, and UMass, and describes the use of siRNAs 21 to 23 nucleotides in length to target specific mRNA degradation in mammals. All four of the scientists went on to co-found Alnylam, and all of the institutions except UMass agreed to exclusively license the IP to that company.

UMass said it had been approached by a number of parties, including Alnylam, about licensing the IP, but the university went with Sirna because of its “willingness to commit to broadly sublicensing the technology, where relevant and appropriate, to other companies [in order to] maximize the number of capable laboratories that are working on developing therapeutics,” according to Mark Shelton, associate vice chancellor of university relations at UMass. “Our understanding of our mission is to have scientists working in the public interest. So, we’re looking for intellectual property partners that are interested in, and committed to, everyone working together.”

Sirna president and CEO Howard Robin told RNAi News that the deal gives his company exclusive control over the IP — except in the case of CytRx, which earlier this year inked licensing and research deals with the university in the areas of obesity, type II diabetes, cancer, and amyotrophic lateral sclerosis — but specifies that Sirna negotiate sublicenses to the technology at “commercially reasonable terms” and share the proceeds with UMass.

“A company does not have to own a technology exclusively to be successful,” he said. “I rely on Sirna’s science and the expertise we have in the field to move us forward and bring therapeutics to market using siRNAs.

“By licensing this technology we have freedom to operate, we are not blocked by this technology,” he added. “If other companies are interested in working in siRNAs and I can grant them a license which brings in revenues and royalties to Sirna, if I can get a piece of everybody’s action along with our own…so much the better for Sirna.”

Alnylam president and CEO John Maraganore told RNAi News that he considers the licensing deal a “validation of a strategy we’ve had for a long time,” to build up a proprietary pipeline from a strong IP standpoint, while out-licensing IP in areas outside the company’s interest.

He added that the IP licensed by Sirna does not include the other international Tuschl patent application, licensed exclusively by Alnylam from the Max-Planck Institute (the patent application’s sole owner), which in part describes two-to-three nucleotide 3’ overhanging ends of siRNAs.

 

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