The USPTO said 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.”
The decision was made after a phase I showed patients experienced no serious adverse effects, while 75 percent of patients reported an “improved ability to breathe freely or reduced use of their rescue inhaler.”
Under the terms of the deal, Silence will “demonstrate the functional delivery” of its proprietary siRNA molecules, in combination with its in-house AtuPlex delivery technology, to certain undisclosed targets.
UMass further argued in its counterclaim that a key aspect of the disputed RNAi technology — the 3’ overhangs commonly incorporated into siRNAs — was an inherent feature of the RNAi molecules described in a patent application filed prior to another patent application from Max Planck that specifically claims the overhangs.
The size and number of awards under the first two opportunities will depend on the availability of funding. For the third funding opportunity, the NIH has set aside $1.2 million to be distributed in 2010.
The plaintiffs' counsel also provided some background on the legal dispute, including details of an early-2004 meeting between the chief executives of Alnylam and rival Sirna Therapeutics that led up to the litigation.