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Alnylam Pharmaceuticals Inc. reports it has joined in a lawsuit with the Max Planck Society against the Whitehead Institute for Biomedical Research, MIT, and the University of Massachusetts over the handling of RNAi-related patent applications.
Filed in Suffolk Superior Court in Boston, the complaint alleges that the Whitehead Institute is in breach of contract with Max Planck and Alnylam (Nasdaq: ALNY) in how it is prosecuting the Tuschl I patent applications, as well as in its fiduciary duty to the co-owners of the Tuschl I patent series.
Alnylam stated in a release that it would not discuss specific details of the complaint, but noted it is the exclusive licensee in the field of RNA interference (RNAi) of the Tuschl I patent applications from Max Planck, MIT, and Whitehead and of the Tuschl II patent applications from Max Planck. The Tuschl I family, whose prosecution is controlled by Whitehead, has led to two patents, Alnylam said, in New Zealand and Australia, and an intent to grant in Europe.
By comparison, Alynlam points out, the Tuschl II family, whose prosecution is controlled by Max Planck, have been issued or granted numerous patents in 33 countries, including the U.S., Europe, and Japan.
In April, Alnylam reported it had received notification of “intent to grant” a patent from the European Patent Office for the Tuschl I patent series.
The Tuschl I patent claim (EP1309726) broadly covers RNAi methods, including methods of reducing the expression of a mammal or viral gene with dsRNAs between 21 and 23 nucleotides in length. The patent also includes claims covering methods of examining the function of a gene, as well as the use of both unmodified and chemically modified dsRNAs.
Also in April, Alnylam agreed to pay Isis Pharmaceuticals Inc. up to $31 million in license fees, as part of a collaboration between the two companies to develop single-stranded RNAi (ssRNAi) technology, unrelated to the Tuschl family.
For 2008, Alnylam reported a loss of $26.25 million on revenue of $96.16 million.
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