Benitec and Promega settle litigation

RNAi specialist Benitec (ASX:BLT) and Wisconsin-based Promega have settled their contract dispute which began last year.

As part of the settlement, Promega will hold a worldwide non-exclusive license to make and sell DNA-directed RNAi (ddRNAi) based research products. Promega will also receive payment in the form of cash and continued royalties from certain sublicenses.

Benitec filed the lawsuit in July 2004, alleging that Promega had failed to pay its minimum US$50,000 in royalties required by the deal it made with Benitec for rights to the ddRNAi technology, thereby losing its status as exclusive licensee. Promega claimed that its payment of $9719 to Benitec deducted tax payments it had made on Benitec's behalf and maintained that the licensing arrangement still had full effect. Promega also claimed that Benitec had brokered ddRNAi licensing deals on its own, interfering with Promega's business operations.

"We are happy that the issues between Benitec and Promega have finally been resolved and that all parties will be able to concentrate their efforts on business rather than litigation," said Benitec's CEO Sara Cunningham in a statement. "Benitec will continue to license its intellectual property in all human fields, including the research and therapeutics fields."

While the financial terms of the settlement are confidential, the settlement completely resolves all claims and counterclaims asserted by the parties, including those involving Texas-based Ambion and CSIRO.

Benitec settled a US based patent infringement case against Ambion in August 2004, issuing Ambion with a world-wide non exclusive license to make and sell ddRNAi based products. According to RNAi news, Promega's counterclaim said that it had been negotiating a sublicensing deal with Ambion, which would have helped put the patent infringement suit to rest.

CSIRO was involved in the discovery of ddRNAi, successfully demonstrating that ddRNAi is a highly effective gene silencer in plants. CSIRO owns the commercial rights to all "non-human" applications of ddRNAi, including its use in plants, animals and insects.