Japanese patent win boosts Optiscan

By Renate Krelle
Friday, 03 September, 2004

A patent win for confocal-miscroscope company Optiscan (ASX:OIL) in Japan will increase the company’s licensing revenues for the benchtop applications of its technology in Japan by up to AUD$400,000, according to Optiscan.

Optiscan currently earns nearly $1 million per year from licensing of benchtop confocal microscopes. The patent is for the use of optical fibre in any form of confocal microscope. Although every use of a fibre in a confocal microscope -- benchtop or miniaturised -- will earn Optiscan a royalty, the company has licensed the miniaturised applications of the technology to Japan’s Pentax.

“It’s only the benchtop microscope which will have an impact on our royalty streams,” said Optiscan CEO Matthew Barnett. “Pentax are paying us a royalty across the entire patent suite. Petax will get extra patent security of blocking their competitors. The strength of their exclusive licensing of our technology now has stronger, firmer claims.”

Barnett said the patent had been going through due process in Japan for 12 years. “We initially lost, and appealed and won the appeal in the High Court -- and then it was resubmitted to the patent office,” he said.

Barnett said that royalties will begin to flow from the date that the patent was granted, so there are no back-royalties to be paid.

Optiscan has already licensed its fibre confocal technology for benchtop applications in USA, Canada and Australia to microscope companies including Olympus, Nikon, Carl Zeiss, Leica, BioRad and PerkinElmer.

Patents covering the technology have been granted in the US, Canada and Australia. Barnett said patents had been granted, but appealed, in Europe -- “If it is upheld there, there are a lot of back royalties to be paid in Europe,” he explained.

Investors welcomed the news, sending shares in Optiscan up 12 per cent to $0.33 at time of writing.

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