Nucleonics, Benitec trade new blows in patent fracas

US antiviral therapeutics developer Nucleonics has claimed first blood in its attempt to have the Australian patent office revoke a key RNA interference (RNAi) gene-silencing patent owned jointly by CSIRO and Brisbane gene-therapy company Benitec (ASX:BLT).

In an email sent to Australian Biotechnology News today enclosing the IP Australia examiner's report Nucleonics president and CEO Robert Towarnicki said the review had "resulted in the rejection of every claim in the patent" at issue, Australian patent number 743316, titled 'Control of Gene Expression'.

But Benitec CEO Dr John McKinley, speaking from New York this morning, described Towarnicki's claim as "disingenuous in the extreme". McKinley said the examiner's findings did not immediately invalidate the patent. McKinley said the report was merely the result of a first cursory review of 24 documents submitted by Nucleonics in support of its case that the CSIRO/Benitec patents were neither novel nor inventive at the time they were made.

Patent attorney Trevor Davies, of Allens Arthur Robinson, who is representing Nucleonics in Australia, said CSIRO and Benitec would now have 60 days from the report's November 17 date of release to prove their claims were novel and inventive or to submit a new but much narrower patent. If they failed to do so the original patent would be invalidated.

McKinley said Australia was one of few jurisdictions in the world that gave disputants the option to request a re-examination of the original patent, rather than mount a formal opposition through the courts. Benitec and CSIRO would coordinate their response.

Towarnicki said Nucleonics had decided on a course of "aggressive action" after being sued by Benitec and CSIRO last March.

Benitec is currently suing Nucleonics in the US District Court of Delaware for non-payment of royalties alleged to be due under US Patent No 6573099, titled 'Genetic Constructs for Delaying or Repressing the Expression of a Target Gene'.

"The only claim we make at this stage is that the Australian patent examiner found each and every claim to be invalidated, so CSIRO and Benitec have a big uphill battle to try to salvage the patent or construct a new one," said Towarnicki.

CSIRO declined to comment on the report.