They’re at it again… Australian biotech company pursues alleged infringers in the US

Australian biotech company Genetic Technologies (GTG) has announced that it has launched a third round of litigation against US biotech and life sciences companies it says are infringing its patented non-coding DNA technology.

GTG disclosed last week that it had commenced proceedings in the US District Court for the District of Colorado against ten companies, among them Bristol-Myers Squibb, GlaxoSmithKline and Pfizer.  This third round of litigation comes just months after GTG instituted proceedings against six companies in the US District Court for the Western District of Texas, and another nine companies in the US District Court for the Western District of Wisconsin in February 2010.  Our original post on GTG’s decision to launch proceedings can be read here.

GTG’s decision to aggressively pursue companies in the US has paid off, with the company announcing in April that it had secured more than $14.5m in fees through settlement and licensing agreements with the nine companies that it originally sued.  In return, GTG has granted these companies a non-exclusive licence to use its patented non-coding DNA technology.

The decision by the companies sued by GTG to settle proceedings is not unexpected since many of these companies themselves have patent portfolios that include gene related patents.  However, it is perhaps a little surprising given the current uncertainty over the validity of gene patents in the US and, in particular, the challenge to the validity of Myriad Genetics’ BRCA gene patents.  Interestingly, GTG is the exclusive Australian licensee of the BRCA gene patents and has previously sought to enforce its rights to these patents in Australia.  While the company later retreated from this position, it has now found itself embroiled, with Myriad, in a challenge to the validity of the BRCA gene patents in the Australian Federal Court.

About the Author

James Ellsmore
James is a senior associate with King & Wood Mallesons' Intellectual Property team in Sydney. James assists clients to resolve intellectual property disputes, with a particular focus on patents, pharmaceuticals and the life sciences. He has acted for a variety of clients in matters concerning patent infringement and revocation proceedings in the Federal Court of Australia, patent opposition proceedings before the Commissioner of Patents, and matters arising from patent licence and technology agreements. James also has experience in the preparation of commercial, R&D and IP agreements for leading universities, research organisations and pharmaceutical companies. He also advises clients on regulatory issues affecting clients in the industrials, consumer and health sectors.
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