Promega and Benitec settle contract case

Madison, Wis. - The life sciences company Promega announced on Tuesday a settlement of a contract dispute with Australian firm Benitec that had been pending before the U.S. District Court in Delaware.

Under the terms of the settlement, Promega will hold a worldwide non-exclusive license from Benitec to make and sell research products based around Benitec's DNA-directed RNA interference (ddRNAi) technology. Promega will also receive a combined payment of cash and continued royalties from certain sublicenses allowed under the agreement.

Benitec had previously granted an exclusive license to Promega in 2003 for use of its ddRNAi technology, a method of blocking certain genes in messenger RNA. In addition to its use for pure research on which genes form specific phenotypes and react to certain diseases and treatments, there is also research on potential applications in gene therapies for diseases such as hepatitis and HIV.

Benitec launched legal action in 2004, however, due to differing contractual interpretations over whether Promega was taking excessive deductions in the licensing fees it paid to Benitec. Promega in turn filed court motions to prevent Benitec from licensing to additional parties during the litigation.

"In a dispute such as this—especially a contract dispute—once it's over, it's over," said Benitec vice president of intellectual property Sally Brashears. "Promega will continue to make and sell ddRNAi products." In an official statement, Promega CEO Bill Linton said, "What's most important is that this key RNAi technology will be available to life scientists without confusion over its use. We are pleased to resolve the dispute and move forward in our support of this emerging technology in life science research."