SequeSequenom purchases non-invasive prenatal screening intellectual property from Isis Innovation for $14.55m.
Sequenom, Inc. (NASDAQ: SQNM), a life sciences company providing innovative genetic analysis solutions and Isis Innovation Ltd., the technology transfer company of the University of Oxford, today jointly announced that Sequenom has purchased non-invasive prenatal testing intellectual property from Isis Innovation, for $14.55 million, which includes $3.2 million as the final royalty payment due to Isis under the prior agreement and the waiver of $2.1 million in paid legal fees that Isis owed to Sequenom, with additional downstream payments contingent on revenues exceeding certain thresholds.
Under the terms of the agreement, Sequenom is now the owner of global intellectual property for non-invasive prenatal genetic diagnostic testing on paternally inherited fetal nucleic acids derived from maternal plasma or serum. Sequenom previously had exclusive rights to this intellectual property under a licensing agreement with Isis Innovation established in 2005. As part of the purchase agreement, Isis Innovation has rights in certain fields of use. No additional terms were disclosed.
‘The patents purchased from Isis Innovation will enable us to strengthen our intellectual property position worldwide, while reducing future expenditures,’
said William Welch, Chief Executive Officer at Sequenom, Inc.,
‘We look forward to leveraging this important intellectual property for additional applications of our technology in the future.’
‘This patent assignment represents a highly significant deal for us.’
said Tom Hockaday, Managing Director of Isis Innovation Ltd.,
‘It enables us to return considerable value to the University of Oxford, the inventors of the technology and the other organizations which supported the original research. We value our long-standing relationship with Sequenom and wish them continued success with their prenatal tests.’
The intellectual property purchased by Sequenom includes a portfolio of globally issued patents in the United States, Europe, Japan, Hong Kong, Canada and Australia. In October 2013, the U.S. District Court ruled that certain claims of U.S. Patent No. 6,258,540 (’540 patent’) are directed to non-patentable subject matter under U.S. Code § 101.
The ’540 patent ruling by the U.S. District Court is currently under appeal by Sequenom to the U.S. Court of Appeals for the Federal Circuit. The Patent Trial and Appeal Board recently ruled in favour of seven claims contained within the ’540 patent. Valid and enforceable patents are issued in Europe, Japan, Hong Kong, Canada and Australia.