The lawsuit claims that Biogen is still obligated to pay royalties for all the Tysabri that was manufactured using Genentech's patents before their expiry, even if they are sold later
Biogen headquarters in Cambridge, Massachusetts. (Credit: Astrophobe from Wikimedia Commons)
Roche’s Genentech has filed a lawsuit against Biogen in the US for not getting payment of additional patent royalties on worldwide sales of the latter’s multiple sclerosis (MS) and Crohn’s disease medication Tysabri (natalizumab).
According to the lawsuit filed in San Francisco federal court, Biogen is still obligated to pay royalties for all the Tysabri that was manufactured using Genentech’s patents before their expiry, even if they are sold later.
Genentech claimed that Biogen refused to pay royalties on any sales of the drug after the patents expired at the end of 2018. In the court, the Roche subsidiary claimed that there was a breach of contract by the latter and asked for a jury trial.
The parties agreed to license Genentech’s patents in 2004 in exchange for a mid-single-figure royalty on sales of licenced products in the US and an unspecified lower royalty in the rest of the world, reported Reuters.
The patents were related to the production of antibodies like Tysabri.
Biogen’s Tysabri received its initial approval from the US Food and Drug Administration (FDA) to treat MS in 2004.
Genentech claimed that Biogen produced Tysabri and stored it in large quantities as a standard practice. As a result, Biogen is obligated to pay royalties for the majority or all of the Tysabri sold in 2019 and beyond before the patents expired, said the former.
The lawsuit claimed that Biogen’s last royalty payment was made in March 2019 for the sales of Tysabri from Q4 2018.
Genentech has asked the court to order Biogen to pay the lost royalties and other monetary compensation for the alleged contract violation.