PTO DENIES GENENTECH PATENT CLAIMS FOR RESPIRATORY DRUG

The U.S. Patent and Trademark Office rejected claims in a key patent covering Genentech's respiratory treatment drug, Synagis, the company said, noting that it is contemplating challenging the decision.

"We intend to respond [to the notice], and if we are not successful, we will file an appeal," company spokeswoman Caroline Pecquet said.

The company had asked the patent office in a May 2005 request to reexamine certain claims related to Synagis to determine the validity and enforceability of its '415 patent.

The rejection follows a Supreme Court ruling involving Synagis that said a license agreement between Genentech and MedImmune (a company licensed to market Synagis) does not prevent the licensee from challenging the patent.

In that case, MedImmune had sought relief in federal court after Genentech required it to pay royalties for producing and manufacturing Synagis using Genentech's patented formulation. Believing that Genentech's patent related to Synagis was invalid and unenforceable, MedImmune paid the royalties under protest and sued Genentech for declaratory relief.

The spokeswoman said the decision by the patent office affects its own legal action against Genentech. The company will continue to pursue its case in federal court, she said.