Structuring IP to allow multiple licensing without conflict

Camurus AB is a Swedish research-based pharmaceutical and biotechnology company specialising in the commercialisation of innovative specialty medicines for treating serious and chronic diseases, where there are clear medical needs and potential to significantly improve treatment.

Dehns Partner, Chris Goddard, began working with Camurus as a Dehns trainee in 2001 and has been in charge of their patent portfolio since 2003. Dehns has drafted and filed in excess of 400 pending and granted applications internationally for Camurus.

Issue
Camurus focuses on developing technology for pharmaceutical administration systems in-house or in partnership with external organisations who develop or sell their own active agents. One of their recent partnerships with Rhythm involved the formulation of an anti-obesity treatment that uses Camurus’ drug delivery technology to deliver Rhythm’s proprietary active agent in a slow-release form.

Camurus’ business model relies on licensing agreements with multiple other parties, often with the same patents covering the core Camurus technology in several separate agreements.  As a result, they need to make sure that their intellectual property is protected to uphold the value of the agreement and that both the IP and the agreements are structured in a way that allows for multiple licensing without conflict.

Solution
Dehns Partner, Chris Goddard, worked closely with Camurus to make sure they had an established portfolio that would support the Rhythm deal. This involved developing a licensing and patent prosecution strategy that would help them maintain control of their technology in all agreements. Camurus trusted Dehns to work with their business legal advisors to reach a deal that both they and Rhythm would be happy with. This is a particularly important challenge for an organisation who rely on being able to license their technology to more than one company.

Result
Dehns played a vital role in working with Camurus to establish the strategy and portfolio to support the deal with Rhythm and protect their future developments. The innovative work of Camurus scientists has benefited patients by improving compliance of the drug and ease of use with a reduction in the frequency of application and may now be developed to market as a result of the agreement between Camurus and Rhythm.

Camurus is eligible to receive an upfront payment and progressive payments of approximately $65 million, of which the majority are sales milestones. In addition, Camurus is also eligible to receive royalties on future sales of the product.