a foray into patent law
Jan. 15th, 2007 10:37 am![[personal profile]](https://www.dreamwidth.org/img/silk/identity/user.png){kind=small}
quesarahAdmittedly, not my strong suit. However, some recent developments in MedImmune v. Genentech have piqued my interest. I've read up a little on bioportfolio.com and I think I've a handle on the story thus far:
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MedImmune uses a particular manufacturing process in production of its top-selling drug, Synagis. In order to do so, they have acquired a licensing agreement with a company called Celltech that holds a patent on said process. Celltech's patent expired in 2006, meaning MedImmune no longer needs to pay royalties on its #1 product. Hooray for MedImmune, or so one would think if one were naive and logical and not a lawyer.
In the background of all this, Celltech has been in dispute with another company called Genentech. Both companies held patents on basic manufacturing processes necessary for the production of drugs such as Synagis. Ultimately, Celltech's patent was revoked and Genentech's was nearing its expiration. In order to maintain IP and royalties, the two companies entered into a cross-licensing agreement in which Genentech filed a new patent application incorporating several claims included in Celltech's (now-revoked) patent. As a result, Genentech is now demanding royalties from MedImmune on the basis of the new cross-licensed patent through 2018.
MedImmune has counter-sued, alleging antitrust violations by Genentech and Celltech and challenging the validity of the new patent. They claim that the patent essentially provides 29 years of protection for the same technology, based on the incorporation of the claims from Celltech's old patent. However, MedImmune has made payments to Genentech even as it filed suit in federal court. This provided an interesting twist to the story, as the case was initially thrown out of lower court because MedImmune had already paid royalties. The judge ruled that there was no breach of contract and therefore no grounds for protest.
Last week, the US Supreme Court reversed the decision of the lower court saying that "The rule that a plaintiff must destroy a large building, bet the farm, or (as here) risk treble damages ... before seeking a declaration of its actively contested legal rights finds no support," (Justice Antonin Scalia for the majority opinion). MedImmune is now free to pursue its dispute of the Genentech patent claims.
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I never ever thought I would be in agreement with Antonin Scalia. Ever. On anything. Granted, I do not hold a legal degree but it seems irrational to say that MedImmune's suit is invalid because simply because it has been paying royalties.
Whether they'll get any traction in their suit against the patent claims remains to be seen, but it will be an interesting story to follow inasmuch as it may open the door for other challenges. The IP landscape in biotech is littered with patents whose claims are so vague as to be scientifically meaningless, held by companies with the deepest pockets instead of the brightest innovators. Perhaps this is the default scenario for patent law, but it seems to me there should be a balance between conditions favoring the company and those favoring innovation. Hopefully this will start the pendulum swinging.
(cross-posted to science-tech/reviewy shadowblog)
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MedImmune uses a particular manufacturing process in production of its top-selling drug, Synagis. In order to do so, they have acquired a licensing agreement with a company called Celltech that holds a patent on said process. Celltech's patent expired in 2006, meaning MedImmune no longer needs to pay royalties on its #1 product. Hooray for MedImmune, or so one would think if one were naive and logical and not a lawyer.
In the background of all this, Celltech has been in dispute with another company called Genentech. Both companies held patents on basic manufacturing processes necessary for the production of drugs such as Synagis. Ultimately, Celltech's patent was revoked and Genentech's was nearing its expiration. In order to maintain IP and royalties, the two companies entered into a cross-licensing agreement in which Genentech filed a new patent application incorporating several claims included in Celltech's (now-revoked) patent. As a result, Genentech is now demanding royalties from MedImmune on the basis of the new cross-licensed patent through 2018.
MedImmune has counter-sued, alleging antitrust violations by Genentech and Celltech and challenging the validity of the new patent. They claim that the patent essentially provides 29 years of protection for the same technology, based on the incorporation of the claims from Celltech's old patent. However, MedImmune has made payments to Genentech even as it filed suit in federal court. This provided an interesting twist to the story, as the case was initially thrown out of lower court because MedImmune had already paid royalties. The judge ruled that there was no breach of contract and therefore no grounds for protest.
Last week, the US Supreme Court reversed the decision of the lower court saying that "The rule that a plaintiff must destroy a large building, bet the farm, or (as here) risk treble damages ... before seeking a declaration of its actively contested legal rights finds no support," (Justice Antonin Scalia for the majority opinion). MedImmune is now free to pursue its dispute of the Genentech patent claims.
****
I never ever thought I would be in agreement with Antonin Scalia. Ever. On anything. Granted, I do not hold a legal degree but it seems irrational to say that MedImmune's suit is invalid because simply because it has been paying royalties.
Whether they'll get any traction in their suit against the patent claims remains to be seen, but it will be an interesting story to follow inasmuch as it may open the door for other challenges. The IP landscape in biotech is littered with patents whose claims are so vague as to be scientifically meaningless, held by companies with the deepest pockets instead of the brightest innovators. Perhaps this is the default scenario for patent law, but it seems to me there should be a balance between conditions favoring the company and those favoring innovation. Hopefully this will start the pendulum swinging.
(cross-posted to science-tech/reviewy shadowblog)
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no subject
Date: 2007-01-15 11:47 pm (UTC)IANAL, but i know that the situation with software is far, far worse than in biotech.
every year, there are hundreds of home-coders in the US getting sued for breaches of IP by some of the big players in the industry - it turns out that it is almost impossible to write a program, of any meaningful length, in any language, that DOESNT breach someones IP.
its got to the stage now where the big IP hol;ders in the field regularly try to file suit on every conceivable string of code they can lay their hands on, regardless of its non-obviousness or any prior art.
last year, there was uproar when microsoft filed a patent on a piece of code for use in a network transmission protocol - the reason being that what they were describing has so much prior art that just about every network-capable computer built since the mid-70's has this built in - its called TCP/IP, and was never patented.
indeed, this was freely given to the computing community for use as a networking standard.
not only that, but the code actually predates the existence of the company that started out as micro-soft.
thank bob software patents are illeagal (for now!!) here in the EU.
no subject
Date: 2007-01-16 03:40 pm (UTC)I'm hoping that this case might open the door to more patent challenges here in the US. The situation in the EU is different; I know there are biotech patents out the wazoo over there. But maybe it'll be a start to bring some sense into the whole mix.
no subject
Date: 2007-01-16 06:01 pm (UTC)i seem to recall reading somewhere that patent applications over here are dealt with by scientests, while over your side the lawyers are in control - and lets face it, they are the only people getting any major benefits over IP law.
hell, look at the situation with SCO vs IBM - SCO was a major player in the software market until their lawyers convinced them that they could make some easy money by suing IBM for IP infringements.
SCO are now down to the last few million dollars in funding, almost all of which is earmarked for their lawyers fees.
i could come out weith a certain famous quote from shakespear, but i shall refrain...
and WTF is up with me getting involved in a serious discussion??
no subject
Date: 2007-01-16 07:23 pm (UTC)I am clearly a Bad Influence.