Former patent office director Todd Dickinson tells GT that patent pooling will become important to genomics (see p. 51). The latest cross-licensing announcement from Applied Biosystems, Bruker Daltonics, and Indiana University supports that prediction.
The mass spec technology under Indiana University’s patent was developed in 1993 by chemistry professor James Reilly, who wanted to sharpen the peaks coming off his mass spectrometer readings. Through a process called velocity focusing, Reilly discovered that if you first “desorb the ions into a region of space that has no electric field … and let them drift for a while” before shooting them toward the detector using pulse voltage, the data improve considerably. “What you’ve done is you’ve given the slower ions a bigger kick over the fast ions,” he explains. “Typically we observe a sharpening by a factor of 30 or so.”
In fact, the method worked so well that almost everyone working with mass spec is now using velocity focusing. According to Reilly, the complication was that “ABI submitted a patent application on virtually the same technology about nine months after we did.” By that point, IU had licensed the patent to Bruker, so when ABI got the patent as well, there was general confusion about whom to pay royalties for using the technology. The result: since the issuance of the patents all those years ago, almost no one has paid royalties to either group, Reilly says.
At last, ABI and Bruker worked out a solution. “Rather than fighting and deciding whose [patent] covers more territory, let’s pool them all,” Reilly explains. “So Bruker and ABI will together license the technology to all the other companies.”
Steve Martin, director of ABI’s proteomics research center, agrees. “This cross-license deal simply resolves the intellectual property issues between our three organizations in the most efficient and cost-effective way and allows us to profit from licensing it to third parties,” he says.
— Meredith Salisbury