The federal appeals court that handles patent cases has dealt a blow to universities hoping to patent basic research undertaken by their academics, according to a story in The Chronicle of Higher Education. And the court, says The Chronicle's Goldie Blumenstyk, knew exactly what it was doing. In their 9-2 decision, the judges said that patents should be awarded for "useful arts" — inventions with a practical use — not for academic theories, "no matter how groundbreaking or necessary to the later patentable inventions of others." This ruling, says Blumenstyk, came out of a 2002 case involving the validity of a patent on a technique for the identification of how a messenger protein regulates cell function. On the day the patent was awarded, the three grantee institutions and Ariad Pharmaceuticals — which held exclusive rights to commercialize the invention — sued Eli Lilly. They claimed two of Lilly's drugs — Evista and Xigris — infringed the patent. Lilly was ordered to pay $62.5 million in damages, but appealed and said the patent was invalid because it "failed to adequately demonstrate how to actually make the new technique." And the appeals have now gone Lilly's way. According to Blumenstyk, the judges said that universities may not have the resources to work out the practical applications of the research they do, and that might mean they are "disadvantaged" when seeking patents. But, they added, that's the intention of the law.
Court Deals Blow to Universities' Patenting Potential
Mar 25, 2010