PUBPAT ASKS PATENT OFFICE TO REVOKE COTRANSFORMATION PATENT TO SAVE PUBLIC HUNDREDS OF MILLIONS OF DOLLARS: Columbia University Impermissibly Received Multiple Patents on Single Invention
NEW YORK -- February 26, 2004 -- The Public Patent Foundation filed a formal request with the United States Patent and Trademark Office today to revoke Columbia University's patent on cotransformation, a process for inserting foreign DNA into a host cell to produce certain proteins. The patent, issued in 2002, violates the restriction against multiple patenting because Columbia previously received three other patents for the same invention in the 80's and early 90's. The three previous patents expired in 2000; the new patent will not expire until 2019.
Cotransformation is the basis for a wide range of pharmaceutical products, including Epogen® for anemia, Activase® for heart attacks and stroke, Avonex® for multiple sclerosis, and Recombinate® for hemophilia. Columbia University received hundreds of millions of dollars in licensing fees for the three previous patents from dozens of biotechnology drug companies, including Amgen, Genentech, Abbott, and Wyeth. That revenue ended in 2000 when the three previous patents expired. With the new patent, Columbia stands to make hundreds of millions of dollars more off of the same technology as license royalties will be due until 2019.
"[M]aintenance of the ‘275 patent will harm the public health because consumers will be forced to pay higher prices in order to compensate the distributors of these products for the royalties they must pass on to [Columbia University]," states PUBPAT's Request for Ex Partes Reexamination of U.S. Patent No. 6,455,275. "[Columbia University] rightfully earned the three Prior Axel Patents and the hundreds of millions of dollars that resulted from their license, but the ‘275 patent and the additional hundreds of millions [Columbia University] will reap from licensing it between now and when it would otherwise expire in 2019 are unmerited."
Many of Columbia's licensees have filed lawsuits asking courts to strike the patent for multiple patenting, amongst many other reasons. PUBPAT filed its request with the patent office because of its concern that the courts may take too long to resolve the matter since patent cases typically take 2 - 4 years. The reexamination requested by PUBPAT is an expedited procedure expected to take much less time than the court cases.
"This patent is a classic example of how the patent system is failing to protect the public domain from those with purely profit motives," said Dan Ravicher, PUBPAT's Executive Director and Founder. "As this case shows, the patent system's failures can have devastating consequences for the economy and the public health."
Even if PUBPAT is successful in getting the Patent Office to revoke the patent, the matter may not be entirely resolved as Columbia has yet another patent application pending at the Patent Office for the same cotransformation technology. "If Columbia's other application on cotransformation issues, we'll just have to go through all of this for that patent as well," says Ravicher. "Just because the patent system is horribly broken, doesn't mean you stop trying to fix it."
The Request for Reexamination can be found at PUBPAT > Columbia Cotransformation Patent.