The federal appeals court that handles patent cases has upheld a ruling that could make it harder for universities to obtain patents on the basic research most academics undertake.
The ruling, issued Monday, also makes clear that the court was well aware of the effect of its decision.
“The patent law has always been directed to the ‘useful arts,’ meaning inventions with a practical use,” the judges of the U.S. Court of Appeals for the Federal Circuit wrote in the 9-to-2 decision. “Patents are not awarded for academic theories, no matter how groundbreaking or necessary to the later patentable inventions of others.”
The ruling came in a case involving the validity of a 2002 patent on a technique for identifying how a “messenger” protein regulates how cells function. The technique was developed by three teams of eminent researchers from Harvard University, the Massachusetts Institute of Technology, and the Whitehead Institute for Biomedical Research.
On the day the patent was awarded, the three institutions and Ariad Pharmaceuticals, the Cambridge, Mass., company that holds exclusive rights to commercialize the invention, sued Eli Lilly and Company, claiming that two of Lilly’s drugs—Evista, used for osteoporosis, and Xigris, used for sepsis—infringed the patent. In 2007 a federal district court upheld a jury verdict ordering Lilly to pay the parties $62.5-million in damages plus royalties on future sales.
But Lilly appealed, arguing that the patent was invalid because it failed to adequately demonstrate how to actually make the new technique. In pressing its challenge, Lilly invoked some of the same legal arguments used by another pharmaceutical company in its successful 2003 challenge of another academic patent (held by the University of Rochester), which was also later upheld.
In a ruling last year, a three-judge panel of the appeals court agreed with Lilly, but Ariad petitioned for a rehearing before the full court. In its decision on Monday, the full court also ruled in favor of Lilly.
“Universities may not have the resources or the inclination to work out the practical implications” of the research they do, the judges wrote, and that might mean universities become ‘disadvantaged” when seeking patents. But the appeals court said that was “no failure of the law’s interpretation but its intention.”
In a news release, Ariad, which has taken the lead on the litigation, said it was reviewing the decision to “assess our options in the case.”
