Last month this column detailed how a recent lawsuit charged biotech giant Genentech with attempting to retain rights to a technology for more than a decade beyond the original patent's expiration date. These days, however, this type of behavior is by no means confined to the corporate sector. As university patenting has increased dramatically in the years since the Bayh-Dole Act of 1980, the law that encouraged such activity, academic institutions have taken a lesson or three from the corporations whose convoluted tactics keep a white-knuckled lock around valuable patents. Among the ivory tower set, Columbia University, that august Ivy League institution that is now marking its 250th anniversary, may be lighting the way for other centers of learning.
A parade of biotech heavyweights--among them Amgen, Biogen, Genzyme and, yes, Genentech--filed suits against Columbia last year for allegedly trying to prolong for an additional 17 years what is said to be one of the most lucrative university patent estates ever. Three biotech patents that expired in 2000 brought the academic institution almost $300 million in royalties and licensing fees during their lifetime. But Columbia received another patent in 2002 on what the various plaintiffs claim is essentially the same technology covered by those that had expired: a method for inserting human genes into hamster cells to identify cells that will produce large volumes of proteins from those genes. And Columbia, which maintains that the new patent covers a different invention, has already notified previous licensees of its intention to keep the cash flowing. But the plaintiffs in the various suits want the new patent invalidated.
This article was originally published with the title Working the System II.