navigating the patent maze

The three U.S. patents owned by WARF cover nearly all research using embryonic stem cells.  Much welcomed by scientists, WARF (Wisconsin Alumni Research Foundation) has announced that licenses and fees will be waived for non-commercial stem cell research.  Moreover, it will no longer require companies that sponsor stem cell research at non-profit organizations to take out a license, the price of which ranged from US $75,000 to US $400,000. 

The blog "Law under the Microscope’" has two excellent discussions about this case.  The story of the collaboration and fall-out between City of Hope and Genentech demonstrates why wording in contracts is so important.  The jury awarded City of Hope USD 500 million.  (In my opinion, contracts are important to do right although they are rarely appreciated and only consulted when something goes wrong - and that is exactly when the wording becomes important.)

See original post on this site.
See Post 1 at Law under the Microscope about contractual interpretations.
See Post 2 at Law under the Microscope about fiduciary duty of licensors.

Benefit sharing of rewards from inventions based on genetic materials (e.g., plants, insects) collected in developing countries is not only much-talked about but is also mandated by the Convention of Biological Diversity (CBD). The CBD is an international Agreement (although not signed by the United States) that has three main goals: the conservation of biological diversity, the sustainable use of its components, and the fair and equitable sharing of the benefits from the use of genetic resources (See Article 15).

On an individual bases, in 1996, the University of California at Davis, initiated a benefit sharing program with Mali stemming from a patented invention for a disease-resistance gene isolated from African rice. The idea was to license the technology to agricultural biotechnology companies, such as Monsanto and use the income to improve the lives of the world’s poor people.

Over the last 8 years, I have heard many references to this program as a model and ideal moral stance. Yet, as revealed in a lengthy article in the Sacramento Bee , nothing has been resulted in the way of benefit sharing. Sadly, it is a philanthropic failure. In well-researched detail, the article shows just how difficult it is to craft licenses and illustrates many licensing pitfalls. Hopefully, institutions and scientists who want to give back help to the developing world can learn from this well-meant attempt and fashion a workable and successful form of benefit sharing.

This announcement is from the GTG web site:

Genzyme will pay GTG a signing fee of $7.5M – of which $5M will be in cash and $2.5M will be in the form of “in-kind” Genzyme intellectual property now offered to GTG. Genzyme will also pay GTG a fee of $1M per year for the life of the non-coding patents (currently till 2015).