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« New Patent Litigation Bill Introduced in House | Main | News from Abroad: Second Referral for the "Broccoli" Patent Case to the Enlarged Board of Appeal »

July 17, 2013

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Listed below are links to weblogs that reference Senator Leahy Urges NIH to Use March-In Rights on Myriad BRCA Test:

Comments

Don,

As Joe Allen commented on IPWatchdog, Leahy's request is misguided and completely contrary to when "march-in-rights" were intended to be applied under Bayh-Dole. Then Congressman (now Senator) Sherrod Brown (D-Ohio) tried the same misguided approach earlier with Norvir and Xalatan years ago and was correctly rebuffed by NIH.

If implemented as Sen. Leahy suggests, wouldn't this be an example of a working requirement/ compulsory license? And hasn't the US in fact filed a complaint with the WTO against other countries (e.g., Brazil) for imposing working requirements? If Sen. Leahy is so concerned about the cost of the test, perhaps the US government should subsidize the cost for women who can't afford it rather than attempting to strip the patentee of their rights.

Donald: "Interestingly, of the ten patents that Myriad recently asserted against Ambry Genetics, only two (U.S. Patent Nos. 5,747,282 and 5,753,441) are assigned (on their face) to the U.S. government (as well as to Myriad and the University of Utah Research Foundation)."

I'd be interested in hearing discussion of any implications of this finding, i.e., why is this "interesting"?

What are the implications for a company failing to assign an invention that was, in fact, created with government funds?

When the government is an assignee of an invention, how does this affect licensing and litigation of the co-owned patent?

Do Myriad's asserted patents that are not assigned "on their face" to the government include a statement in the specification about the invention having been made with government funds?

Potential Owner:

It is interesting because the government does not appear to have rights in several of the patents that Myriad believes cover its test.

With regard to statements regarding federal funding, I was unable to identify, following a cursory review, such a statement in any of the patents (including the two for which the U.S. government is named as an assignee).

Thanks for the comment.

Don

Hmm. Presumably government funds and grant money was used to identify the BRCA1 and BRCA2 sequences. Are any of Myriad's claims non-obvious uses of that information? If so, I haven't seen one yet. It would seem that the US government has rights to all of Myriad's inventions relating to BRCA1 and BRCA2.

Did the US government negotiate its rights away, or ...?

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