Genentech Sues Columbia Over Biotech Patent
Genentech Inc. is suing Columbia University in federal court, claiming that the university illegally obtained a patent used by Genentech and 23 other companies to make biotech drugs.
In the suit, Genentech is seeking a declaration that the Columbia patent is invalid and that the biotechnology giant is not required to pay royalties on it to the university.
Columbia general counsel Elizabeth J. Keefer said the university had not yet received the suit, which was filed Tuesday in U.S. District Court in San Francisco, and therefore had no comment on it.
The suit, which involves a gene-splicing technique, underscores the importance of patents to biotech firms and to academic institutions that stand to profit from them. Columbia, according to the suit, has said the patent represents “its single most successful invention” and has yielded hundreds of millions in royalty payments to the university.
However, South San Francisco-based Genentech claims Columbia obtained its patent through deception.
All biotechnology drugs are made by splicing bits of DNA into live cells and turning the cells into mini-factories to produce a specific drug. The Columbia patent covers a method drug makers can use to verify that the DNA transfer was successful.
But Genentech, in its suit, asserts that Columbia omitted information on its application to the Patent and Trademark Office, which issued the patent to Columbia in September. Genentech said the disputed patent covers the same invention described in a 1983 patent held by Columbia that expired in August 2000.
Genentech asserts that when the patent expired, it entered the public domain, and that Columbia cannot reclaim the invention with a new patent two years later.
“Columbia has already reaped the full benefit the law allows for its invention,” Genentech said in the suit.
Genentech has paid Columbia $70 million in royalties through 2000 on sales of its blood-clot busting drug Activase and related products.
Columbia collected a total of $138.6 million in licensing fees in fiscal 2000, the most recent year for which figures are available, according to the Assn. of University Technology Managers. The association said that placed Columbia second among 138 U.S. universities. The University of California system was first with $261.5 million, and Dartmouth College was third with $68.4 million.
This isn’t the first dispute Genentech has had with a research institute. The company is appealing a $500-million jury award in a dispute with City of Hope National Medical Center in Duarte over payments for research on DNA technology used to develop human insulin, the first biotechnology drug, and human growth hormone.
Genentech’s shares rose 46 cents to $35.64 on the New York Stock Exchange.
Bloomberg News was used in compiling this report.
