Do EST patents matter?

Abstract

On the other hand, a proliferation of broad, overlapping patent rights on ESTs in the hands of different owners could present a serious obstacle to the development of future products encoded by sequences that span many ESTs. The greater the number of licenses that need to be negotiated, the greater the risk that bargaining will fail[13xHeller, M. and Eisenberg, R.S. Science. 1998; 280: 698Crossref | PubMed | Scopus (1132)See all References][13]. The PTO is optimistic that the challenge of procuring multiple licenses will be manageable in biotechnology, as it has been in other industries. But so far, experience in the biotechnology community gives little reason for such optimism. The first generation of biotechnology products have been plagued by litigation between patent holders who have been unsuccessful, if not completely uninterested, in negotiating cross-licenses[14xSee all References][14]. More recently, as proprietary research tools have proliferated in biomedical research, both academic and for-profit institutions have experienced growing difficulties and delays in negotiating mutually agreeable terms of exchange[15xSee all References][15]. In this setting there are real costs to fragmenting intellectual property rights and handing them out to multiple owners.In the long run, it is likely that broad patents on ESTs will be challenged in the courts, unless patent owners license them on terms that leave users with little motivation to litigate. But it may be many years before the Federal Circuit has an opportunity to decide whether the patents that the PTO is issuing today are consistent with the teachings of prior decisions. Meanwhile, broad patent claims on ESTs, however dubious their validity, can only add to the risks and uncertainty of future genomic research and product development.Note: Decisions of the United States Court of Appeals for the Federal Circuit are cited below in accordance with the format prescribed in The Bluebook: a Uniform System of Citation (16th edn 1996), compiled by the editors of the Columbia Law Review, the Harvard Law Review, the University of Pennsylvania Law Review, and The Yale Law Journal. The cases appear in the volumes indicated below of West's Federal Reporter, Second Series (abbreviated as `F.2d') or Third Series (abbreviated as `F.3d'), beginning at the cited pages. Decisions since 1995 are also available on the Internet from a United States Court of Appeals, Federal Circuit home page maintained by Emory Law School at http://www.law.emory. edu/fedcircuit/ The US Supreme Court has declined to review some of the decisions cited below; that fact is indicated by the phrase cert. denied, followed by a citation to a volume and page number of US Reports or West's Supreme Court Reporter.