Sunday, July 05, 2009

Max Planck GmbH goes after MIT, Whitehead, UMass

In an article titled Biting hands that feed , Steven Syre of the Boston Globe writes on a patent rights/patent prosecution dispute among Max Planck GmbH and Alnylam Pharmaceuticals Inc. on one side and MIT, the Whitehead Institute for Biomedical Research in Cambridge, and the University of Massachusetts, on the other side. Syre is talking about a case in Suffolk Superior Court in Massachusetts, not in a federal district court.

The patent applications in question are named for Thomas Tuschl, and are designated Tuschl-I and Tuschl-II, and relate to inventions in the area of RNA interference ["RNAi"]. Syre writes:

Tuschl and three other scientists advanced RNAi research with an initial set of discoveries that became known as Tuschl I in the 1990s. The researchers assigned rights to their respective institutions: Max Planck, MIT, Whitehead, and UMass.[but see below] All four of the scientists were also founders of Alnylam.

Tuschl conducted further research with other scientists, all from Max Planck, that led to new discoveries known as Tuschl II.

Whitehead was responsible for securing Tuschl I patents that would be shared by the group, according to the suit. But patents for those discoveries have been awarded in just two countries, Australia and New Zealand. Max Planck was much more successful winning patents around the world for Tuschl II.

The point at issue relates to exclusive vs. non-exclusive ownership and is described by Syre:

Alnylam and Max Planck claim data from the patented Tuschl II are being wrongly used in the still-pending Tuschl I patent application and want it stopped. That matters because Max Planck and Alnylam hold exclusive ownership and license rights to Tuschl II. They share Tuschl I with other institutions and biotech companies.

The rather intricate legal points are fleshed out in an article by Ben Butkus-->

Tuschl performed part of his work while employed at Whitehead and part of it while employed by Max Planck. One co-inventor also contributed to the inventions while employed at Whitehead; however, he later joined UMass and assigned his interest in the technology to that school.


The suit rests on two joint invention and marketing agreements signed by various players. The first agreement, signed by all parties in September 2001, gave MIT primary responsibility for marketing and licensing the Tuschl I and Tuschl II inventions as research reagents and for internal research use. As part of this agreement, the Whitehead, an MIT affiliate, was given responsibility for securing patent protection for the Tuschl I inventions, the complaint states.

The second agreement, penned in July 2003 between Max Planck, Whitehead, and MIT, but not UMass, was designed to guide how both invention families would be licensed for therapeutic purposes.

Under that pact, the Whitehead assumed primary responsibility for filing patent applications based on the Tuschl I inventions; while Whitehead and MIT authorized Max Planck Innovation, the tech-transfer arm of Max Planck, to grant two non-exclusive licenses to their ownership interests in the Tuschl I and Tuschl II inventions for therapeutic purposes, the suit claims.

UMass opted to license its ownership in the Tuschl I inventions for therapeutic purposes to companies other than Alnylam, according to the complaint.

IPBiz notes that a rather secondary player to the invention, UMass, is creating the problem on licensing.

There is another dimension to the litigation, one of mis-prosecution of Tuschl-I, which Butkus describes:

According to the suit, Max Planck and Alnylam have taken issue with the Whitehead over what they claim was a failure to properly prosecute patents related to the Tuschl I inventions as laid out in the research-use-only joint agreement.

According to this part of the complaint, the Whitehead "assumed a duty" to act on behalf of Max Planck and Alnylam to secure patent protection for the co-owners' IP. In addition, Max Planck, through payment from Alnylam, paid Whitehead to apply for patent protection of its ownership interest in the Tuschl I inventions.

However, Whitehead "continues to seek, to plaintiffs' detriment, patent protection for aspects of the Tuschl II inventions for benefit of the co-owners of the Tuschl I invention;" and "is seeking to misappropriate the inventions that were invented by the Tuschl II inventors by including in Tuschl I patent applications … material regarding those inventions," the complaint states.

Max Planck and Alnylam claim in their suit that they have repeatedly informed Whitehead of its alleged wrongdoing and that the institute has "failed, and affirmatively refused, to remove the Tuschl II inventions from the Tuschl I patent applications, and has failed to offer any justification … for failing and refusing to direct prosecution counsel to delete the Tuschl II inventions from the Tuschl I applications."

They are also alleging breach of contract, breach of fiduciary duty, interference with advantageous business relations, unjust enrichment, and negligence, among other complaints.


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