Diagnostic Kits/The licensing of DNA patents by US academic institutions

Pressman, L. et al., 2006. The licensing of DNA patents by US academic institutions: an empirical survey. Nat Biotech, 24(1), 31-39

• (Pressman, L. et al., 2006) The Pressman article reports on an interview which investigates DNA patents at Universities in the United States. The focus of the article is split between:
  • patenting and out-licensing strategies of
  • licensing negotiations: exclusivity, uses, and terms
  • Protection of non-patented technologies: MTAs, NDAs

• Institutions chosen for the study had patents of inventions using human DNA and both for profit and non-profits were sampled. The study found that for profit and non-profit entities approach patent and licenses differently:
  • Patenting Behavior
    • For profits more often fill patent applications for all new technologies and then deciding what to pursue based on commercial interest.
    • Non-profits were more selective about when to apply for a patent.
  • Licensing Behavior
    • For both entities, licensing was most often used as a method of commercialization. Licensing for research was very infrequent.
    • One important difference found was that nonprofits were more than twice as likely to license exclusively as compared to for-profit companies.

Exclusivity

• "Several reports from national and international bodies note that genetic testing applications require far less investment after initial gene discovery than development of therapeutic proteins, and so the rationale for exclusive intellectual property rights may be less compelling7, 8, 9, 10, 11." (Pressman, L. et al., 2006)
  • Footnote 8 Commission on Intellectual Property Rights. Integrating Intellectual Property Rights and Development Policy (Commission on Intellectual Property Rights, London, September 2002). http://www.iprcommission.org/papers/pdfs/final_report/CIPRfullfinal.pdf (accessed October 13, 2005).