The licensing of DNA patents by US academic institutions: an empirical survey

THE ROLES OF ACADEMIC INVENTORS IN MEDICAL INNOVATION PROCESSES: EXPLORING THE INFLUENCE OF IPR OWNERSHIP AND IP NATURE

This paper analyses four medical innovation processes originating from Stanford and Uppsala universities with the purpose of understanding how intellectual property rights (IPR) ownership and intellectual property (IP) nature influence the behaviour of academic inventors. We analyse this behaviour through the roles enacted and evaluate the requirements the roles pose by developing a method to assess the requirements of individual roles, which we label as role intensity. We find that both IPR ownership and IP nature can influence the academic inventors’ roles and role intensities. In contrast to assumptions in research and policy, we find that IPR ownership does not influence the roles and role intensities in a remarkable way. We also find support that research and policy should distinguish between patentable and non-patentable inventions in the field of medical invention as these two types of IP nature are associated with different roles and role intensities. These findings contribute to the literature on commercialisation of science and innovation management by demonstrating the importance of IP nature in influencing the roles of inventors. Managerial and policy implications are provided.

The Ethical, Legal, and Social Implications Program of the National Human Genome Research Institute: reflections on an ongoing experiment

For more than 20 years, the Ethical, Legal, and Social Implications (ELSI) Program of the National Human Genome Research Institute has supported empirical and conceptual research to anticipate and address the ethical, legal, and social implications of genomics. As a component of the agency that funds much of the underlying science, the program has always been an experiment. The ever-expanding number of issues the program addresses and the relatively low level of commitment on the part of other funding agencies to support such research make setting priorities especially challenging. Program-supported studies have had a significant impact on the conduct of genomics research, the implementation of genomic medicine, and broader public policies. The program's influence is likely to grow as ELSI research, genomics research, and policy development activities become increasingly integrated. Achieving the benefits of increased integration while preserving the autonomy, objectivity, and intellectual independence of ELSI investigators presents ongoing challenges and new opportunities.

One community's effort to control genetic disease

In 1989, we established a small community health clinic to provide care for uninsured Amish and Mennonite children with genetic disorders. Over 20 years, we have used publicly available molecular data and sophisticated technologies to improve diagnostic efficiency, control laboratory costs, reduce hospitalizations, and prevent major neurological impairments within a rural underserved community. These actions allowed the clinic's 2010 operating budget of $1.5 million to save local communities an estimated $20 to $25 million in aggregate medical costs. This exposes an unsettling fact: our failure to improve the lot of most people stricken with genetic disease is no longer a matter of scientific ignorance or prohibitive costs but of choices we make about how to implement existing knowledge and resources.

An empirical review of major legislation affecting drug development: past experiences, effects, and unintended consequences

CONTEXT

With the development of transformative drugs at a low point, numerous commentators have recommended new legislation that uses supplementary market exclusivity as an incentive to promote innovation in the pharmaceutical market.

METHODS

This report provides an historical perspective on proposals for encouraging drug research. Four legislative programs have been primarily designed to offer market exclusivity to promote public health goals in the pharmaceutical or biomedical sciences: the Bayh-Dole Act of 1980, the Orphan Drug Act of 1983, the Hatch-Waxman Act of 1984, and the pediatric exclusivity provisions of the FDA Modernization Act of 1997. I reviewed quantitative and qualitative studies that reported on the outcomes from these programs and evaluated the quality of evidence generated.

FINDINGS

All four legislative programs generally have been regarded as successful, although such conclusions are largely based on straightforward descriptive reports rather than on more rigorous comparative data or analyses that sufficiently account for confounding. Overall, solid data demonstrate that market exclusivity incentives can attract interest from parties involved in drug development. However, using market exclusivity to promote innovation in the pharmaceutical market can be prone to misuse, leading to improper gains. In addition, important collateral effects have emerged with substantial negative public health implications.

CONCLUSIONS

Using market exclusivity to promote pharmaceutical innovation can lead to positive outcomes, but the practice is also characterized by waste and collateral effects. Certain practices, such as mechanisms for reevaluation and closer ties of incentives programs to public health outcomes, can help address these problems.

Patent pools and clearinghouses in the life sciences

The biopharmaceutical industry is slowly absorbing the idea of collaborative patent licensing models. Recently, two patent pools for developing countries have been launched: the Pool for Open Innovation against Neglected Tropical Diseases initiated by GlaxoSmithKline (GSK), which is referred to as the BIO Ventures for Global Health (BVGH) pool, and the Medicines Patent Pool (MPP) initiated by UNITAID. Various organizations have recommended using pools or clearinghouses beyond the humanitarian dimension where many patents are owned by many different actors. As a first attempt, MPEG LA, which administers patent pools in various technology fields, is now setting up a clearinghouse for patents related to molecular diagnostics. These examples as well as the results from an empirical study provide useful insights for the design and administration of future pools and clearinghouses in the life sciences.

Role and reality: technology transfer at Canadian universities

Technology transfer offices (TTOs) play a central role in the knowledge translation and commercialization agenda of Canadian universities. Despite this presumed mandate, there is a disconnect between the expectations of government and research institutions (which view TTOs' primary role as the promotion of profitable commercialization activities) and the reality of what TTOs do. Interviews with professionals at Canadian TTOs have revealed that, at their best, TTOs support the social and academic missions of their institutions by facilitating knowledge mobilization and research relationships with other sectors, including industry; however, this does not always produce obvious or traditional commercial outputs. Thus, the existing metrics used to measure the success of TTOs do not capture this reality and, as such, realignment is needed.

Hochschullehrerprivileg—A Modern Incarnation of the Professor’s Privilege to Promote University to Industry Technology Transfer

Technology transfer offices are ubiquitous institutions within American universities. Most are underfunded and understaffed, will never turn a profit, drain limited university resources and potentially hinder innovation and knowledge transfer. Yet, inexplicably, new offices continue to be established. This article suggests that the continued hype over rare but lucrative blockbuster patents fuels much of this unnecessary expansion. These new offices, essentially mandated to discover the next big one, tend to make poor patenting and licencing decisions that effectively impinge on university knowledge transfer capabilities. This article suggests that although these offices may be necessary for some major research institutions, the bulk of academic research universities ought to share regional transfer offices that can benefit from economies of scale and experienced technology transfer officers. This article further suggests that the current status quo is the result of the somewhat arbitrary granting of patent rights to universities by the Carter era Bayh–Dole Act. Instead, this article proposes, in addition to a general overhaul in the methodology for transferring university knowledge, that a hochschullehrerprivileg or ‘professor’s privilege’ be established: academic inventors, not their bureaucratically bogged-down universities, should retain the patent rights that can then be licenced through the regional technology transfer offices without the, often ineffectual, university intervention. In addition to streamlining the current technology transfer process, such a system will also create strong incentives for research scientists to transfer knowledge and become more entrepreneurial. Although an overhaul of the American structure, while necessary, seems unlikely, such a system can nevertheless be implemented in both developed and developing countries that are futilely seeking to reproduce American successes through mimicking the current American Bayh–Dole arrangement.

Myriad Genetics: In the eye of the policy storm

From the late 1980s, a storm surrounding the wisdom, ethics, and economics of human gene patents has been brewing. The various winds of concern in this storm touched on the impact of gene patents on basic and clinical research, on health care delivery, and on the ability of public health care systems to provide equal access when faced with costly patented genetic diagnostic tests. Myriad Genetics, Inc., along with its subsidiary, Myriad Genetic Laboratories, Inc., a small Utah-based biotechnology company, found itself unwittingly in the eye of this storm after a series of decisions it made regarding the commercialization of a hereditary breast cancer diagnostic test. This case study examine the background to Myriad's decisions, the context in which these decisions were made and the policy, research and business response to them.

Impact of gene patents and licensing practices on access to genetic testing for cystic fibrosis

Cystic fibrosis is one of the most commonly tested autosomal recessive disorders in the United States. Clinical cystic fibrosis is associated with mutations in the CFTR gene, of which the most common mutation among Caucasians, DeltaF508, was identified in 1989. The University of Michigan, Johns Hopkins University, and the Hospital for Sick Children, where much of the initial research occurred, hold key patents on cystic fibrosis genetic sequences, mutations, and methods for detecting them. Several patents, including the one that covers detection of the DeltaF508 mutation, are jointly held by the University of Michigan and the Hospital for Sick Children in Toronto, with Michigan administering patent licensing in the United States. The University of Michigan broadly licenses the DeltaF508 patent for genetic testing with >60 providers of genetic testing to date. Genetic testing is now used in newborn screening, diagnosis, and for carrier screening. Interviews with key researchers and intellectual property managers, a survey of laboratories' prices for cystic fibrosis genetic testing, a review of literature on cystic fibrosis tests' cost-effectiveness, and a review of the developing market for cystic fibrosis testing provide no evidence that patents have significantly hindered access to genetic tests for cystic fibrosis or prevented financially cost-effective screening. Current licensing practices for cystic fibrosis genetic testing seem to facilitate both academic research and commercial testing. More than 1000 different CFTR mutations have been identified, and research continues to determine their clinical significance. Patents have been nonexclusively licensed for diagnostic use and have been variably licensed for gene transfer and other therapeutic applications. The Cystic Fibrosis Foundation has been engaged in licensing decisions, making cystic fibrosis a model of collaborative and cooperative patenting and licensing practice.

Gene patenting and licensing: the role of academic researchers and advocacy groups

The subject of human gene patenting has received a great deal of media attention, and many individuals and professional societies (including the American College of Medical Genetics) have voiced strong opinions against the patenting of human genes. A particular concern of the medical genetics community is the impact of gene patenting on accessibility to high-quality genetic testing. There has been significantly less media attention and public discussion of licensing practices (e.g., exclusive versus nonexclusive) and their role in promoting or limiting access to genetic testing. Current US government policy strongly encourages universities to commercialize inventions funded by federal grants (Bayh-Dole Act, 1980). Best Practice models for technology licensing have recently been developed by the National Institutes of Health and by the Association of University Technology Managers, and strongly encourage nonexclusive licensing strategies except in cases where this model will not lead to successful commercialization. In the case of genetic testing, nonexclusive licensing strategies (e.g., CF gene) have the significant advantages of encouraging multiple laboratories to make the test readily available, encouraging test improvement, and creating cost-competition. Individual investigators involved in gene discovery, and patient advocacy groups collaborating with academic investigators, have the opportunity to influence the accessibility of diagnostic testing by strongly encouraging their institutions to follow the National Institutes of Health and Association of University Technology Managers Best Practice models of nonexclusive licensing for diagnostic rights to human gene patents.

Share and share alike: deciding how to distribute the scientific and social benefits of genomic data

Emerging technologies make genomic analyses more efficient and less expensive, enabling genome-wide association and gene-environment interaction studies. In anticipation of their results, funding agencies such as the US National Institutes of Health and the Wellcome Trust are formulating guidelines for sharing the large amounts of genomic data that are generated by the projects that they sponsor. Data-sharing policies can have varying implications for how disease susceptibility and drug-response research will be pursued by the scientific community, and for who will benefit from the resulting medical discoveries. We suggest that the complex interplay of stakeholders and their interests, rather than single-issue and single-stakeholder perspectives, should be considered when deciding genomic data-sharing policies.

DNA patenting: the end of an era?

Debates on patenting DNA must evolve to reflect the global decline in filings and regional disparities in patenting activity.