Cox-2

Supreme Court Declines Patent Review

The U.S. Supreme Court has declined to review a federal appeals court’s decision on a University patent involving the class of pain relievers known as cox-2 inhibitors.

Rochester had petitioned the court to hear the case after a three-judge panel of the federal appeals court in February 2004 upheld a lower court ruling that declared the University’s patent invalid on the grounds that it did not provide sufficient information to meet what the court described as a “written description” requirement.

Last July, the federal appeals court had denied, on a 7 to 5 vote, a request by the University for a hearing by the full panel of judges.

“We are, of course, very disappointed in the Supreme Court’s decision,” President Jackson said. “The lower court decision invalidating the University’s patent represents a fundamental shift in patent law, changing the balance between protection of basic research and protection of commercial products. The decision was detrimental not just to us, but to research initiatives at universities and innovative companies that concentrate on early-stage research.”

The case stems from 1992, when Rochester filed an application to protect the work of a Medical Center team led by biochemist Donald Young. The University researchers discovered the gene that contains the chemical instructions for producing the enzyme cox-2 and pinpointed the enzyme’s role in causing inflammation.

The University had filed an infringement lawsuit against the pharmaceutical company Pfizer, which makes the popular cox-2 inhibitor Celebrex.

While the fact was uncontested that the University’s discovery of a gene and biological process enabled companies to create new drugs, attorneys for the University say the federal appeals court in effect imposed a second hurdle for such patents by saying that the Rochester patent was invalid because it did not include the precise chemical formula for such a compound.