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16 July 2020Big Pharma

Fed Circuit rejects Nobel Prize winner’s patent appeal

A US federal court has thrown out an appeal from  Ono Pharmaceutical and a Nobel Prize-winning immunologist, in a dispute over who made groundbreaking discoveries in cancer therapy.

In a  precedential decision issued this week, the US Court of Appeals for the Federal Circuit affirmed a lower court’s decision to add two American scientists as inventors to patents owned by Ono.

The decision is a win for the  Dana-Farber Cancer Institute, whose researcher doctor Gordon Freeman has been named as an inventor on the patent.

The dispute stems to a collaboration between Japanese scientist Tasuku Honjo, recipient of the 2018 Nobel Prize in Physiology or Medicine, and Freeman, as well as Genetics Institute scientist Clive Wood.

Through their research, they discovered antibodies used in cancer immunotherapy, which the Federal Circuit described as “groundbreaking”.

After the two sides became embroiled in a dispute over inventorship of the technology, Dana-Farber sued in Massachusetts federal court.

The US District Court for the District of Massachusetts ruled in Dana-Farber’s favour, crediting Wood and Freeman as inventors on Honjo’s patents.

Honjo and Ono, now the assignee of Honjo’s rights in the patents, sued at the Federal Circuit.

They argued that Wood and Freeman’s contributions were too far removed from the claimed subject matter of the patents, and also that they had been made public and therefore in the prior art.

Specifically, Ono argued that once a contribution had been made public, it “no longer qualifies as a significant contribution to conception”.

According to the Federal Circuit, Ono’s position was for the court to adopt an “unnecessarily heightened inventorship standard”.

“That doctors Freeman and Wood were not present for or participants in all the experiments that led to the conception of the claimed inventions does not negate their overall contributions throughout their collaboration with Dr Honjo,” the decision stated.

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