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1 December 2022AmericasStaff Writer

MSD accuses university of patent contract breach

Ex-partners collaborated on a clinical study for a cancer treatment | Pharma firm insists that it has exclusive licensing rights | MSD | John Hopkins.

Merck & Co (known as Merck Sharp and Dohme outside of the US) has taken John Hopkins University to court over its alleged breach of a contract for a joint research collaboration.

In the suit—filed on November 29 at the US District Court for the District of Maryland—Merck Sharp and Dohme (MSD) alleged that John Hopkins obtained patents for inventions based on the joint study and exclusively licensed these patents to others.

MSD and John Hopkins had partnered to design and conduct a clinical study administering cancer drug Keytruda (pembrolizumab) to cancer patients having certain tumours, according to the suit.

In addition to providing Keytruda to the joint research study subjects, MSD said it had contributed approximately $3.5 million to conduct the study.

A contract between the pair, partly set out in the claim, allegedly provided that inventions jointly created would be the joint property of MSD and John Hopkins.

It further provided that John Hopkins would promptly notify MSD in writing of any such inventions, and the parties would consult and agree upon the patent filing and prosecution strategy for all joint inventions.

MSD also alleged that, according to the contract, it had an exclusive option to obtain an exclusive, worldwide licence for commercial purposes.

However, following the conclusion of the study, John Hopkins allegedly “obtained issuance of US patents citing the joint research study, but inaccurately claiming that the purported inventions arose prior to, and independent of, the collaboration with MSD”.

John Hopkins also allegedly enabled two other companies to obtain rights in the patents without informing the pharma company.

MSD also claimed that, following the grant of a patent in 2021, John Hopkins asked it to take a licence under the patent, requesting that MSD pay hundreds of millions of dollars, tied to the sales of Keytruda.

“John Hopkins’ activities in obtaining issuance of patents, which were licensed to others, and then trying to enforce these patents against Merck, was in breach of John Hopkins’  covenants as part of its contract which Merck entered into in order to engage in the clinical study,” said the claim.

MSD has asked the court to find that John Hopkins has breached the clinical study contract, that its Keytruda products don’t infringe the university’s patents and that John Hopkins can’t assure its patents against MSD, alongside damages.

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