license for TAQ

Tracy Aquilla aquilla at salus.med.uvm.edu
Wed Apr 24 09:53:24 EST 1996


In Article <4lg708$5n0 at ox.mc.edu>, "Robert G. Hamilton" <rhamilto at mc.edu> wrote:
>aquilla at salus.med.uvm.edu (Tracy Aquilla) wrote:
>
>>You seem to be forgetting about the fact that certain exemptions are made
>>for non-profit institutional research use. As far as I know, no academic
>>researcher has ever been sued for patent infringement for using Taq
>>polymerase (or any other patented reagent/method).
>
>What exemptions? It seems to me that Roche's view is that they have a 
>"right" to require a liscence for ALL USE OF PCR, a liscence that 
>requires a substantial payment to Roche.

Roche DOES have the right to require a license for the use of Taq pol and
PCR, since they hold patents covering both the enzyme and the PCR process.
Whenever you buy licensed Taq, you have purchased a license to use it
(that's why unlicensed Taq is less expensive). Roche also has the right to
enforce these patents, however, based on my limited knowledge of the
statutes, non-profit research use is exempt from enforcement. That doesn't
necessarily mean that they can't or won't try to enforce these patents in
such cases (i.e. non-profit research), but that they'd be very unlikely to
prevail in court, and hence probably aren't foolish enough to waste money
trying. Perhaps you can guess my opinion on whether or not to use unlicensed
Taq for non-profit research?

>The only reason they are not taking actions against researchers is because the
>lawsuit with Promega has not been resolved.

I believe the main reason they aren't suing researchers for infringement is
that they know it would be a waste of time and money.

>If Promega loses, I personally expect Roche to go after scientists using
>"unliscenced" Taq. unliscenced thermal cyclers, etc.

What would Roche gain by suing research scientists? We scientists aren't the
ones making millions of dollars selling equipment and reagents for PCR!

>Imagine if Visicalc were patented in the manner Roche desires for PCR. We 
>would all still be using Visicalc! No Excel or Quattro pro, as Microsoft 
>and Borland would not have been able to make the invesment necessary to 
>improve spreadsheet software. We would all be limited to what Visicalc 
>could come up with given no market pressure whatsoever! (That is, we 
>would all be using Visicalc).

The patent laws were designed to stimulate technological developments, not
to inhibit them. It's actually legal to 'design around' a patent and this is
commonly done. This is one reason why computer software is not patentable
(with very few exceptions). The US Supreme Court recently heard Lotus vs.
Borland, upholding the appeals court decision that the macros controlling
menu commands are NOT patentable. This narrows potential software patents
significantly.

Here's a more realistic 'what if' scenario for you to imagine: if diagnostic
reagents, processes, therapies, etc. weren't patentable, there probably
wouldn't be very many biotech companies investing in the research necessary
to develop these things, and most of those catalogs on your lab bench would
be a LOT thinner.
Tracy



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