Taq patent

Dr. Duncan Clark Duncan at nospam.demon.co.uk
Tue Feb 1 08:36:15 EST 2000

In article <ehovig-3101002304450001 at pcdnr83.uio.no>, Eivind Hovig
<ehovig at radium.uio.no> writes
>I am not a lawyer, but you use the term "alleged". As a court of law has
>found them guilty, I would tend to put more emphasis than "alleged" on the

I know I said alleged but I was also thinking about the European patent
which I presume (need to check) used the same data in it's claims and
according to the rumour mill the other day, has been upheld. So you have
US court judging the opposite to the EU.

>Especially given the legal resources Roche have available. I
>agree that guilt by association is not justified. But on the other hand,
>if the ruling stands, a number of people in Cetus have been found guilty
>of fraudulent behavior, and the company in which the Nobel laureate worked
>at the time has obtained a rather large blemish, dont you think? And there
>can be no doubt that Mullis was heavily involved in this research in this

The doubt will inevitably always be there so one has to put a question
mark over the work. I just don't like tarring everyone with the same

>> I think this is possibly being blown up out of all proportion. If
>> someone was to go through anyone's lab books of 10-20 years ago could
>> they remember the exact circumstances about what and why they did such
>> and such an experiment. You must also remember that the final patent
>> application evolved out of previous applications over a number of years
>> with umpteen changes over time including applicants etc. 
>I think I tend to disagree with you here, as we are talking of a company
>that I suppose would need to follow GMP/GLP. And given the fact that we
>are talking enourmous amounts of money, and that even at that time this
>should be anticipated. 

I think the last sentence is the crux. Could one really anticipate how
big it would become. If it hadn't, no one would have gone to court etc. 

>> As Roche is appealing (and if they lose that there is yet another higher
>> court to appeal to), it will take years to get a final decision,
>> possibly even after the patent has expired.    
>So much for value of the american judicial system in patent cases, I would
>argue. And it does not make the situation prettier.

I agree it is crazy to drag on for so many years. Only the lawyers get

>> Without PCR and it's spin off's e.g. cycle sequencing, the genome would
>> be many many years off completion and the techniques we take for granted
>> would not exist.
>Or to look at it another way: A 1 liter bacterial culture, using
>purification procedures that take one to two days, one gets approximately
>1 million (!) units of Taq, ore more. Looking at it like this, from an
>academic institution, simply means that vast governmental funds have been
>reallocated to private biotech due to the protection by the patent and its
>superprofit harvesting.

I could not agree more here. But please put the blame onto the patent
holder and not the licensees. Of the licensees that I talk to, none make
money out of straight Taq. I can make more money on a buffer! Totally
mad. But if there were no licensees I presume one talks monopoly and
what the US government is doing to Microsoft would then happen to Roche

> And you are also saying that the spinoff
>inventions/discoveries would not have been possible without the patent. I
>think you should reconsider that statement, not least as you make no
>effort to argue that academia could not have produced the same within a
>short time of the patent.

No. You are interpreting it differently from what I really meant. I
should have specified better that I was talking here about the PCR
process not the Taq patent. It is the process patent that is important.
If Mullis hadn't discovered PCR would be still be waiting now? As Taq
had been purified years before and oligo synthesis had again been around
for years, no one else thought of the idea although the technology was
available. The technique now seems obvious but it still needed someone
to think of it and prove it. As I say it could have been done years
before. However given the way US academics appear (from over here) to
patent anything that moves, would they have never patented PCR? If they
had maybe the royalty would be less but it is all hypothetical and we
can only deal with the current situation. 

The US native Taq patent is pretty irrelevant in the overall scheme. OK
Promega sells native Taq but what about all the other PCR enzymes out
there that people need. If they all felt strongly enough they could
boycott all licensed enzyme. I am 100% confidant that that will never

I think what really got up everyone's nose was that Cetus patent claimed
for native enzyme saying the original published enzyme purification did
not give the same enzyme, now totally disproved. If they had solely and
I mean solely claimed for the recombinant enzyme that they were the
first to do then I doubt anyone would have challenged.  

We would however still be paying the royalty and complaining.

Don't of course forget that there other issues in court between Roche
and Promega that are more contractually based than just the Taq patents.
As I say this will run for many years to come. 

The problem with being on the cutting edge is that you occasionally get 
sliced from time to time....

Duncan Clark
DNAmp Ltd.
Tel: +44(0)1252376288
FAX: +44(0)8701640382

More information about the Methods mailing list