NEWS
Researchers in Europe are benefiting from the
European Patent Office’s (EPO) decision to
prune several high-profile patents, a result of
key differences between US and European
policy. The EPO’s rulings broaden avenues of
research that would otherwise be choked off by
licensing fees, but some scientists and citizen
groups say the decisions are still not enough.
On 6 July, the EPO restricted a patent on the
OncoMouse model for cancer research from
including all rodents to just mice. In May, the
agency revoked one of three patents Salt Lake
City–based Myriad Genetics has on the breast
cancer gene BRCA1. Months earlier, the EPO
had granted a patent similar to Myriad’s on
another breast cancer gene, BRCA2, to Cancer
Research UK. The charity announced in August
that it would allow free access to academic
researchers, undermining Myriad’s position.
Unlike the US, Europe forbids patents that
threaten ‘‘ordre public’ or morality.’ The EPO
invoked this clause against the OncoMouse
patent and, in July 2002, the Edinburgh patent
on stem cells.
The agency is also less flexible in allowing
corrections to patents, says Siobhan Yeats,
EPO’s director of Examination and Opposition
in Biotechnology. Corrections to Myriad’s
initial BRCA1 patent, which was found to have
gene sequencing errors, would not be allowed
in Europe, says Yeats.
Those sequencing errors might be enough to
overturn the other two BRCA1 patents in
Myriad’s portfolio, says Gert Matthijs, a geneti-
cist at the University of Leuven, Belgium. But
scientists cannot rely on such technicalities to
battle patents, he notes.“What will happen with
other major patents that don’t have errors?”
Matthijs says he is worried about patents on
BRCA2, against which he and others filed an
opposition earlier this year, and on a gene
related to the disease hemochromatosis, for
which a European patent is expected next year.
Those patents lack an “inventive step,” he says.
Isolating and sequencing a mapped gene “is a
major breakthrough but not a major invention.”
Fortunately for Matthijs, the EPO allows ‘rou-
tine’ questioning of patents, and about 80% end
up being limited. One reason for this is that the
cost for opposition is in the tens of thousands of
dollars, compared with hundreds of thousands
in the US, giving even citizen and animal rights
groups the opportunity to contest patents.
Still, the road ahead for these patents is
unclear. Patent opponents argue that the
OncoMouse patent, which had already been
restricted in 2001 from covering all mammals,
should be overturned completely.“It just solves
a small controversy on the broad scope of the
patent,” says Marcos Malumbres, a researcher at
the Spanish National Cancer Centre.
The OncoMouse patent can no longer be
challenged except at the level of EPO member-
states. The BRCA1 and Edinburgh decisions are
awaiting appeals. In the case of BRCA2, the
existence of two conflicting patents on the same
gene has led to confusion among researchers—
and at the EPO itself. Asked what a researcher
should do in the BRCA2 case, says EPO’s Yeats,
“Consult a lawyer.”
David Cyranoski, Tokyo
High-flying patents get their wings clipped in Europe
882 VOLUME 10 | NUMBER 9 | SEPTEMBER 2004 NATURE MEDICINE
The OncoMouse patent is one of several whose
scope is limited by the European Patent Office.
California dreaming about ‘ill-conceived’ stem cell plan
Come November, California might become the
first state to fund stem cell research, in direct
opposition to the federal government’s policy.
If voted in, Proposition 71 would allow the
state to issue bonds for up to $3 billion over ten
years for the research. But given the state’s $10
billion deficit, some groups are questioning
whether the proposal is financially sound.
Dismayed by the restrictive federal policy,
researchers Irving Weissman and Lawrence
Goldstein, Hollywood producer Jerry Zucker
and real estate developer Robert Klein
conceived the proposal in 2003. Klein and
Zucker both have children with diabetes—a
leading candidate for stem cell therapies.
By mid-August 2004, the campaign had
garnered widespread publicity and about $5.3
million. The goal is to raise $20 million by
November. The project could be just what the
doctor ordered for the state’s ailing high-tech
industry, says Jim Cunneen, president of the
Silicon Valley Chamber of Commerce. Apart
from researchers—and, presumably,
patients—the initiative could indirectly
benefit venture capitalists, biotechnology
companies and real estate developers.
But the project’s hefty price tag has
provoked some groups—such as Doctors,
Patients and Taxpayers for Fiscal Respon-
sibility—to call it “ill-conceived.”Although the
proposal is structured to postpone draining
tax revenue, repaying the bond is expected to
cost $6 billion over 30 years.
Opponents argue that much of the money
would line the pockets of California’s real
estate developers. Up to 10% of the $3 billion
pie would go to building new research centers.
But if the federal government limits stem cell
research in buildings funded with federal
grants, scientists will need independent labs,
says Zena Werb, a researcher at the University
of California in San Francisco.“It costs over
$100 million to build a single research
building,”Werb says.“That’s one of the reasons
that the bond calls for so much money.”
Another 3% of the funds would create the
California Institute for Regenerative
Medicine, which will administer independent
audits, public hearings and annual reports.
Funds would be monitored by a public
committee and a board of directors including
scientific experts, patient groups and
California businesses. Evaluation of grant
applications would be modeled after the
NIH’s system, says Goldstein.
The bond’s size would give researchers a
stable framework unaffected by politics or the
economy, Goldstein says.“We can’t work in
this political environment,” he says.“Scientists
need to know that they can start a long-term
research project without having to worry
about the next election.”The stability would
help encourage young investigators to enter
the field, he adds. California might also benefit
from royalties on research discoveries, and
potential cures could cut its healthcare costs,
which at $110 billion are the nation’s highest.
Asked whether the funds might not instead
go to California’s struggling school system or
other problems, Goldstein says,“Sure, there
are lots of other things that the state could do
with the money, but it’s not as though there
are five other proposals put forward with
credible plans … We have an actual plan.”
Kris Novak, San Francisco
Oak Ridge National Laboratory
© 2004 Nature Publishing Group http://www.nature.com/naturemedicine