Analysis
Statement from Inventor
"Everyone was intrigued but skeptical about our work - no one realized the importance of what we had found, the NIH didn't believe us - even my own administration didn't believe us. We pushed Emory University very hard to file a patent to protect these inventions. Emory finally did, and received the rewards less than 10 years later."
Dr. Raymond Schinazi
"Suddenly, we had an incredibly versatile method for making these compounds and we could run through a study very quickly, while our friends in industry who were trying to move these same compounds forward were slugging it out and having a very difficult time."
Dr. Dennis Liotta
Implications of Case
Although Emory University had to be prodded initially to pursue patents for the discoveries of Liotta, Schinazi and Choi, once they were onboard, they remained fully committed to what would turn out to be six long, expensive years of legal wrangling.
When the patent disputes began, Emory could not have known whether or not they would emerge victorious, but they have been amply rewarded for their diligence with a half-billion dollar royalty buyout from Gilead, as well as an ongoing royalty stream from 3TC sales by Glaxo SmithKline. By siding with their inventors and staying the course, Emory was vindicated on all fronts and its researchers were able to continue their work to eradicate HIV/AIDS on a global scale.
In contrast, IP Advocate's case studies of Restasis® at the University of Georgia, extra-cellular matrix at Purdue and the PET/CT scanner at the University of Pittsburgh show what can happen when a university is at odds with their inventor. The University of Georgia's preference to side with a licensee instead of their researcher resulted in a loss estimated in the hundreds of millions of dollars. Purdue lost on appeal, pocketed no damages and lost an invaluable researcher whose work continues to change the world. The University of Pittsburgh spent millions on a legal dispute with their inventor and came away with nothing but a smear on their reputation.
Emory University's conduct in this case is reflected in its results: their intellectual property is intact, their researchers still happily in their employ, they have functional, ongoing relationships with their defendants and counterclaimants and are able to facilitate and cultivate continued research that is impacting lives both in the U.S. and worldwide.
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