Web bounty hunters chase research patients

Nature Medicine, June 2001 Volume 7 Number 6 p 646

Kathleen McGowan

New York

                  A Massachusetts dot-com has taken on the role of Indiana

                  Jones in the jungles of high-tech patent law. BountyQuest, a new

                  Internet site that trades hard-to-find intellectual property

                  information for quick rewards has set up an online "most

                  wanted" board that has attracted a worldwide network of sleuths

                  by offering bounties in exchange for damaging dirt on biotech

                  and software patents.

 

                  Since its launch last fall, BountyQuest has posted several dozen

                  rewards for 'prior art', as it is known, on patented biotech

                  inventions, ranging from pharmaceutical treatments for erectile

                  dysfunction to a method for the overexpression of human

                   -galactosidase A in mammalian cells. Many of the information

                  seekers are looking to avoid licensing fees or shoot down a

                  patent infringement case, and don't want to pay the tens or

                  hundreds of thousands of dollars that a good attorney might

                  charge for a prior art search.

 

                  The latest target is California-based Incyte Genomics, whose

                  relational database patent was undermined by BountyQuest last

                  month. In response to an anonymous offer of a $10,000 bounty,

                  German graduate student Holger Blasum tracked down

                  evidence that seems to invalidate one of Incyte's 10 genomic

                  database patents. The patent was filed in 1997, but Blasum, a

                  computer scientist with a background in molecular biology,

                  realized that most genomic database development projects in

                  the mid-1990s were collaborative.

 

                  After a quick literature search, Blasum found two journal articles

                  on the same subjects from 1993 and 1994, and submitted them

                  to the website. "It seemed easy enough to do, and because I

                  have some understanding of the patent system I know there are

                  lots of bogus patents," says Blasum. "This was obviously one of

                  the very weak ones."

 

                  According to BountyQuest's patent attorney, this evidence of

                  prior art poses as a serious challenge to Incyte's proprietary

                  claim on the technology. But Incyte general counsel Lee

                  Bendekgey says that no legal tussles or licensing agreements

                  are currently pending with regard to the database in question,

                  and as a result, Blasum's discovery will not have any immediate

                  impact. "We still don't know what this means for the patent in

                  question," says Bendekgey. "We may end up sending it back to

                  the [United States] Patent and Trademark Office and asking

                  them to re-examine the patent to see if they think we are still

                  entitled to it. We don't want to be a company that people think of

                  as having or trying to get invalid patents, so if this invalidates our

                  patent I would just as soon know about it."

 

                  Either way, Blasum gets $10,000 for his work, a quarter of

                  which he intends to donate to a European anti-patent

                  organization. And there are apparently no hard feelings on

                  Incyte's part. In fact, Bendekgey says he wouldn't rule out using

                  the service himself. "For $10,000, you can have the whole world

                  looking for prior art for you," he laughs. "It's a pretty cheap way

                  to find out."

Category: 18. Value of Patents, 19. General Patent and Biotechnology Information