Dana-Farber Cancer Institute is petitioning a federal court to determine that one of its scientists, Gordon Freeman, PhD, and another researcher are co-inventors on a series of cancer immunotherapy patents
previously issued to a Japanese researcher and Japanese drug company. The Institute filed suit on Sept. 25 asking the U.S. District Court in Boston to correct the list of inventors on five patents issued as recently as July 2015 to Ono Pharmaceutical
Co., Ltd. and Tasuku Honjo, MD, PhD, of Kyoto University.
The Japanese parties licensed their rights in the patents exclusively to Bristol Myers Squibb Co., which markets an immunotherapy drug, OPDIVO®, that is approved in the U.S. for treating melanoma and lung cancer.
Dana-Farber is taking this step "to confirm its ability to grant non-exclusive licenses to a wider range of companies in order to enable a faster pace of research and drug development, which will, we hope, provide greater benefit to more patients sooner,"
said Chief Scientific Officer Barrett Rollins, MD, PhD.
Over the past decade, Dana-Farber has non-exclusively licensed cancer immunotherapy-related patents on inventions made by Freeman, a world-renowned immunologist at the Institute, to nearly a dozen companies. The legal action seeks to add Freeman and Clive
Wood, PhD, formerly of Genetics Institute, as co-inventors on the patents.
The patents describe a promising cancer treatment strategy that helps patients' own immune systems attack cancer cells in the body. This approach works by blocking the "PD-1/PD-L1" pathway, the centerpiece of a mechanism that cancer cells use to escape
attack by a patient's T cells, thereby freeing the immune system to launch a more effective response against the disease.
Dana-Farber's complaint alleges that the research leading to this strategy was carried out collaboratively by Freeman, Wood, and Honjo, but that the U.S. Patent Office incorrectly issued five patents naming Honjo and three Kyoto University colleagues
as the sole inventors. The patents did not include Freeman or Wood as co-inventors.
In 2014, the Cancer Research Institute, an organization that funds immunotherapy research, named Honjo and Freeman among four winners of its William B. Coley Award "for their collective contributions to the discovery of the PD-1 receptor pathway."
The next step in the legal process is for the defendants to file their responses to the complaint later this fall, after which the court will set a schedule to resolve the question of inventorship for each of the patents.
Copy of complaint – Amended (Filed 8-10-2016)
Unleashing the Potential