Integra: The research tool patent revival

Charles J Raubicheck
Barry S White
Thomas J Kowalski
Daniel G Brown
Amy Leahy
Pamela Fekete

DOI:https://doi.org/10.5912/jcb69

Abstract:

There was a question as to the value of research tool patents; for instance, whether practising such patents for preclinical research would be within the research exemption of the US Patent Statute. The Federal Circuit in Integra Lifesciences I, Ltd v Merck kgaA held that the preclinical research in issue was not within the safe harbour of the research exemption, breathing life into research tool patents; but vacated the damages award because it appeared to have been influenced by hindsight knowledge that a valuable drug candidate had emerged. Integra is thus good news and bad news for owners of patents relating to discovery tools.

This paper is not to be considered opinions of Frommer Lawrence & Haug LLP or any of the firm's clients; and nothing in this paper is to be considered as legal advice, a substitute for legal advice, or as positions/strategies, etc taken/employed in, or suitable for, any particular case or set of facts.

Keywords:research tools ,patent ,Integra ,research exemption ,reach-through ,royalties ,en ,