Basic scientific researchers often file patents with “reach through” claims that attempt to cover treatment of a patent using a drug developed from the researcher’s assay. The University of Rochester’s patent covering Celebrex(r) was found invalid in 2003 after the Federal Circuit held that the written description did not adequately cover the reach through claims. (Case).
In a recent article, BSK offers some advice for capturing the value of basic research. (HTML PDF). Their advice relies on resourceful patent drafting in order to ensure that the written description requirement is satisfied. Alternatively, creative licensing may allow a research institution to link royalties for their new discoveries and assays to successful product development or FDA approval by licensing pharmaceutical companies.