Joint Venture Intellectual Property Dispute
An international biotechnology joint venture between four companies was formed to acquire DNA sequence information for selected species and to identify genes that controlled a number of commercially important traits for product quality and for agricultural productivity. The four partner companies contributed various technologies to the joint venture and shared specific development and intellectual property rights within a field of use within their target businesses. Each of the joint venture partners maintained separate technologies from their in-house research and enjoyed intellectual property rights from joint venture technologies in fields of use that were independent of the joint venture.
A dispute arose when one of the joint venture partners applied independently for a PCT patent in a field of use that appeared to be covered by the joint venture bylaws. The patent sought intellectual property protection for several genes and claimed increased productivity within the agricultural field of use of the other three joint venture partners. The complainant joint venture partners exercised rights to conduct an investigation of the defendant joint venture partner's records of discovery and business records to determine the chain of ownership for the disputed technology.
The investigation of the defendant partner's business practices, laboratory notebook records, and DNA sequence databases was undertaken to determine: date of DNA sequence discovery, dates and scope of experiments carried out to ascribe utility to the DNA sequences, name of the technician, payroll records, comparison of specific sequences to DNA sequences to those included in the joint venture DNA database. These investigations were carried out on DNA sequences in the research and development pipeline as well as DNA sequences included in specific patent applications.
The investigation revealed that the defending joint venture partner regularly moved technicians between projects related to the joint venture and projects unrelated to the joint venture during times that payroll billing records showed that those technicians were being funded solely by joint venture funds. The investigation of laboratory notebooks also revealed that it was common practice for technicians to be simultaneously including both joint venture DNA sequences and non joint venture sequences in the same experiments further complicating the chain of ownership.
Following the examination of laboratory records, the number of DNA sequences subject to intellectual property rights dispute increased to include several hundred DNA sequences that appeared to be either identical or had substantial similarity to DNA sequences covered by the joint venture bylaws. Specifically the development of these additional DNA sequences were being applied to product development pathways that were outside of the scope of the joint venture or being excluded from records relevant to joint venture discovery. Examination of the disputed patent application revealed that several claimed fields of use for the claimed DNA sequences were included within the scope of the joint venture charter.
Settlement over the disputed DNA sequences and intellectual property rights was reached out of court.
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