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Taq PCR Patent Litigation
Part IV, Taq Patent Rejected
This is the fourth part of a series on the litigation over the patent for the use of Taq polymerase for the Polymerase Chain Reaction (PCR). In the first part I described PCR and introduced the case for inequitable conduct. Roche sued Promega for breach licence for selling Taq polymerase for use in PCR (Promega was only allowed to sell Taq polymerase for non-PCR use). Promega denied any wrongdoing and filed counter suit alleging that Cetus intentionally misled the Patent and Trademark Office in their patent application, and challenged the validity of the patent. In the second part I presented the case for patent invalidity, and in the third part I described the experimental use exception that allows basic researchers and those working for the government to use patented methods without license.
The judgement for the case for inequitable conduct has found that the Taq patent was obtained by fraud. The ruling stated that all claims of the patent were unenforcable. Sales of Taq were estimated at $200 million annually.
The impact on the remaining patents for other aspects of the PCR procedure remains to be seen. Roche still holds international patents on native Taq, recombinant Taq, and the PCR procedure itself. If Roche can maintain its remaining patents, then it can minimize its losses, because it owns rights to the PCR procedure itself.
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