German Research Institute Accuses MIT, UMass, and Whitehead of Wrongdoing on Patent

A prestigious German research institute has sued three American academic institutions — the Massachusetts Institute of Technology, the Whitehead Institute for Biomedical Research, and the University of Massachusetts at Worcester — in a case that accuses the three of improperly claiming rights to inventions that belong to the German institute.

While it is not uncommon for academic organizations to get embroiled in disputes over invention rights when faculty members from several institutions have collaborated on research, as these organizations’ researchers did in the 1990s, such disagreements usually are resolved without a court fight.

The case revolves around two groups of inventions related to RNA interference. Patent rights to one group of inventions belong solely to the German institution, the Max Planck Society for the Advancement of Science. Rights to the other group of inventions are shared among the four institutions.

According to the lawsuit, filed last week in state court in Boston, Whitehead and the other defendants have “misappropriated inventions owned by Max Planck and misrepresented those inventions as their own.” Max Planck says that by seeking to have those invention rights considered as part of the patent jointly owned by all four academic institutions, the three defendants are undermining the chances that Max Planck will be awarded a patent for the inventions that it owns solely.

By prior arrangement, the parties agreed that Whitehead would be responsible for obtaining patents on the jointly owned inventions, the lawsuit says.

The technology-transfer arm of Max Planck and a company based in Cambridge, Mass., that has licensed rights to both sets of inventions, Alnylam Pharmaceuticals Inc., have joined the German institute in the suit.

The lawsuit asks the court to order Whitehead to stop its pursuit of patents on the jointly owned inventions. It also seeks an undetermined amount in damages. —Goldie Blumenstyk