Cold Spring Harbor Sues Law Firm for Mishandling Patent Applications

Cold Spring Harbor Laboratory has sued its own law firm, Ropes & Gray in Boston, charging that an attorney there "committed malpractice" in his filing of patent applications on behalf of the lab. In a lawsuit filed last month, Cold Spring Harbor says that Ropes & Gray and one of its former partners, responsible for filing patent applications on discoveries in RNA interference (RNAi) by Cold Spring Harbor researcher Greg Hannon, instead "relied on copying extensive portions of text—essentially verbatim—from a prior patent application" by Nobel prize-winner and RNAi researcher Andrew Fire of Stanford University.

The Patent and Trademark Office (PTO) reportedly first picked up on the copying, says the lawsuit, and cited Fire's application as "prior art" against Hannon's invention. A review by a lawyer based at Cold Spring Harbor found that one of the patent applications "contains approximately 11 pages of text that is almost identical to text found in the Fire application and the Fire patent."

PTO rejected many of Cold Spring Harbor's claims on Hannon's work, and others are still pending. Cold Spring Harbor hired another law firm to provide PTO with additional facts, in hopes of garnering the patents.

But even if that pans out, Cold Spring Harbor officials say they've lost millions. They want as much as $82 million paid to them —money they say they've lost in licenses and royalties on Hannon's discoveries in gene silencing and on a start-up company that couldn't launch because the discoveries were denied patents. The lab is seeking a jury trial to award it damages.

On Tuesday, Ropes & Gray fought back, filing a motion to dismiss the case. It argues that the claim of legal malpractice "is not only speculative and implausible on its face, but also flatly contradicted by the indisputable documentary record." That's because Cold Spring Harbor alleges that Hannon's patents were rejected by PTO because of the copying, but, says Ropes & Gray, additional claims were also rejected by PTO.

Adding to the drama is the mysterious departure of the attorney in question, Matthew Vincent. His employment with Ropes & Gray was terminated last spring, according to the lawsuit, and he later resigned from the Massachusetts Bar. This came after he secretly created a patent database to bill the firm's clients and Ropes & Gray itself.

One source of disagreement is how much Cold Spring Harbor actually knew about what was in the patent applications; while its lawsuit claims that Hannon didn't know about the copying until March 2008, when a Cold Spring Harbor attorney informed him of the news, Ropes & Gray says that "Dr. Hannon (along with his four co-inventors) signed declarations under oath ... confirming that each application accurately disclosed the work for which they were seeking patent protection."