Four law firms have secured contracts from the National Institutes of Health potentially worth hundreds of millions of dollars over 10 years for contested proceedings over patents awarded in the biotechnology, chemistry, and mechanical/electrical/software fields. Foley & Lardner will begin work soon on its first NIH contract, worth up to $208 million. Mark Kassel, who chairs Foley’s chemical and pharmaceutical practice, says the NIH has a right to review the contracts annually and his firm is likely to see “some fraction” of the $208 million. “It’s all based on what the need is,” Kassel says. Three other recipients previously received NIH contracts. San Francisco-based Townsend & Townsend & Crew could see up to $209 million, and Chicago-based Leydig, Voit & Mayer is looking at $183 million. McAndrews, Held & Malloy, whose only location is in Chicago, won a contract worth up to $181 million. Townsend and Leydig won other NIH contracts earlier this year and will focus their NIH efforts in their home offices.
The NIH Office of Technology Transfer hires private lawyers to help it steer technology developed in NIH laboratories and at the U.S. Food and Drug Administration through the patent process. The office filed 343 U.S. patent applications and received $92.7 million in patent royalties in fiscal year 2008, according to its online statistics. According to Kassel, the contracts with the law firms call primarily for litigation support, patent interferences, and inter partes reexaminations. The bulk of Foley’s interferences will be handled out of its D.C. office, according to George Quillin, a partner in the office. The firm’s payday will depend, in part, on the NIH’s appetite for litigation. “I’ve been involved in interferences where the other side gives up right away,” he says. “Or it could be a very closely fought [court battle].”
Source: The Blog of Legal Times