Rochester wins COX-2 patent, files suit

The patent entitles the University of Rochester to royalties on the sale of all COX-2 inhibitors. Shortly after the patent was awarded, attorneys representing the University of Rochester filed an infringement suit in federal court against Searle, Chicago, and Pfizer Inc., New York, which jointly market Celebrex.

"We've filed a lawsuit against Searle and Pfizer to ensure that our legal rights are preserved, though we intend to begin discussions with both companies in an effort to negotiate licensing agreements," said Terrance O'Grady, an attorney for the University.

Searle disputes claim

Searle disputes the validity of the University of Rochester claim and said that it lacks novelty and enablement – two requirements of U.S. patent law.

The University's patent lacks novelty because COX-2 inhibitors are not a new invention, according to Searle patent lawyers, who added that a significant body of literature existed before the patent was filed in 1992 that described the potential benefits of treating people with COX-2 drugs. In lacking enablement, Searle maintains the patent fails to describe or teach, with any particularity, how to put the invention into practice and claims that the sweeping nature of the University's patent is flawed. According to Searle, the University patent is a method-of-treatment patent covering how to apply the concept in patients, in contrast to Searle's compound patent that specifically describes a molecule.

Searle also expressed disappointment about the way the suit was handled by the University. "We are disappointed to hear of this development from the media, rather than being contacted directly by the University of Rochester. Uncertainty in the market about such an important and beneficial pharmaceutical agent is not in anyone's best interest – particularly arthritis patients," said Richard U. De Schutter, senior executive vice president and chief administrative officer of Pharmacia Corp. "We have complete confidence in our COX-2 patent estate and will vigorously defend against this challenge." PR