PCR dispute drags in researchers

An ongoing patent suit between Promega Inc. and Hoffmann-LaRoche has taken an unusual turn, with Promega charging that Roche is challenging patent law and practice regarding the "experimental use exception," which Promega said allows scientists engaged in basic research to use patented products and processes without restrictions and without being subject to licensing fees.

Roche has denied that the experimental use exception is its target, pointing out that the new angle in the dispute arose only after it complied with Promega's request to provide a list of more than 40 U.S. universities and government laboratories that Roche believes are infringing its patents for polymerase chain reaction.

Nevertheless, the argument raises an issue at the nexus of research and commercialization, in which there is virtually no statutory or case law.

The Madison, Wis., company requested the Roche list as part of its defense in the 1992 suit, which alleges that Promega infringes Roche's PCR patent and induces others to infringe by selling the TAQ enzyme for PCR use. Promega in 1993 asked Roche to provide a list of alleged infringers.

The exemption

According to Promega President and CEO William Linton, the company obtained a license from