Pierce Atwood Authors Amicus Brief on Behalf of BioTime in Patent Licensing Case

US Supreme Court Reconsiders 50-year-old Brulotte Rule in Kimble v Marvel Enterprises

BOSTON, March 31, 2015 - In a closely-watched case for the intellectual property, academic, and research communities, the Supreme Court today heard oral arguments in Kimble v. Marvel Enterprises. Pierce Atwood LLP, on behalf of its client BioTime, a biotechnology company focused on regenerative medicine that develops and licenses technologies used in medical research, filed an amicus curiae brief at the U.S. Supreme Court supporting Kimble’s position.

The issue in the case is whether the Court should overturn the long-standing Brulotte rule, which holds that the royalty term in a patent license agreement extending beyond the term of the licensed patents is per se unlawful. As discussed further in the brief, this bright line rule forces BioTime, and similarly situated parties, into having to negotiate overly cumbersome and costly agreement terms, which ultimately results in fewer collaborations that have the potential to produce life-saving treatments.

Will Worden, a partner in Pierce Atwood’s Intellectual Property Practice Group, notes that, “Companies whose intellectual property and technology assets are not as distinct or as easily defined as other types of commercial assets, are burdened by the narrow scope of Brulotte.  Freed from Brulotte, they could create simpler, more flexible license terms, recognizing that in the early stages the license, the outcome of the research or contributions of the various assets are often unclear.”

As discussed in Kimble’s petition and merits brief, several U.S. Courts of Appeals, federal agencies, and leading academics have criticized the Brulotte decision as “a product of a bygone era,” and asked the Court to “replace [Brulotte’s] rigid per se prohibition on post-expiration patent royalties with a contextualized rule of reason analysis.”

For more information about the case, including all the briefs, please visit Scotusblog.

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