Last Updated Apr 1, 2010 1:07 PM EDT
By contrast, companies that are smart enough to make like Allergan (AGN), which has surrounded its non-patentable Botox botulinum toxin with process and manufacture patents, could prosper under the new regime.
The Myriad ruling struck down patents on genes related to breast cancer because they existed in nature before the company figured out how to isolate them. If upheld, that could have consequences for any company whose fortunes are dependent wholly on extracting a product's active ingredients from an animal or plant discovery. Potential examples include:
- Elan (ELN)'s Prialt, a painkiller based on the South Pacific cone snail.
- Any company seeking to develop a new erectile dysfunction treatment based on the Viagra-like effect of the venom of the Brazilian wandering spider.
- Any company seeking to develop an osteoporosis treatment from the fructans found in the agave (tequila) plant.
- Any company developing "superbug" antibiotics based on "resistance genes" found in the droppings of polar bears or deer.
- Protein Sciences' flu vaccine based on flu genes that are grown in caterpillar ovaries.
- Genzyme (GENZ)'s gene therapies, some of which are naturally occurring enzymes grown in cell cultures.
But a reading of the plain language of Myriad shows that if your patent rests solely on the mere isolation or purification of something that already exists in nature, then you'll need more than that to maintain your exclusive rights to it.
Luckily, there's an existing business model for just such a case. Allergan has never really held a patent for Botox, which is a purified version of the naturally occuring botulinum toxin. Botox was approved in 1989 -- 21 years ago -- and still reliably generates $1.3 billion in sales every year. Competition only arrived last year in the form of Medicis (MRX)'s Dysport. Allergan's secret: It patented everything else about the drug. As Fortune once wrote:
Patent expiration, normally the bane of a decade-old drug, doesn't seem to be an issue. Like any naturally occurring substance, Botox is difficult to patent. Thus Allergan does not have a patent on the neurotoxin itself. But the process of making and harvesting it for medical purposes is a company secret akin to the formula for Coca-Cola, though one can assume that Allergan is not buying cans of soup and tuna gone bad, then siphoning off the botulinum.Which all suggests that the panic among biotech lawyers is misplaced: In the end, it's the science, not the law, that generates profits.