san diego

A legal dispute has blown up over the rights to a potentially valuable technique developed at the University of Hawaii for introducing foreign genes into living organisms.

Anthony Perry, a molecular embryologist formerly at the Babraham Institute in Britain who has been working with Ryuzo Yanagimachi's renowned mouse-cloning team at Hawaii, is suing the university over exploitation of the novel transgenic technique. The technology could have broad applications in genetically engineering mammals to produce human substances (see Nature 394, 408; 1998).

In a lawsuit filed in state court in Honolulu last month, Perry alleges that the university improperly licensed the technology to a small biotechnology firm without his permission. He has asked the court to rule on the university's actions and to rectify alleged violations.

Walter Kirimitsu, Hawaii's general counsel, says that the university holds exclusive patent rights and title to the transgenic technology, and licensed it appropriately. The university will respond to Perry's lawsuit in court next week, and a judge will consider the legal arguments at subsequent hearings.

Although disputes involving patent rights and universities are not uncommon, the case could stir considerable controversy, given the volatility of public attitudes towards genetic engineering and cloning experiments.

The disputed technology is called ‘mammalian transgenesis by intracytoplasmic sperm injection’, or ICSI transgenesis. It was reported in a paper in May in Science by the so-called ‘Team Yana’, with Perry as the lead author (see Science 284, 1180-1183; 1999).

Last year, the team reported full development of mice from a cloning technique (see Nature 394, 369–374; 1998). Although the current legal dispute centres on the novel transgenic method, it may in future envelop the team's cloning process as well.

In court records, Perry claims that it was he who invented the transgenic technology, along with other novel methods employed by the team. The technology can be used to genetically engineer animals — such as pigs, cattle or sheep — to produce human hormones or proteins, or drugs.

Typically, a US university owns the rights to any technology developed by its scientists, while the patent bears the name of the scientific inventor once the lengthy filing process is completed. The university can negotiate with a company or organization for development of a technology. The university and scientific inventors then share the royalties from any commercial product.

In the current dispute, however, Perry — who was not employed by the university at the time — says in court records that the university licensed the transgenesis technology without his consent. He also questions the university's title to the technology, and seeks title to the technology for development through a company with which he is associated.

The circumstances have been complicated by the fact that Perry's work in Hawaii was carried out while he was a European Molecular Biology Organization fellow. Another key author of the Science and Nature papers is Teruhiko Wakayama, who was in Hawaii as a fellow of the Japanese Society for the Promotion of Science before joining the university late last year.

After leaving his post at the Babraham Institute in Cambridge, Perry sought to join the university as well. But his hiring has been suspended pending the outcome of the dispute. Funding for Yanagimachi's laboratory comes from the US National Institutes of Health.

The University of Hawaii licensed technological inventions from Yanagimachi's lab to ProBio, a company headed by Australian businessman Laith Reynolds of Perth. Ironically, it was Perry who first proposed a university deal with Reynolds. But Reynolds and Perry have since fallen out, reportedly after Perry became upset that the role of the scientists involved in the early experiments was being minimized.

Reynolds calls Perry's legal action “disingenuous”, and adds: “We are continuing with our commercial activities while the university sorts out its problems with one of its staff.”

Perry and Wakayama have since formed their own company, BiogeneSys International LLC, with funding from John Henry Felix, a member of the board of trustees of the Salk Institute in La Jolla, California. Perry and Felix — a well-connected Honolulu politician and former owner of a chain of mortuaries — have sought to add Salk scientists to their firm's scientific advisory board.

As the civil lawsuit began, Perry's attorney asked a Hawaii administrative court to declare void the university's deal with ProBio, arguing that it violated state procurement law. An administrative judge is expected to rule soon on that request.