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Cold Spring Harbor Laboratory Announces Settlement in Patent Malpractice Case Against Ropes & Gray

CSHL ramps up licensing of its short-hairpin RNA technology already used widely in cancer research and drug development.

by Cold Spring Harbor Laboratory
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Cold Spring Harbor, NY – Cold Spring Harbor Laboratory (CSHL) made public today the settlement of a long-running malpractice suit against law firm Ropes & Gray and attorney Matthew P. Vincent days before the case was to go to a jury in Massachusetts state court.

Malpractice impeded the timely issuance of a CSHL patent on short-hairpin RNAs (shRNAs). These are engineered molecules that allow researchers to turn off expression of virtually any target gene or combination of genes in human and other mammalian cells. Ultimately patented by CSHL in 2012 while it simultaneously pursued the malpractice suit, the Laboratory’s proprietary shRNA technology is now a widely used biomedical research tool in cancer research and drug development.

"We are pleased with the settlement and final resolution of this dispute with Ropes & Gray," said Dr. Bruce Stillman, CSHL President & CEO.

The shRNA technology at issue was developed by CSHL Professor Gregory Hannon, Ph.D., who is currently a Howard Hughes Medical Institute Investigator. It represents a considerable advance over other technologies, including the long-stranded RNA technology developed by Nobel Prize winners Drs. Andrew Fire and Craig Mello. The Hannon shRNA technology has had a powerful impact across academic and industry medical research, including its use to identify new drug targets and therapies for cancer.

“Several companies, recognizing the value of this technology, have already signed licenses with CSHL,” said Teri Willey, CSHL Vice President for Business Development and Technology Transfer. “We believe many other companies are actively using the technology in drug development and we look forward to working with them to put appropriate licenses in place.”

CSHL’s lawsuit centered on the actions of Ropes & Gray attorney Matthew P. Vincent, who was engaged in 2000 by CSHL to file the patent on the Hannon shRNA technology. The application Vincent submitted contained language copied directly from a patent application previously submitted by Drs. Fire and Mello. CSHL identified the problem in the application and brought it to the attention of Ropes & Gray, subsequently filing a malpractice suit against Ropes & Gray and former partner and lawyer Vincent, in 2010. After transferring the applications from Ropes & Gray, CSHL obtained three US patents as well as patents in Europe.

For information regarding taking a license to the US and foreign counterparts of the Hannon shRNA technology patents, please call 516-367-8301 or email: techtran@cshl.edu