Who owns the clones?

A scientist sues the University of Hawaii for the rights to his research.

By Alex Salkever
Published August 16, 1999 8:00PM (UTC)
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In July 1998, the world's scientists were stunned at an announcement from the University of Hawaii. As flashbulbs popped and reporters scribbled at a press conference in New York, Ryuzo Yanagimachi, eminent professor of anatomy and reproductive biology, announced that his three-man team had replicated successive generations of a cuddly black mouse named Cumulina.

The implications of their announcement were enormous. Unlike the Scottish researchers who cloned Dolly the lamb but had been unable to repeat their feat, the UH team had cloned dozens of mice that were verifiably genetically identical. Until the breakthrough, cloning in mammals and other higher organisms had been unreliable to the point of being nearly random despite numerous past attempts by top-flight researchers and a few unverified claims of success.


The breakthrough garnered major coverage from virtually every news organization. Biological duplication vaulted from the realm of science fiction into the realm of hard fact. Possibilities ranging from growing human organs to restoring extinct animals as in "Jurassic Park" were touted. The three members of the team -- Yanagimachi, Anthony Perry and Teruhiko Wakayama -- attained a rarified level of academic superstardom.

A year later the trio continues its magical science tour. All three are hot properties on the science conference circuit and the two younger members, Perry and Wakayama, have been bombarded with lucrative job offers from other schools.

But on July 27 Perry sued the University of Hawaii over intellectual property rights to genetic manipulation techniques related to their cloning breakthrough. Perry claims he owns the patent rights to some of these procedures, which could be worth millions of dollars in the private sector. The university says anything that happens in UH laboratories is theirs and that Perry was well aware of this.


The case is one of a handful of recent high-profile disputes over who owns the creative energies of the best brains in science. In an era when, more than ever before, a single good idea can be worth many millions of dollars, when researchers float from one lab to another on visiting fellowships and the traditional tenure relationships in academia are increasingly tenuous, ownership of intellectual property is a hot topic indeed. "The university claims because you are sitting in a building, anything you think about while you are in this building belongs to them," explains Perry's lawyer, Jeffrey Harris. "They are saying, 'I own your mind.' We are saying we don't think that's true."

The saga of Tony Perry, then a graduate student and aspiring musician, began in 1996 when the young Brit applied for a research position in Yanagimachi's laboratory at the UH medical school. That October, Perry hung up his saxophone, quit his band and left the British Isles for paradise. Yanagimachi's lab provided him a rare opportunity. The Japanese researcher, long ensconced in Hawaii, is a formidable expert in reproductive sciences. As it turned out, Perry would also be working with Wakayama, another Japanese researcher widely considered to have one of the most brilliant young minds in the field.

The three occupied a shabby laboratory with no air conditioning, a leaky roof and decrepit equipment in a building shared with the UH food-service operations. While such conditions would have appalled most top-level researchers, Yanagimachi and his team made the best of it and enjoyed their brief obscurity. (Yanagimachi has actually claimed the hothouse may have contributed to the unprecedented success of his team's experiments).


For two years they worked seven days a week, 12 to 15 hours a day. Slowly but surely they unlocked one of the major scientific puzzles of our time. After the initial cloning breakthrough, more discoveries continued to trickle out of the laboratory. Perry delved into transgenics. Whereas cloning involves replicating cells, transgenesis involves using cells and inserted strands of DNA to manipulate the genetic material of mammals. And everyone assumed that these technologies were quite valuable, perhaps worth millions upon millions some day should they prove useful in general terms to commercial biotech efforts.

During the first two years of their fellowships, Perry and Wakayama got nothing from the university. They received no health insurance or benefits, or any other assistance except use of the lab -- a dubious gift at best. Perry lived off a grant from the European Molecular Biology Organization. Wakayama lived off a similar grant from a Japanese science organization. "We were paid into our own bank accounts. We were not really in the university at all," relates Perry.


After their fellowships ran out in the fall of 1998, both were put on the UH payroll but neither was offered a tenured position -- a fact scientists found puzzling considering the magnitude of the cloning breakthrough.

Meanwhile, a little-known biotech company named ProBio Inc. purchased the rights to technologies emerging from the laboratory. The firm, with roots in both Honolulu and Australia, had been introduced to university administrators by Perry. Under the agreement, ProBio would also control the technologies coming out of the lab for many years to come. For this, ProBio agreed to pay $400,000 annually and to give the university a percentage of future royalties and revenues derived from the cloning and other technologies.

But Perry's view of ProBio and UH soured when, much to his distress, neither he nor Wakayama were included in the negotiations with ProBio. Their side was largely represented by the school's senior vice president for research, professor Alan Teramura, a plant biologist.


In fact, Perry never saw the final licensing contract until May 7, more than five months after UH and ProBio signed. Perry says he feared that ProBio and the university lacked the contacts and the wherewithal to make the best use of his inventions. (Sources have said Wakayama is likewise dismayed but he has chosen not to speak to the press.)

Soon ProBio was having trouble paying its bills. It took out a loan from a state of Hawaii business development fund but still struggled to raise cash. That was no surprise. Serious bench research can expend cash at astonishing rates. It's not unusual for even small startups to spend several million dollars each year on research that is not even close to being commercially viable. And Hawaii has been a tough place to raise substantial capital. Another promising biotech company, Neugenesis, moved to the San Francisco Bay Area last year after fund-raising in Hawaii proved impossible despite the fact that it had better connections than ProBio.

Amid these difficulties, Perry's concerns boiled over. Early this year, he began to consider ways to assert his own rights to supersede the agreements that UH had signed on his behalf but without his consent. In April he entered into negotiations with UH that proved fruitless. The dispute also drove a wedge between Perry and Yanagimachi, who is also refusing to speak to the press about the matter.


In June, Perry and Wakayama formed their own biotech company, BiogeneSys. They enlisted the help of John Henry Felix, a city councilman with close ties to the medical establishment. Felix is chairman emeritus of the Salk Institute, the prestigious medical research center in San Diego. The company planned to commercialize techniques coming out of Perry and Wakayama's work. Obviously, the university was not pleased. BiogeneSys posed a clear threat to the university's control of this potentially valuable intellectual property. This set the stage for the lawsuit Perry filed in July.

Perry based his lawsuit upon the ideas of consent and fair warning. According to the filing, not only did the university not consult him on signing agreements but it never briefed Perry on intellectual property protocols or asked him to sign what some technology-transfer experts claim are boilerplate legal documents asserting the university's ownership over intellectual property from the lab. "Every employee (involved in scientific research at the University of California) is supposed to sign a patent agreement. I think that's true for most campuses around the country," says Joel Kirschbaum, director of the Office of Technology Transfer at University of California San Francisco.

Not so at University of Hawaii. "Basically, we have a written policy which indicates that any work or invention conceived using UH facilities, equipment, personnel and or resources belong to the university. I think that's common to most universities. We don't have a written release," says Teramura.

So far the reaction to the suit has been anger and surprise from UH. "The university last August had submitted a provisional patent for the intellectual property in question," says Teramura. "That provisional patent was largely written by Dr. Perry on behalf of UH. It included three co-inventors. Those include Dr. Yanagimachi, Dr. Wakayama and Dr. Perry. This was last August. We had learned through Dr. Perry's attorney in June that Dr. Perry had formed his own company and had taken out provisional patents for the same technique that we had already submitted two provisional patents for at the university." According to Teramura, UH had offered to go to binding arbitration but Perry and his attorney declined. "I was shocked and disappointed that this is the way it turned out," says Teramura.


To be sure, it is only fair that universities gain some of the largesse from the inventions of the people they employ and, to a large degree, shelter. "Our feeling is that if they are going to be using our resources then what they invent is probably ours. We ask them to also abide by similar policies. We are a state-funded institution. The buildings are provided with state money," says UCSF's Kirschbaum.

According to Kirschbaum, under the best circumstances a partnership exists where a university can take the new technology and put it in the hands of people who can turn the idea into money, ideally with significant benefit to society as well, in the form of new medical treatments or other improvements in life. Stanford, M.I.T., Harvard and the University of California are all considered standout players of this game, according to Kirschbaum and Perry himself. Professors often become millionaires from their percentages of such deals. Perry would have received 50 percent of royalties and licensing revenues that UH received from his invention, as per UH policy. This is a generous policy but it's only as good as the alliances the university manages to build with commercial suitors and potential investors.

But what if this partnership goes wrong? Does a researcher -- especially a visiting fellow who has worked off the payroll -- have the right to take control of his or her intellectual property if it is being poorly managed? There is no clear consensus on this murky issue, just as there are no reliable numbers on the apparently increasing frequency of intellectual property fights.

Furthermore, when does the ownership of an idea begin? Can a university rightfully claim ownership of an idea that was begun earlier but merely perfected or refined in its labs? And does a university even want to create a climate where ideas are closely watched and tracked?


"There is a constant tension between the need to promote the exchange of ideas and the need to protect them. Sometimes it's a fairly fine line that we have to walk. And we try to do the best that we can. People here are brought in to be independent thinkers, to work creatively and to take a lot of initiative. The licensing office is not a police force, nor should it be," says Kirschbaum.

Perry fears that his future work could be subjected to restraints stemming from the past. "I can tell you Perry is primarily concerned about the technology and not the dollars. He wants to see his inventions hook up with the right people," says Perry's lawyer Harris.

Of course, dollars must have entered into Perry's mind at some point. But regardless of whether the lawsuit is for money or for freedom, perhaps the saddest outcome of this affair is the likely breakup of a highly productive scientific partnership. Perry says he, Wakayama and Yanagimachi are a good team and, at the least, he and Wakayama wish to stay together. Whether there will be a rapprochement between Yanagimachi and Perry is likewise unclear.

Wakayama has accepted a tenured position at UH in a new institute to be headed by Yanagimachi. The university has said it will vigorously fight Perry's lawsuit, although it claimed in a statement that it "... remains hopeful that this matter can be resolved quickly and amicably to the mutual satisfaction of all parties involved."


Regardless, for Perry it would be quite difficult to return to UH after a lawsuit and public argument. "It's a very, very stressful situation. I am a science guy and that's what I want to do," says Perry. "But, without consent, there has been an attempt to sell off a vigorous and productive part of our careers with implications for the foreseeable future and beyond. That's just not right."

Alex Salkever

Alex Salkever is a surfer and writer living in Honolulu.

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