MENLO PARK, Calif.--(BW HealthWire)--Jan. 31, 2002--Geron Corporation (Nasdaq:GERN - news) announced today that the U.S. Patent and Trademark Office, Board of Patent Appeals and Interferences, has granted Geron's request to declare an interference between a patent application licensed to Geron from the Roslin Institute and U.S. Patent No. 5,945,577, (``the `577 patent'') assigned to the University of Massachusetts. The `577 patent is licensed to Advanced Cell Technology, Inc. of Worcester, Mass.
``Both the Roslin/Geron patent application and the `577 patent claim certain aspects of nuclear transfer for cloning non-human mammals, including farm animals for agricultural uses,'' noted David J. Earp, J.D., Ph.D., Geron's vice president of intellectual property. ``Geron has broad patent rights in nuclear transfer technology, as evidenced by our worldwide issued patent rights and the number of companies to which we have granted licenses. We filed the request for declaration of an interference in April of 2001 so that the Patent Office could reconsider its decision to grant the `577 patent. We have also recently filed requests for interference against a number of other patents related to the `577 patent.''
A patent interference is a proceeding conducted by the Patent Office in instances where two or more parties claim patent rights to the same technology. The U.S. patent system awards patents to the first party to invent a particular technology. In an interference, the Patent Office determines which party invented the technology first, and awards the patent to that party. The Patent Office presumes that the parties made their inventions in the order of the filing dates for their patent applications -- the party with the earliest filing date is referred to as the ``senior party,'' while those with later filing dates are ``junior parties.'' Unless a junior party can prove that, despite its later filing date, it actually invented the technology before the senior party, the patent is awarded to the senior party.
In this instance, the Patent Office has designated Roslin/Geron as the senior party in the interference and the University of Massachusetts as the junior party, because the Roslin/Geron patent application has an earlier filing date. As the junior party, the University of Massachusetts will bear the burden of proof, and will have to show that its scientists invented the cloning technology ahead of the Roslin scientists in order to retain its patent.
Geron obtained rights to the nuclear transfer technology underlying the pioneering work that led to the cloning of Dolly the sheep when it acquired Roslin Bio-Med (now Geron Bio-Med) in 1999. As part of that acquisition, Geron obtained a worldwide license from the Roslin Institute to the nuclear transfer patent portfolio. Two U.S. patents have issued from this portfolio to date - U.S. Patent Nos. 6,147,276 and 6,252,133. Patents covering this technology have been also been granted or accepted in Europe, the U.K., Australia, New Zealand, Hong Kong, Singapore and South Africa, and further patent applications are pending in these and other countries. In all countries outside of the U.S., patents are awarded to the first party to file a patent application for the technology in question... |
