Geron Receives Favorable Ruling in Nuclear Transfer Patent Interference
Thursday January 15, 7:31 am ET
MENLO PARK, Calif.--(BUSINESS WIRE)--Jan. 15, 2004--Geron Corporation (Nasdaq:GERN - News) announced today that the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office has issued a decision on motions filed in the patent interference proceeding between Geron and Infigen, Inc. of DeForest, Wisconsin. The decision upholds the patentability of all of Geron's claims and finds all of the Infigen claims to be unpatentable.
The interference is between a patent application licensed to Geron from the Roslin Institute and an Infigen patent application. Both applications claim patent rights to animal cloning technology. The Board's decision (i) confirms that all of Infigen's claims in the interference are unpatentable; (ii) rejects all of Infigen's arguments attacking the patentability of the Geron claims; (iii) grants Geron's motion to be accorded the benefit of the filing date of its 1995 U.K. priority patent application; and (iv) grants Geron's motion to deny Infigen the benefit of the filing date of Infigen's 1997 application, finding that the 1997 application did not disclose the nuclear transfer methods that are at issue in the interference. Significantly, the Board thus held that Infigen is entitled to rely only on a patent application filed in 1999, more than four years later than the Geron/Roslin priority application, and that none of Infigen's claims from that application that are involved in the interference are patentable.
The patent statute calls for the Board to make a formal determination of priority of invention, and the Board has now instructed Infigen to submit evidence in support of its invention priority. If Infigen elects to proceed, the priority testimony phase of the interference is expected to be concluded later this year.
"We are pleased with the Board's rulings," said David J. Earp, J.D., Ph.D., Geron's vice president of intellectual property. "While this does not formally end the interference, in order to proceed further, Infigen will have to show that it invented this cloning technology as early as 1995, despite the fact that it did not file a patent application for this technology until 1999. It is also important to note that the Board has already ruled that the relevant claims in Infigen's 1999 application are not patentable. We are confident that this technology was indeed invented first at the Roslin Institute and look forward to the conclusion of this case."
The Roslin/Geron nuclear transfer technology underlies the pioneering work at the Roslin Institute that led to the cloning of Dolly the sheep. Geron obtained rights to that technology 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 and took over management of the patents. The portfolio now includes three issued U.S. patents, as well as granted patents in Europe, Australia, New Zealand, South Africa and several other jurisdictions.
In addition to the interference with Infigen, the Patent Office previously granted Geron's request for an interference between the same Geron/Roslin application and a patent assigned to the University of Massachusetts and licensed to Advanced Cell Technology, Inc. ("ACT") of Worcester, Mass. That interference is pending before the Board.
Geron has granted seven licenses or license options to companies involved in animal cloning for a range of applications. Geron is pursuing the patent interferences in order to clarify the intellectual property landscape in the cloning field, and to ensure that the full scope of patent rights is available to its licensees.
The Board's decision, in Patent Interference No. 104,809 (Strelchenko v. Campbell), is expected to be posted on the Patent Office website at uspto.gov.
Geron is a biopharmaceutical company focused on developing and commercializing therapeutic and diagnostic products for cancer based on its telomerase technology, and cell-based therapeutics using its human embryonic stem cell technology. ... |
