U.S. Patent Office Enters Final Judgment in Nuclear Transfer Patent Interference in Favor of Geron
MENLO PARK, Calif.--(BUSINESS WIRE)--Jan. 6, 2005--Geron
Corporation (Nasdaq:GERN) announced today that the Board of Patent
Appeals and Interferences of the U.S. Patent and Trademark Office has
issued a final judgment ending patent interference number 104,746
between Geron and Advanced Cell Technology Corporation ("ACT") of
Worcester, Mass. The Board ended the interference by entering judgment
against ACT on all counts in the priority phase of the interference,
thereby invalidating U.S. Patent No. 5,945,577, which is licensed to
ACT from the University of Massachusetts.
Geron obtained rights to the pioneering nuclear transfer
technology, originally used to clone 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 and assumed
management of the patent applications. Under Geron's management,
patents covering the technology have been issued in the United States,
Europe, Australia and several other jurisdictions. Geron requested
that the U.S. Patent Office declare interferences between some of
Geron's pending nuclear transfer patent applications and certain ACT
patents because, in Geron's view, the technology claimed in those
patents was first invented at the Roslin Institute and was covered by
the patent portfolio licensed to Geron.
An interference is a proceeding conducted by the Patent Office
when two or more parties claim the same invention in patent filings.
The Patent Office first determines whether the claims of either party
are supported by the specification of its patent filing. In a second
stage of the proceeding, the Patent Office may look to determine
"priority of inventorship," i.e., which party was the first to invent
the subject matter of the claims. Under U.S. law, only the party that
is the first to invent a new technology is entitled to claim it in a
patent.
The claims in this interference relate to a method of cloning
animals by transferring the nucleus of a cell from the animal to be
cloned into an enucleated oocyte (egg). In a previous ruling, the
Board found all of the claims of ACT's patent to be unpatentable, and
upheld all of the Roslin/Geron claims involved in the interference.
The Board then moved on to determine priority of inventorship and, in
this final judgment, concluded that ACT's arguments that the U. Mass.
scientists had invented the subject matter of the claims prior to the
Roslin scientists "fail at virtually every level."
"We are pleased with the Board's ruling," said David J. Earp,
J.D., Ph.D., Geron's chief patent counsel and senior vice president of
business development. "The technology covered by the Roslin/Geron
patents and patent applications has been widely adopted and is of
increasing commercial importance -- it has been used to clone a broad
range of species including cattle, sheep, pigs, goats and cats. With
the Board's decision, the ACT patent has been invalidated and Geron's
pending claims have been upheld. This brings significant clarity to
the patent landscape surrounding animal cloning."
A second interference between ACT and Geron (Interference No.
105,192) is still pending before the Board. In the pending
interference, the claims at issue relate to the production of inner
cell mass cells from embryos made by the nuclear transfer technique.
As in the concluded interference, Geron is the senior party and ACT is
the junior party. In January 2004, the Board entered final judgment in
Geron's favor in a related nuclear transfer patent interference with
Infigen, Inc. of DeForest, Wisconsin, upholding the validity of all of
Geron's claims and denying a patent to Infigen.
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.
This news release may contain forward-looking statements made
pursuant to the "safe harbor" provisions of the Private Securities
Litigation Reform Act of 1995. Investors are cautioned that such
forward-looking statements in this press release regarding Geron's
patent portfolio involve risks and uncertainties, including, without
limitation, risks inherent in the development and commercialization of
potential products, reliance on collaborators and the maintenance of
our intellectual property rights. Actual results may differ materially
from the results anticipated in these forward-looking statements.
Additional information on potential factors that could affect our
results and other risks and uncertainties are detailed from time to
time in Geron's periodic reports, including the quarterly report on
Form 10-Q for the quarter ended September 30, 2004.
CONTACT: Geron Corporation
David L. Greenwood, 650-473-7765
SOURCE: Geron Corporation |
