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Biotech / Medical : Incyte (INCY) -- Ignore unavailable to you. Want to Upgrade?

To: A.J. Mullen who wrote (933)	3/22/1999 9:08:00 PM
From: Pseudo Biologist	Read Replies (1) \| Respond to of 3202

This is a bit dated, but touches on some of the patent issues recently discussed here (the full article may be found in the February 1999 issue of Nature Biotechnology): EST patent granted for human kinase homologs (Debra Robertson is the author) In November 1998, the US PTO awarded INCY the first patent for an EST claiming polynucleotides that identify and encode novel human kinases. The first of its kind, this patent could lead to new licensing revenue streams for Incyte and other companies with EST patent claims pending. ... some worry that the language of the patent enables the patentee to claim not only the EST but also the full gene of which it is part ... In response to the Incyte patent, Francis Collins, director of the US National Human Genome Research Institute, remarked at a meeting at the beginning of December that the broad issuing of this EST patent "is a disturbing turn of events" ... "it is disturbing that it seems to move in the direction of the broad claim, where the EST entitles you to claim the entire full–length cDNA and perhaps the whole gene." Specifically, the Incyte patent claims an expression vector comprising polynucleotides from a group of 44 ESTs. The legal and biotechnology communities are concerned that interpretation of the word "comprising" suggests broader patent rights not only to the EST sequence but also to adjacent sequences or even the full–length gene. ... Roy Whitfield, CEO of Incyte, says only that "This EST patent is no different from any of the other patents submitted by Incyte; its scope and validity will be determined by law." Jack Tribble, head of Merck's biotechnology patent group, points out another problem. "If there are multiple patents on ESTs within a well–known gene, one may need a license for all those ESTs so you can use the full–length gene" Whitfield, whose company offers nonexclusive licensing of ESTs, remarks that ESTs are research tools, "like PCR," the use of which is also protected by patent rights and requires a license.

To: A.J. Mullen who wrote (933)	3/23/1999 4:36:00 PM
From: RCMac	Respond to of 3202

>>From the second paragraph you quote it seems he is specifically ruling out many of the patents that Incyte would have hoped to hold; the "potentially non-enabling."<< A.J., it does seem that way, at least at this level of generality, but I don't know just how INCY's platoon of patent lawyers are handling this in terms of a claimed utility for the "discovery ". There is a complex art to this, as there is to lots of things at the margins in complex areas of the law, and my knowledge just isn't (isn't yet?) sophisticated enough to understand the subtleties. At some point I will have to read a few INCY patents from the IBM patent server, when I am more up to speed in this corner of patent law. >>On a broader note, My understanding is that patents are issued relatively liberally by the Patent Office, and it's then up to the holder to assert their "rights." If others disagree, then the holder has to take them to court and prove infringement. One defence is that the patent isn't valid. Is that so?<< "relatively liberally" The PTO is supposed to check for "prior art" - to make sure that a patent application doesn't cover an invention or discovery previously patented (or previously "invented"), and it rejects around a third of submitted applications. I'm not sure this is "liberally." On the other hand they don't always get it right. The PTO may issue overlapping patents, or someone can claim that he/she invented or discovered something first, although another submitted a patent application first. There can then be an "interference" proceeding before the PTO, to determine who has the right to patent the invention. Yes, in patent litigation, where party A sues party B claiming that B is infringing A's patent, one defense is that A's patent is invalid. --RCM