PubPat Wins a Reexamination of Cotransformation Patent

Monday, May 10 2004 @ 01:26 PM EDT

Contributed by: PJ

PubPat is beginning to show results for its work. Their request for a reexamination of a patent Columbia University obtained on a key patent on cotransformation, a process for inserting foreign DNA into a host cell to produce certain proteins, has been granted. The press release says the USPTO isued an Order granting the request because they found that PubPat's request raised "a substantial new question of patentability" regarding every claim of the patent.

This patent has to do with pharmaceuticals, not computers, but the Public Patent Foundation has also more recently filed a formal request with the USPTO, as you may remember, asking them to revoke Microsoft's patent on the FAT file system because, they say, it's causing significant public harm. "Microsoft is using its control over the interchange of digital media to aid its ongoing effort to deter competition," the request stated. With the request, they filed some prior art to demonstate that the patent was obvious and shouldn't have been granted in the first place.

That is the process, and it's good if we all become knowledgeable about the way this process works, since everyone seems to think this will be the next battlefront. Happily, the USPTO has been so profligate in issuing patents, there is some relief possible, and this is how you get it.

Migeul de Icaza adds to the chorus today, warning about patents being the next cancer we will have to deal with. He also contributes some links to pictures in a comment responding to an objection someone had that people in third world countries can't afford computers even at a $300 price:

"In regions where this is not possible, governments have started the adoption of community sites where people can use computers for free, the equivalent of going to the post office to send mail. Brazil has the telecentros in Sao Paolo and Rio Grande do Sul.

"Spain has Andalucia and Extremadura, and the trend is catching up.

"Pics: http://www.telecentros.sp.gov.br/destaques/capaannh.jpg
http://www.telecentros.sp.gov.br/destaques/ceuperamar2.jpg
http://www.telecentros.sp.gov.br/index.php?t=147

"Or go and browse them all:

http://www.telecentros.sp.gov.br/index.php?t=147

"Miguel."

He says something intriguing about Longhorn and prior art:

"Ximian met with Microsoft executives a few months ago -- as part of a symposiuym -- and it's not a secret that Microsoft is aware of the Mono developments. Miguel explains: 'If there is indeed a new technology that Microsoft holds a patent to and they do not explicitly allow us to use, we will remove that code, or rework the code in a way that does not infringe the patent. We do not like the current patent environment in the US, but we have to play by the rules.' Miguel also gave us a number of technical examples around Corba having technologies for years that Microsoft only now starts to be using in their products. 'Longhorn's Indigo or Avalon, all was done before by us and others', said Miguel. 'Most of the new technologies in Longhorn have existed in the past in one way or another, but they failed to get shipped with a vehicle as Microsoft Windows to users, so they live only on CVS repositories, old research papers, and old systems.' He has so many such examples it that makes him sleep tight at night and not worry about such things."

Prior art is legally valuable, and published papers count. Here is PubPat's press release in full.

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PATENT OFFICE GRANTS PUBPAT REQUEST TO REEXAMINE COTRANSFORMATION PATENT:
Order Finds "Substantial New Question" of Patentability for Entire Patent

NEW YORK -- The United States Patent and Trademark Office has issued an Order granting the Public Patent Foundation's Request for Reexamination of a key patent on cotransformation, a process for inserting foreign DNA into a host cell to produce certain proteins that is the basis for a wide range of pharmaceutical products, including EpogenR for anemia, ActivaseR for heart attacks and stroke, AvonexR for multiple sclerosis, and RecombinateR for hemophilia. In its Order, the Patent Office found that PUBPAT's request raised "a substantial new question of patentability" regarding every claim of the patent.

The patent holder, Columbia University, now has the opportunity to make an opening statement to the Patent Office, to which PUBPAT has the right to make a response. After opening statements, the Patent Office will proceed to determine whether the patent is indeed invalid in light of the new questions raised by PUBPAT's request. Third party requests for reexamination, like the one filed by PUBPAT, are successful in having the subject patent either narrowed or completely revoked roughly 70% of the time.

"We are obviously very pleased with the Patent Office's decision to grant our request to reexamine the Axel cotransformation patent," said Dan Ravicher, PUBPAT's Executive Director and Founder. "This is the first step towards ending the harm being caused to the public by this patent that never should have been issued."

More information about the Request for Reexamination, including a copy of the Patent Office's Order Granting the request, can be found at http://www.pubpat.org/Protecting.htm.

Contact:

Daniel Ravicher, Executive Director, Public Patent Foundation: 212-545-5337; info@pubpat.org; www.pubpat.org.

About PUBPAT: The Public Patent Foundation ("PUBPAT") is a not-for-profit legal services organization working to protect the public from the harms caused by the patent system. PUBPAT provides the general public, particularly those persons or businesses otherwise deprived of access to the system governing patents, with representation, advocacy, and education. To be kept informed of PUBPAT News, subscribe to the PUBPAT News List by sending an email with "subscribe" in the subject line to news-request@pubpat.org. To be removed from the PUBPAT News List, send an email with "unsubscribe" in the subject line to: news-request@pubpat.org.

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