Preface

Summary

Both granted patents and pending patent applications are subject to change.  A granted patent is typically in force for a 20 year term, calculated from the filing date, as long as the maintenance fees are paid, although some patents have been issued under rules that give them different terms.

An example of a patent that has taken advantage of a pre GATT-TRIPS filing date is US Patent No. 6051757. For this patent, the filing date was June 5, 1995; shortly before the June 8, 1995 GATT/TRIPS deadline in the United States.

US Patent No. 6051757 is a continuation application that claims priority to a parent application with a January 14, 1983 filing date. Had this application been filed three days later, it would have likely had a patent term that expired on January 14, 2003.

However, since the application was filed before the GATT/TRIPS deadline, it is entitled to a patent term calculated 17 years from the issue date, rather than 20 years from the priority date.

The application data provided by PAIR reveals that this application took nearly five years after the filing date to issue. Numerous extensions of time were granted by the examiner during the prosecution of the application. This patent finally issued on April 18, 2000, and is therefore likely entitled to a patent term that would expire on April 18, 2017 (barring any litigation or lapses due to failure to pay maintenance fees). Basically, an invention that was made in 1983 gave rise to a patent that expires 34 years after the first filing date!

The patent term is a period during which the patentee has the right to exclude others from using the technology.  Technology described in a granted patent that lapses due to lack of payment or expiration of the term moves into the public domain, and unless the technology is covered by other patents still in force, people may work inventions in the public domain without infringement.

From the moment of filing, patent applications go through an interactive process between the applicant and the patent office, the so-called “prosecution”, which eventually leads to the grant or rejection of a patent application. During this process, which may take several years, the claims, which define the scope of desired protection for the invention, are likely to be amended. Therefore, the claims of a published patent application may differ from those finally granted by a patent office. In addition, an application may be abandoned along the examination process if the applicant decides not to seek patent protection for the invention in a particular country.

This white paper on Agrobacterium-mediated transformation of plants was updated in March 2002 and June 2003, and is undergoing another revision now. The dynamic nature of intellectual property rights, especially in a rapidly evolving area such as biotechnology, makes regular updates necessary in order to keep abreast of new constraints to freedom to operate or of formerly patented technology that becomes freely accessible.

The main changes registered are:

  • Abandonment, when the applicants have decided not to continue with the prosecution process or when maintenance fees have not been paid for granted patents;
  • Issuance of a patent, when applications listed in previous versions of the paper have resulted in granted patents, which may have different claims;
  • Entering European (EP) phase, or national phase in other national patent offices (applications filed under the Patent Cooperation Treaty may be converted to national patent applications after a maximum period of 30 months from the earliest priority date).

A summary table provides information on changes between 2002 and 2003. For convenience, the documents are presented according to the white paper sections to which they pertain and following the order set in the table of contents/index of the document. You will find out more detailed information by following the links provided for each patent application.

  • New patents and patent applications

Many new patents and patent applications have emerged in the field of Agrobacterium-mediated transformation since 2002. Some of these patents are directed to new methods for transformation of plant tissues and crops, previously discussed in the white paper, and others are directed to new crops, such as coffee, onions, turfgrass and woody tree species.

The new patent documents are presented in a summary table. Documents are grouped according to the white paper sections set in the table of contents/index. You will find out more detailed information on each patent document by following the links provided in the table.

Changes in legal status of patents and patent applications since last update

Document No. Topic / Assignee Change
AU 597916 B Transformation of poplar / Calgene View Summary Abandoned
AU 606874 B Transformation of Gramineae / Toledo Univ. View Summary Abandoned
AU 633248 B Transformation of Beans / Toledo Univ. View Summary Abandoned
AU 648951 B Transformation of Soybeans / Toledo Univ. View Summary Abandoned
US 5376543 Transformation of Soybeans / Toledo Univ. View Summary Abandoned
US 5340730 Transformation of Gladiolus / Toledo Univ. View Summary Abandoned

New patents and patent applications (Update July 2003)

Note! Assignees listed in brackets are assumed (from related applications and patents), because the assignee is often not recorded on US applications.

Document No. and date of publication Assignee Title
Methods
US 2002/0088029 A1
(4 Jul 2002)
(Novartis Finance Corp (US)) Plant transformation methods.
US 6353155 B1
(5 Mar 2002)
Paradigm Genetics, Inc. (US) Methods for transforming plants.
WO 02/066599 A2
(29 Aug 2002)
Scigen Harvest Co Ltd (KR) Efficient method for the development of transgenic plants by gene manipulation.
EP 1236801 A2
(4 Sep 2002)
The Agri-Biotechnology Research Center of Shanxi (CN) Method of Agrobacterium-mediated plant transformation through treatment of germinating seeds.
US 2002/0184663 A1
(5 Dec 2002)
(The Agri-Biotechnology Research Center of Shanxi (CN)) Method of Agrobacterium-mediated plant transformation through treatment of germinating seeds.
Monocots
US 2002/0178463 A1
(28 Nov 2002)
(Japan Tobacco Inc (JP)) Method for transforming monocotyledons.
US 2002/0112261
(15 Aug 2002)
(Univ. of Guelph (CA)) Transformation of monocotyledoneous plants using Agrobacterium.
WO 00/58484
(15 Aug 2002)
(Univ. of Guelph (CA)) Transformation of monocotyledoneous plants using Agrobacterium.
EP 1198985 A1
(14 Apr 2002)
Natl Inst of Agrobiological Resources (JP) Method for superrapid transformation of monocotyledon.
Gramineae
US 2002/0002711
(3 Jan 2002)
(Univ. Toledo (US)) Process for transforming Gramineae and the products thereof.
Onion (Allium)
NZ 513184
(27 Sep 2002)
NZ Inst for Crop & Food Res (NZ) Transformation and regeneration of Allium plants.
WO 00/65903
(9 Nov 2000)
Seminis Vegetable Seeds, Inc. (US) Transformation of Allium sp. with Agrobacterium using embryogenic callus cultures.
Barley
US 6291244 B1
(18 Sep 2001)
Sapporo Breweries Ltd (JP) Method of producing transformed cells of barley.
Maize
US 2002/0104132
(1 Aug 2002)
Stine Biotechnology (US) Methods for tissue culturing and transforming elite inbreds of Zea mays L.
US 2002/0104131
(1 Aug 2002)
Stine Biotechnology (US) Methods for tissue culturing and transforming elite inbreds of Zea mays L.
US 6420630 B1
(16 Jul 2002)
Stine Biotechnology (US) Methods for tissue culturing and transforming elite inbreds of Zea mays L.
Rice
US 6329571 B1
(11 Dec 2001)
Japan Tobacco, Inc. (JP) Method for transforming indica rice.
WO 02/057407
(25 Jul 2002)
Avestha Gengraine Technologies (IN) Novel method for transgenic plants by transformation and regeneration of indica rice plant shoot tips.
Sorghum
US 2002/0138879 A1
(26 Sep 2002)
Pioneer Hi-Bred Intl.Inc. (US) Agrobacterium-mediated transformed sorghum.
US 6369298 B1
(9 Apr 2002)
Pioneer Hi-Bred Intl.Inc. (US) Agrobacterium-mediated transformation of sorghum.
Dicots
US 6323396 B1
(27 Nov 2001)
Nunhems Zaden BV (NL) Agrobacterium-mediated transformation of plants.
Brassica
US 6316694 B1
(13 Nov 2001)
AgrEvo Canada, Inc. (CA) Transformed embryogenic microspores for the generation of fertile homozygous plants.
US 6455761 B1
(24 Sep 2002)
Helsinki Univ.Licensing Ltd. (FI) Agrobacterium-mediated transformation of turnip rape.
Camelina sativa
WO 02/38779
(16 May 2002)
Unicrop Ltd (FI) A transformation system in Camelina sativa.
Coffee
US 6392125 B1
(21 May 2002)
Nara Inst.of Science and Technology (JP) Method for producing the transformants of coffee plants and transgenic coffee plants.
Cotton
US 6483013 B1
(19 Nov 2002)
Bayer BioScience N.V. (BE) Method for Agrobacterium-mediated transformation of cotton.
Eucalyptus
US 6255559 B1
(3 Jul 2001)
Genesis Research & Dev.Corp.NZ and Fletcher Challenge Forests Ltd. (NZ) Methods for producing genetically modified plants, genetically modified plants, plant materials and plant products produced thereby.
Guar
US 2001/0034887 A1
(25 Oct 2001)
(Danisco A/S (DK)) Transformation of guar.
US 6307127 B1
(23 Oct 2001)
Danisco A/S (DK) Transformation of guar.
Melon
US 6198022 B1
(6 Mar 2001)
Groupe Limagrain Holding (FR) Transgenic plants belonging to the species Cucumis melo.
Soybeans
US 2002/0157139
(24 Oct 2002)
Monsanto Co. (US) Soybean transformation method.
US 6384301 B1
(7 May 2002)
Monsanto Co. (US) Soybean Agrobacterium transformation method.
Strawberry
US 6274791 B1
(14 Aug 2001)
(VPP Corp.) DNA Plant Technology Corp. (US) Methods for strawberry transformation using Agrobacterium tumefaciens.
Woody trees
WO 02/14463
(21 Feb 2002)
Companhia Suzano de Papel e Celulose BR and Univ.de Sao Paulo (BR) Method for genetic transformation of woody trees.
Conifers (Pinus)
US 6255559 B1
(3 Jul 2001)
Genesis Research & Dev. Corp.NZ and Fletcher Challenge Forests Ltd. (NZ) Methods for producing genetically modified plants, genetically modified plants, plant materials and plant products produced thereby.

Assignees in parentheses are assumed, based on related applications and patents, because they usually don’t show on US applications