A comparison of the granted claims from the 466′ patent and the claims of the parent application demonstrates one important difference between applications and granted claims
The following is claim #1 from the provisional patent application US 60/125,814:
Note that the term “…substantially the same DNA binding specificity,...” is difficult to quantify and that the claims are towards sequences from conserved DNA binding domains of transcription factors. Thus these claims are potentially very broad.
Compare the text above with the equivalent claim from the granted US patent US6664446 that evolved from the 814′ application:
Whereas, the application claims refers to a broad group of conserved DNA-binding domains from transcription factors, the granted patent refers specifically to polynucleotides that encode a single protein – SEQ ID NO.18. This protein is a full-length 268-amino-acid transcription factor from Arabidopsis. Hence this claim is very-much limited in scope compared to the application.
Even-so, it seems likely that this granted claim covers more than a single polnucleotide sequence.
This is due to the following:
- Degeneracy in the polynucleotides coding for the same transcription factor (many polynucleotide sequences can code the same protein sequence)
- Variations at the level of the nucleotide sequence can also be covered based on the fact that the same amino acid can be coded by 1 to 6 different trinucleotide sequences.
- Doctrine of Equivalents: might cover sequences that perform essentially the same function and that have similar sequences (compared to SEQ ID NO 18)
- Hence, even under the Doctrine of Equivalents, it is possible that transcription factors that are >95% similar to SEQ ID NO 18 may also be considered (at least by the applicants) to be protected by the patent. Although the decision of a court may be required to determine this.
Notice also that the 446′ patent was filed in 2000, and granted in 2003 and claims benefit of the U.S. Provisional Application Serial No. 60/125,814 filed Mar. 23, 1999. There are at least 17-other patent applications that claim priority from the same provisional application. It is possible that other granted patents will arise from this family in the near future.