Paradigm Patent Documents
Patent applications for Arabidopsis bulk sequences made by Paradigm Genetics Inc. (Icoria Inc. – Monsanto Co.)
The following is an example of one of the 9 patent applications by Paradigm Genetics Inc (now Icoria Inc.). The ‘940 A1 application has the earliest filing date of the 9 applications. All 9 applications are listed as “abandoned” on the USPTO website database. However, one must remember that “abandoned” does not necessarily mean that Icoria or now Monsanto Co. have actually given up their attempts at patenting all or part of the claims. It may still be possible that future continuations, continuations-in-part, or divisional applications might appear as patent document publications.
|Patent or Publication No.||Title, Independent Claims and Summary||Applicant|
|US 2001/44940 A1
||Title – Expressed sequences of Arabidopsis thaliana
The claims are generally drawn to:
Essentially, this claims the ESTs themselves, any homologues, allellic variants,..etc. and may cover the equivalent gene in other organisms. The “comprising” language in this claim makes the claim’s scope so broad that there almost certainly will be existing prior art. Stringent hybridisation conditions are defined as “50°C or higher and 0.1×SSC”. “A fragment thereof” is not clear in itself and could imply a 2bp sequence! The application arguably provides the following guidance “Preferably, hybridization is performed using at least 15 contiguous nucleotides…”.
This essentially claims DNA constructs or vectors containing the ESTs, or part of the ESTs, or their homologues, and any sequences from other organisms that satisfies the stringency conditions above (since no organism limits are made here!). It is hard to imagine that none of these sequences would hybridize to DNA from other organisms (even human sequences!). How can an examiner be certain that any of these sequence claims are not invalidated by prior art (particularly other bulk sequence claims for rice and maize ESTs??!)
This time the claim is towards a transgenic plant transformed with the claimed DNA. Arguably, the “operably linked” phrase mayallow a work around of at least part of this claim: by the use of transactivation technology (see PCT publication WO 01/21781).
Similar to the previous claim, for cells transformed with the claimed DNA. Again, consider transactivation technology and PCT publication WO 01/21781. Interestingly, the qualifier “plant” is not used to describe the cell. Does this imply that this claim covers animal, fungal, and protist cells, whereas the previous did not cover transgenic animals?
Attempts to cover use in microarray technologies. What does stably bound mean? What if the bond is reversible?
As above for DNA arrays, in this case for peptide arrays. However, no mention is made of peptide length – this could mean anything from full length peptides to 2-amino acids! (There is no specification for this in the application)
PARADIGM GENETICS, INC.,
Which recently became:
Monsanto has since acquired selected agricultural genomics assets from Icoria:
We would suggest that interested parties should try to contact:
Charles W Burson Executive Vice President, General Counsel, and Secretary
|Remarks||Given the broad scope of the claims above, it is not expected that Paradigm’s 9 bulk sequence applications would produce a granted patent over all the sequences listed. Instead Paradigm’s goal is probably to establish a priority date for all the sequences, and the opportunity to select from this group sequences that may become valuable and can be patented in divisional, CIPs, and continuation applications in the future.
This unfortunately introduces uncertainty for those working on these or related genes. Since it is virtually impossible to tell which genes will be the focus of future active applications. It is also possible that future efforts by others to study the function of these genes may produce results that influence’s Paradigm’s/Icoria’s/Monsanto’s decision on which gene(s) to continue patenting efforts. Future research that shows gene ‘X’ to be useful (valuable) might be sufficient to initiate further applications for that gene in divisional applications.
The remaining 8 applications are:
|US 2002/23280||Expressed sequences of arabidopsis thaliana||999|
|US 2002/23281||Expressed sequences of arabidopsis thaliana||999|
|US 2002/40489||Expressed sequences of arabidopsis thaliana||999|
|US 2002/40490||Expressed sequences of arabidopsis thaliana||999|
|US 2002/59663||Expressed sequences of arabidopsis thaliana||999|
|US 2002/62014||Expressed sequences of arabidopsis thaliana||999|
|US 2002/142319||Expressed sequences of arabidopsis thaliana||900|
|US 2003/115639||Expressed sequences of arabidopsis thaliana||999|
The 8 remaining applications are:
|Publication No.||Application No.||Filing Date||Publication Date||
|US 2002/23280||60/178,502||26 Jan 2001||21 Feb 2002||Expressed sequences of arabidopsis thaliana||999|
|US 2002/23281||60/178,472||26 Jan 2001||21 Feb 2002||Expressed sequences of arabidopsis thaliana||999|
|US 2002/40489||60/178,503||26 Jan 2001||04 Apr 2002||Expressed sequences of arabidopsis thaliana||999|
|US 2002/40490||60/178,512||26 Jan 2001||04 Apr 2002||Expressed sequences of arabidopsis thaliana||999|
|US 2002/59663||60/178,506||26 Jan 2001||16 May 2002||Expressed sequences of arabidopsis thaliana||999|
|US 2002/62014||60/178,480||26 Jan 2001||23 May 2002||Expressed sequences of arabidopsis thaliana||999|
|US 2002/142319||60/148,784||07 Aug 2001||03 Oct 2002||Expressed sequences of arabidopsis thaliana||900|
|US 2003/115639||60/178,466||26 Jan 2001||19 Jun 2003||Expressed sequences of arabidopsis thaliana||999|