Patent claiming Transcription Factors

Patent claiming Transcription Factors from Arabidopsis thaliana

The following is an example of one of the granted patents for transcription factors from Mendel Biotechnology Inc.  As previously noted, the patent is part of a much larger family of documents containing applications claiming many Arabidopsis sequences, many of which are still pending in many countries:

Patent or Publication No. Title, Independent Claims and Summary Applicant
US 6664446

  • Earliest priority – 23 Mar 1999
  • Filed – 22 Mar 2000
  • Granted – 16 Dec 2003
  • Expected expiry – 22 Mar 2020
Title – Transgenic plants comprising polynucleotides encoding transcription factors that confer disease tolerance

Claim 1
A transgenic plant comprising a recombinant polynucleotide encoding SEQ ID NO: 18, and said transgenic plant has enhanced tolerance to fungal disease due to expression of SEQ ID NO: 18.
Claim 7A method for enhancing the disease tolerance or resistance of a plant comprising transforming a plant with a recombinant polynucleotide encoding SEQ ID NO: 18, and said transgenic plant has enhanced tolerance to fungal disease due to expression of SEQ ID NO: 18.
Claim 13A method for altering the expression levels of at least one gene in a plant comprising transforming the plant with a recombinant polynucleotide encoding SEQ ID NO: 18, and said transgenic plant has enhanced tolerance to fungal disease due to expression of SEQ ID NO: 18.

Original Applicant:

Mendel Biotechnology, Inc., Hayward, CA., USA

Remarks SEQ ID NO 18 is a transcriptional activator (AtERF-1; ethylene responsive element binding factor 1). Note that the claims issued in this patent are far narrower than those of the patent application originally filed, which was discussed above.  The narrowing of claims probably reflects the existence of sequences that had already been disclosed which would have been infringing the overly broad claims of the patent application.   Note, however, that claims to all the other sequences originally claimed could still be pending.

The scope of this claim is limited to comprising language around the peptide sequence disclosed in SEQ ID NO 18.  It may be possible to achieve the same or similar phenotye modifications that expression of AtERF-1 would cause in plants by the use of a homologous sequence from elsewhere in the same genome or from another species.  However, it is not truly clear how much there is freedom to operate.  How far does the doctrine of equivalents provide protection in this case?  Would an AtERF-1 homologue less than 90% identical at the amino acid level be a work around in this case?  Also, is “tolerance” the same as disease resistance?

Note also that fungal disease is specifically mentioned in the claims of the issued patent.  However, this does NOT imply that the applicants could not obtain claims over bacterial or viral diseases or any of the other phenotypes mentioned in the applications still pending.