Summary

Paradigm Genetics Inc. was essentially a start-up company, created to make use of (and patent) DNA and EST sequences generated from Arabidopsis. By making use of the new technology of EST sequencing it could potentially gain patents over a large number of Arabidopsis genes.  Due to the language of the patent claims:

“…hybridizing under stringent conditions to a sequence set forth in…”

it is entirely likely that successful claims would “read on” large numbers of related genes from other dicot species.  In particular those that have agricultural importance: potato, soya, canola,…

All 9 patent applications of Paradigm are classified as “abandoned” in the USPTO’s database PAIR.  The assignee of these applications at the USPTO is still listed as Paradigm Genetics. Note also the fact that these are US applications, and as far as we are able to tell, were not the focus of applications elsewhere in the world.

Unfortunately, although classified as “abandoned” it is still too early to say for certain that these applications are no longer “active” for the following reasons:

  1. Continuations, continuations-in-part (CIP) and divisional applications may be filed prior to abandonment (and may still be in the process of publishing)
  2. Alternatively payments can be made to the USPTO so that some “abandoned” applications can be recovered
  3. There is some scope for US applicants to request that their applications not be published immediately

It is unlikely that, in their present state, patents would be granted on these applications, since the claims appear to be very broad. However, Paradigm’s applications may demonstrate one early step in a bulk sequence patenting strategy:

Apply for a patent over as many sequences as possible and establish the earliest possible priority date.

This strategy may have the following benefits:

  • Setting an early priority date negates the possibility of confounding prior art for future continuations, CIPs, and divisional applications
  • An early bulk sequence application might have a better chance of granting while such applications are still relatively “novel” to examiners
  • Work done on the genes claimed in the applications after the priority date can potentially be used to add value to future applications (and won’t be considered prior art)
  • Publication of such an application immediately increases the value of the company based on a perception of future income created by the IP
  • Such potential IP might be saleable to larger companies (like Monsanto)
  • Licenses may be negotiated based on technology claimed in the applications.

By creating such important potential IP, a small company such as Paradigm became potentially valuable to larger companies such as Monsanto, who have large agricultural biotechnology interests.  The decision by Paradigm to move into human health biotechnology, was almost certainly facilitated by funds generated in the sale of agricultural assets to Monsanto. In turn, Monsanto acquired potentially useful IP and the loss of a competitor in Paradigm/Icoria.

Also, Monsanto is probably in a far better position to make use of such patented technologies. In fact Monsanto has its own bulk sequence claims for maize and cotton.

As we will see in the following chapters, others have refined this patenting strategy in Arabidopsis.