Why a Gateway Landscape
The focus of this technology landscape is the intellectual property rights that surround Gateway® Technology. This technology is now used by research groups throughout the world and provides significant improvements in time and expense compared to older technologies. It’s popularity and widespread use means that understanding the intellectual property rights involved is crucial to anyone contemplating use of the system for commercialisation purposes. This landscape will hopefully provide users with an understanding of the intellectual property claims surrounding the technology, licensee information, and some background on the technology and it’s uses.
“In our experience, intellectual property landscapes in the life sciences are often not very well understood. All too often rumors and misstatements about patents and patent applications are passed on by researchers and business people as they try to make sense of the technology covered in a patent and the scope of protection granted or being sought. This is an unfortunate situation because patents and patent applications offer a wonderful opportunity to think about new areas of science to explore. Further, an understanding of patent issues in a field of interest is necessary to understand business opportunities and to identify strategic decisions that need to be made.
With the increasing importance of patents, it is necessary for scientists and business developers to be versed in the field of intellectual property.
With this report and others now present on or planned for the Patent Lens, we strive to provide a readable and understandable overview of patents in some key areas of the life sciences. In this way, we hope to contribute to the public awareness of intellectual property issues that surround key research tools. The information in these reports is not exhaustive, but highlights issues that are likely to be of particular importance to those doing work in a particular field. These reports are provided in order to open the door to the patent world and to furnish basic knowledge from which additional self-directed investigation can be performed.
Because we believe that there is a great deal of value to tapping a broad knowledge base and collaborative problem-solving, we’d love to have your comments as we explore this landscape. Our comment interface allows you to weigh in. We are expecially interested in your thoughts on prior art, information on the status of the patent (for example, whether it’s expired, been abandoned or allowed to lapsed or if it’s the subject of a litigation), and information about licensing (Is it currently licensed? Exclusively? Non-exclusively? Who’s the licensing contact for the patent owner?) and other information or ideas you’d like to share about the technical subject matter of the patent.”
What this Landscape is about
This landscape will provide a brief overview of Gateway technology and its uses. More importantly it will identify some important patents and patent applications covering the technology and highlight the associated claims contained within these patents that cover various aspects of the technology. The landscape structure is defined, and the patents discussed, around the popular cloning and expression vectors used by many researchers. This structure is used in the hope that it will be useful to those who will, or who already, use such cloning vectors in their work. Such a structure allows users the opportunity to identify patent documents relating directly to the vectors they may be using (donor, entry, destination and expression vectors).
What this landscape is NOT about
This landscape is NOT intended to provide a legal opinion, nor is it intended to make the user an expert in patents. It is not intended to be a substitute for legal advice.
Furthermore, the nature of the patenting systems worldwide means that new patents and patent applications may appear at anytime. Similarly, patents may lapse or patent applications may expire or be replaced by new applications. So, although we have have tried to give the best coverage of the intellectual proprty surrounding the Gateway technology, this landscape should not be viewed as a comprehensive coverage of the subject. In addition we present only a subset of the patents owned by the most significant assignee of this technology (Invitrogen).
Licensing of Gateway Technology
The assignee on the original patent application which lead to US patent 5,888,732 (Gateway Technology) was Life Technologies Inc. Life Technologies later merged with Invitrogen, who subsequently have continued developing, patenting, and licensing the Gateway Technology.
Invitrogen has information on its website that describes the various license requirements for use of its technology. The following statements are based on our understanding of the information available from Invitrogen’s website and the documents it has made available to the general public at the time this landscape was written.
For use of Gateway under circumstances that are not covered by the standard licensing agreements, Invitrogen directs inquiries relating to licensing be made through:
Director of Licensing
1600 Faraday Avenue,
Carlsbad, California 92008.
Phone (760) 603-7200.
Fax (760) 602-6500.
In addition, Invitrogen has stated that it has an “open licensing policy” towards the distribution of some clones containing Gateway technology. This details of the “open policy” are available on its website, and the reader is encouraged to look towards the Invitogen website to confirm the open license details for themselves.
The following is taken directly from Invitrogen’s Gateway Clone Distribution policy dated October 29, 2003:
Invitrogen understands that Gateway entry clones, containing attL1 and attL2 sites, may be generated by academic and government researchers for the purpose of scientific research. Invitrogen agrees that such clones may be distributed for scientific research by non-profit organizations and by for-profit organizations without royalty payment to Invitrogen.
Invitrogen also understands that Gateway expression clones, containing attB1 and attB2 sites, may be generated by academic and government researchers for the purpose of scientific research. Invitrogen agrees that such clones may be distributed for scientific research by academic and government organizations without royalty payment to Invitrogen. Organizations other than academia and government may also distribute such Gateway expression clones for a nominal fee ($10 per clone) payable to Invitrogen.
On the surface this open licensing policy appears to facilitate research involving gateway clones. However one must remember that researchers fall roughly into two groups: not-for-profit and for-profits. Companies such as invitrogen are often not interested in persuing not-for-profits for infringing their patents. Afterall not-for-profits generally do not have “deep pockets”, as do their for-profit cousins. Rightly or wrongly, it is not uncommon for university researchers to distribute clones freely with little regard to issues of infringement. Hence, one might take a cynical view of Invitrogen’s licensing policy as a mere reiteration of the existing (and often unspoken) view of many companies towards “minor” infringements by non-profit reasearchers.
Interestingly, in the case of vectors and clones containing Gateway technology, it may very well be in Invitrogen’s best interest to see that such vectors are widely distributed. Remembering that they also market and sell the recombinase enzyme mixes required to use all Gateway vectors. Hence, the wider the distribution of clones, the greater the uptake of the technology, the more enzyme mixes are sold, and the greater the profits recovered.
If anyone has experience in licensing Gateway technology for distributiuon of their own vectors we would be interested to hear your views and experiences.