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Pending revocations of 35S patents

Challenges to patents on 35S promoter and duplicated CaMV 35S enhancer sequences

In September 2006, PUBPAT filed formal requests with the United States Patent and Trademark Office to revoke four patents owned by Monsanto Company.  PUBPAT has issued a press release giving the opinion that these patents were a subject for action in the public interest because Monsanto is using these patents to intimidate and sue farmers.

The patents are U.S. Patents 5352605, 5164316,  5196525, and 5322938, all of which assert claims to the CaMV 35S promoter, double 35S enhancer, and/or constructs containing them.  Like some other Monsanto technologies, the 35S promoter and double 35S enhancer have been used in a great deal of agricultural research worldwide, and as a result Monsanto’s intellectual property does constrain the delivery of products.

In its filings, PUBPAT submitted putative prior art supporting an assertion that the patents should not have been granted, and therefore should be revoked.  The USPTO will do a re-examination of the patents in view of the submission, and if it is found that the patents are invalid over the prior art, may require revision or revocation of specified claims.   The independent claims are listed below for easy reference.

Patent Number Title,  Independent Claims and Summary of Claims Assignee
US 5352605

  • Earliest priority – 17 January 1983
  • Filed – 28 October 1993
  • Granted – 4 October 1994
  • Expected expiry – 4 October 2011
 Title – Chimeric genes for transforming plant cells using viral promoters

Claim 1
A chimeric gene which is expressed in plant cells comprising a promoter from a cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV (35S) promoter isolated from CaMV protein-encoding DNA sequences and a CaMV (19S) promoter isolated from CaMV protein-encoding DNA sequences, and a structural sequence which is heterologous with respect to the promoter.
Claim 4
A plant cell which comprises a chimeric gene that contains a promoter from cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV (35S) promoter and a CaMV (19S) promoter, wherein said promoter is isolated from CaMV protein-encoding DNA sequences, and a structural sequence which is heterologous with respect to the promoter.
Claim 7
An intermediate plant transformation plasmid which comprises a region of homology to an Agrobacterium tumefaciens vector, a T-DNA border region from Agrobacterium tumefaciens and a chimeric gene, wherein the chimeric gene is located between the T-DNA border and the region of homology, said chimeric gene comprising a promoter from cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV(35S) promoter and a CaMV(19S) promoter, and a structural sequence which is heterologous with respect to the promoter.
Claim 8
A plant transformation vector which comprises a disarmed plant tumor inducing plasmid of Agrobacterium tumefaciens and a chimeric gene, wherein the chimeric gene contains a promoter from cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV(35S) promoter and a CaMV(19S) promoter, and a structural sequence which is heterologous with respect to the promoter.
Claim 13
A DNA construct comprising: (A) a CaMV promoter selected from the group consisting of (1) a CaMV 35S promoter isolated from CaMV protein-encoding DNA sequences and (2) a CaMV 19S promoter isolated from CaMV protein-encoding DNA sequences, and (B) a DNA sequence of interest heterologous to (A), wherein (B) is under the regulatory control of (A) when said construct is transcribed in a plant cell.
Claim 14
A chimeric gene which is transcribed and translated in plant cells, said chimeric gene comprising a promoter from cauliflower mosaic virus, said promoter selected from the group consisting of: a) a CaMV 35S promoter region free of CaMV protein-encoding DNA sequences and b) a CaMV 19S promoter region free of CaMV protein-encoding DNA sequences, and a DNA sequence which is heterologous with respect to the promoter.
Claim 15
A chimeric gene which is expressed in plants cells comprising a promoter from a cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV(35S) promoter region free of CaMV protein-encoding DNA sequences and a CaMV(19S) promoter region free of CaMV protein-encoding DNA sequences, and a DNA sequence which is heterologous with respect to the promoter.
Claim 16
A chimeric gene which is transcribed in plants cells comprising a promoter from a cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV(35S) promoter free of CaMV protein-encoding DNA sequences and a CaMV(19S) promoter free of CaMV protein-encoding DNA sequences, a DNA sequence which is heterologous with respect to the promoter and a 3′ non-translated polyadenylation signal sequence.
Claim 17
A plant cell which comprises a chimeric gene where said chimeric gene comprises a promoter from cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV(35S) promoter and a CaMV(19S) promoter, wherein said promoter is free of CaMV protein-encoding DNA sequences, and a DNA sequence which is heterologous with respect to the promoter and a 3′ non-translated polyadenylation signal sequence.

Claim elements:

  • 35S and 19S promoters, as defined in the specification, are claimed as part of a chimeric construct, also containing a heterologous signal and a poly(A) signal, expressed in a plant
  • There are also claims to intermediate plant transformation vectors and plant transformation vectors containing the chimeric gene for Agrobacterium-mediated plant transformation, and to plant cells having the chimeric gene.

Monsanto
US 5164316

  • Earliest priority – 13 January 1987
  • Filed – 17 August 1989
  • Granted – 17 November 1992
  • Expected expiry – 17 November 2009
 Title – DNA construct for enhancing the efficiency of transcription

Claim 1

A plant cell comprising a DNA construct having as components,

(a) a duplicated CaMV 35s enhancer sequence comprising

an AluI-EcoRV fragment of a CaMV 35S upstream region; and

(ii) a promoter comprising an RNA polymerase binding site and an mRNA initiation site;

(b) a nucleotide sequence of interest for transcription to mRNA; and

(c) a termination region wherein said components are operably joined.

Listed in the patent documents as the University of British Columbia, but assigned to Monsanto in 1993
US 5196525

  • Earliest priority – 13 January 1987
  • Filed – 8 April 1991
  • Granted – 23 March 1993
  • Expected expiry -23 March 2010
 Title – DNA construct for enhancing the efficiency of transcription

Claim  1

A DNA construct having as components,

(a) a transcription initiation region including

(i) a tandemly duplicated CaMV 35S enhancer sequence comprising an AluI-EcoRV fragment of a CaMV 35S upstream region;

(ii) a promoter comprising an RNA polymerase binding site and an mRNA initiation site;

(b) a nucleotide sequence of interest for transcription to mRNA; and

(c) a termination region wherein said components are operably joined.
US 5322938

  • Earliest priority – 13 January 1987
  • Filed – 17 November 1992
  • Granted – 21 June 1994
  • Expected expiry – 21 June 2011
 Title – DNA sequence for enhancing the efficiency of transcription

Claim 1

A chimeric transcriptional initiation region comprising:

as operably joined components

(i) a tandemly duplicated CaMV 35S enhancer sequence comprising an AluI-EcoRV fragment of a CaMV 35S upstream region;and

(ii) a promoter comprising an RNA polymerase binding site and an mRNA initiation site, wherein when a nucleotide sequence of interest is transcribed under the regulatory control of said chimeric transcriptional initiation region, the amount of transcription product is enhanced as compared to the amount of transcription obtained with a chimeric transcriptional initiation region comprising a single copy of said CaMV enhancer sequence and said promoter.

Remarks

 Corresponding applications also be pending and there may be issued claims in Brazil and Japan.

Note: Patent information on this page was last updated on 30 September 2006.