Accurate speculation is not enough

The European Patent Office (EPO) has revoked an ICOS patent after opposition from SmithKline Beecham and Duphar International Research. The patent described the DNA sequence of a purified and isolated seven-transmembrane protein, V28, which has at least one specific ligand-binding activity. The patent included speculation as to the specific function of the molecule, but lacked working examples of function and utility. The speculation turned out to be correct, retrospectively. The Opposition Division of the EPO, which decides the fate of opposed patents, agreed with the opponents that a list of speculative functions for a DNA sequence that encodes a protein is not a reliable basis for establishing industrial applications for that molecule. Furthermore, the absence of a disclosed ligand for the receptor protein renders the patent not sufficiently disclosed. This decision could have a tremendous impact on patents and applications, many of which describe genes for which no function is shown at the filing date. The patent owner has not filed an appeal — perhaps to avoid the decision becoming enshrined as a good one by an Appeal Board decision at the EPO? WEB SITE European Patent Office Godiska, R., Gray, P. W. & Schweickart, V. L. Novel V28 seven transmembrane receptor. EP Patent WO9412635 (1994).

Madey and the Duke

A case concerning a microwave gun and a free electronic laser could have important implications for all academic research universities. In the 1980s, the laser researcher John Madey moved from Stanford to Duke University, along with substantial equipment. After leaving Duke in 1997, Madey sued the university for patent infringement, because Duke had continued to use his former laser equipment in its facility, violating Madey's laser patents. The university argued that it had no liability for infringement, because its use was 'experimental' and based broadly on Duke's academic missions. The District Court then put the burden on Madey, the patent holder, to prove that Duke's use of the equipment was non-experimental. However, at appeal, the Federal Circuit rejected the District Court's approach of putting the burden of proof on the plaintiff, and also rejected the overly broad interpretation of the experimental use defence to infringement. The circuit judges held that the experimental use defence is intended for uses that are solely for amusement, to satisfy idle curiosity or strictly for philosophical enquiry. Duke's research did not qualify for the experimental use defence because it was in keeping with the alleged infringer's legitimate business. WEB SITE US Patent and Trademark Office Madey, J. M. J. & Westenskow, G. A. Microwave electron gun. US Patent 4,641,103 (1987) Madey, J. M. J. & Szarmes, E. B. Free-electron laser oscillator for simultaneous narrow spectral resolution and fast time resolution spectroscopy. US Patent 5,130,994 (1992)