Biotechnology Patents

devereux at GCG.COM devereux at GCG.COM
Tue Oct 8 11:49:40 EST 1991


I am not a patent lawyer, but there is so much misinformation about patents
floating around the networks these days that i thought i might try to
clarify a few of the things i think i know about patents. 

1) a patent is a publication.  there is no restriction that limits the
distribution of patent information.  just the opposite; the patent makes the
underlying art known to the interested public in return for a monopoly right
to use that art for a limited period of time. failure to disclose the
underlying art adequately can invalidate a patent. 

2) there is no need to keep from publishing data that are part of a patent 
application so long as the application has been filed.  indeed, in some 
countries, the USA included, 
the data may be published first, but the application must follow publication 
within a limited period of time.

3) both embl and ncbi have plans to compile and release patent data through
their public domain sequence data libraries in collaboration with the US and
European patent offices.  if there were strong interest in the community,
they would certainly work harder to implement these plans. 

4) derwent adds value by translating and abstracting patents from many
different patent offices.  the underlying information is public, derwents 
abstraction and compilation of it is not. 

5) it is by no means established that the simple determination of a
biosequence is sufficient to justify a patent even when it is clear the
molecule whose structure has been determined will obviously be of commercial
value.  even if some patents have been granted for sequences, patent
standards generally become more stringent as the underlying technology
(determining sequences and inferring their function) becomes more and more
straight-forward.  in general patents are not granted for methods or
configurations of matter which are obvious.  the applicant must show some 
ingenious step in order to justify a patent.

6) no substantial amount of genome money is going to patenting sequence data
at this time.  the decision to patent is made by the investigator and her
institution and costs are normally born by the institution.  because the
cost is substantial the institution is unlikely to make frivolous
application. 

john devereux

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John Devereux                             ||    Phone: (608) 231-5200
President, Genetics Computer Group, Inc.  ||      Fax: (608) 231-5202
University Research Park                  || Internet: Devereux at GCG.Com
575 Science Drive, Suite B                ||
Madison, Wisconsin, 53711, USA            ||
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