Two reexaminations filed on one biotech patent

Gregory Aharonian srctran at
Thu Jul 28 10:56:53 EST 1994

    For some time, there has been a controversy in the biotechnology and
agriculture fields over some very broad patents for genetically engineered
plants.  Some argue that these companies are trying to exert undue control
over plant gene lines with these patents.  Agracetus has a broad patent on
cotton (see below) and is filing patents for soybeans.  Calgene has filed
patents on the vegetable family including cauliflower, broccoli and kale.

    One company, Agracetus (Middleton, WI) has two patents, 5159135 and
5004863, that cover genetically engineered cotton and a product process based
on their line of cotton seed.  Many claim that these patents, especially
5159135, are too broad and should be limited.

    People are so upset that two reexaminations of 5159135 have been filed
with the Patent and Trademark Office, one last winter by a Alexandria law
firm on behalf on an anonymous client.  The second reexamination of patent
5159135 has been filed this month by the US Department of Agriculture.
Originally Agracetus had filed one patent, but had it split in two by the
Patent Office, the second of which (the process part) had to be appealed to
the Court of Appeals Federal Circuit, before it was allowed.

    Interestingly, the Department of Agriculture hasn't fully prepared its
case. "Perhaps an argument can be made that one of our employees was somehow
intimately involved in this", said the USDA attorney who filed for
reexamination of Agracetus' patent.   "That is an argument we haven't
research fully".

   Attorneys involved with the reexamination expect that it will be overturned
on obviousness issues, not prior art, which Agracetus claims that there is 
none, beyond the work of its own inventors.

    For more, see an article in the July 1994 issue of Genetic Engineering

Greg Aharonian
Internet Patent News Service
(for subscription info, send 'help' to   patents at
(for prior art search services info, send 'prior' to patents at

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