(Fwd) Re: Taq Patent Latest

Kevin O'Donnell odonnell at sasa.gov.uk
Wed Jul 17 09:29:34 EST 1996


------- Forwarded Message Follows -------
To:            odonnell at sasa.gov.uk
Subject:       Re: Taq Patent Latest
From:          "Jack H. Pincus" <jhpincus at cris.com>
Organization:  Concentric Network
Date:          Tue, 16 Jul 96 18:26:02 EST

In article <9607151349.aa08030 at jura.sasa.gov.uk>, you say...
>
>As the Roche vs Promega battle rumbles on, here is the latest from 
>Europe (From New Scientist 6 July 1996):
>
>"PATENT FAILURE
>
>A company (Hoffmann la Roche) hoping to cash in on an enzyme vital for 
most forms of DNA 
>analysis, including DNA fingerprinting, was last week dealt a blow by 
>the European Patent Office in Munich.  The EPO ruled that the enzyme 
>(taq polymerase)cannot be patented because it was first described by
> scientists in 1976.
>[snip]
>The patent office has given the company until 24 october to present 
>further evidence supporting its application."
>
>Now can anyone tell me if this means that anyone can sell taq in 
>Europe? Does it mean that scientists are free to produce their own 
>stocks of taq in their own laboratories?
>
>Kevin
>Dr Kevin O'Donnell                          "I'm happy, I'm happy
>Diagnostics and Molecular Biology    and I'll punch the man that says 
I'm not"
>SASA                                                   - Ivor Cutler
>Edinburgh

The EPO is concluding that the patent is not novel because of the 
publication cited.  The patent owner has an opprotunity to rebut that 
finding and may be able to appeal if the EPO doesn't accept the 
rebuttal.  Whether the patent owner will prevail depends on the contents 
of the reference cited and whther the patent owner can differntiate 
their enzyme from the prior art.  One would have to compare the 
reference to the patent application to make that judgement.

The process has just started.  At this point one cannot predict whether 
the patent owner or EPO will prevail.  Even if the patent owner loses, 
the first round, they may have a right to appeal, and they may have 
other patents covering aspects of PCR that would preclude users from 
practicing the technology without a license.

Jack H. Pincus
jhpincus at cris.com

Dr Kevin O'Donnell                          "I'm happy, I'm happy
Diagnostics and Molecular Biology    and I'll punch the man that says I'm not"
SASA                                                   - Ivor Cutler
Edinburgh



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