NEW YORK (GenomeWeb News) — A California law firm has asked the US Patent and Trademark Office to reexamine two microarray patents held by Oxford Gene Technology, GenomeWeb News has learned.
The law firm Fliesler Meyer filed the ex parte reexamination requests in mid-January on behalf of a client who wishes to remain anonymous, according to Anthony Craig, an attorney at the firm.
Arguing that several claims in each patent are covered by prior art, the firm asked the USPTO to reexamine US Patent No. 5,700,637, “Apparatus and Method for Analyzing Polynucleotide Sequences and Method of Generating Oligonucleotide Arrays,” and US Patent No. 6,054,270, “Analyzing Polynucleotide Sequences."
As an example of prior art, the reexamination request for the ‘637 patent, which was granted in 1997, cites the user’s manual for Applied Biosystems’ 380B Synthesizer version 1.0, published in 1985.
Craig cited as evidence that the OGT patent is too broad as currently written the fact that its claims “encompass an instrument that was already on the market.” The reexamination requests cite several other examples of prior art for both patents in question.
“The patent office can make a mistake,” he said.
Craig said he expects the USPTO to make a decision on whether to reexamine the patent in around three months.
The likelihood of the USPTO granting the request is fairly high, according to a 2006 study in the North Carolina Journal of Law & Technology that found that 98 percent of ex parte reexamination requests filed in 2004 were granted.
Of all patents that were reexamined through 2003, the study found, 10 percent had all claims cancelled and 64 percent had some claims cancelled or limited.
Peter Hotten, director of licensing and business development at OGT, told GenomeWeb News that the company is “aware of this latest attempt to challenge our fundamental microarray patents in the US.”
He added that these patents “have been extensively litigated and licensed and their validity recognized.”
Hotten declined to provide further comment.