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Siemens Sues to Reverse USPTO Decision

By a GenomeWeb staff reporter

NEW YORK (GenomeWeb News) – Siemens Healthcare Diagnostics is suing Enzo Life Sciences over a decision by the US Patent and Trademark Office earlier this year giving Enzo rights over a nucleic acid hybridization assay technology.

In the lawsuit filed in the US District Court for the District of Massachusetts, Siemens is seeking to reverse a finding by the USPTO in February in favor of Enzo over US Patent No. 5,124,246, held by Siemens.

The patent was issued in June 1992. It had been held by Bayer HealthCare but was transferred to Siemens when it acquired the Bayer unit in 2006. Chiron originally filed the patent application for the technology in 1989 and Bayer acquired the technology when it bought Chiron.

Meanwhile, Enzo had filed an application for its signal amplification technology in May 1983.

In August 2006, the USPTO declared a patent interference in order to determine the originator of the technology. In its February decision, the agency declared it to be Enzo.

Siemens sought a rehearing on the case, but two months ago, the USPTO's Board of Patent Appeals and Interferences denied Siemens' request.

In its lawsuit, Siemens claims that the USPTO "erroneously ruled that Enzo invented the technology in question before Siemens." While Enzo says it filed its application for the disputed technology in 1983, Siemens alleges that "Enzo abandoned each of these applications without a single claim ever issuing as a patent and refiled them as continuing applications.

"As a result, Enzlo artificially and illegally extended the potential expiration date of any patent that might result from these applications," Siemens alleged in its complaint.

Because of the "unduly long pendency" of Enzo's application, the public may have been using the technology claimed by Enzo, "without having any knowledge about them." If Enzo is awarded the patent covering the technology "after the unreasonable and inexcusable 23-year delay in prosecution, Enzo would profit from its undue delay to the detriment of both the public and Siemens," according to the lawsuit.

Siemens is asking the court to reverse the USPTO's interference decision and determine that the technology in dispute was first developed by Siemens, and to find that Enzo's patent application is "unenforceable."

At the time of publication of this article, Enzo did not respond to a request for comment.