Benitec announced this week that the US Patent and Trademark Office has withdrawn a novelty objection to the company's core US patent as part of an ongoing re-examination process of the intellectual property.
Claims within the patent, No. 6,573,099, however, have still been rejected based on objections related to the fundamental Fire and Mello patent held by the Carnegie Institute, according to Benitec. Overcoming these rejections, the company said, will likely require a review by the patent office's board of appeals.
Such a move will likely take around 12 months, Benitec added.
Benitec’s IP woes began in 2004 when it sued three companies for infringing the ‘099 patent, which essentially claims gene-expression knockdown using DNA that transcribes double-stranded RNA (see RNAi News, 4/2/2004). One of those companies, Nucleonics, fought the case in court and, as part of its legal strategy, either opposed the patent or requested re-examinations of Benitec’s IP in several nations, including the US.
Although the patent-infringement suit was ultimately withdrawn by Benitec and Nucleonics has since shut down its operations (see RNAi News, 11/6/2008), the re-examination proceeded.