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Caltech's 'Junior' Status in Enzo Patent-Interference Case Could Hurt ABI

NEW YORK (GenomeWeb News) — US patent regulators have put Applied Biosystems at a big disadvantage in an important sequencing technology issue after they recently named a key licensing partner the junior party in a patent-interference review triggered after a 25-year-old patent application filed by Enzo Biochem was approved.
According to a patent attorney with experience in the interference review process, statistics show that companies named a junior party have a miniscule chance of winning the US patent office’s designation as original inventor.
As GenomeWeb News reported last week, the US Patent and Trademark Office on Nov. 8 declared that a patent issued in 1998 to ABI’s licensing partner, the California Institute of Technology, interferes with a patent application filed in 1982 by Enzo and accepted by the patent office late last year.
Though Enzo’s patent application has not been made public yet, Enzo and the USPTO believe the application covers virtually the same invention patented by Caltech.
In such interference cases, the patent office designates a senior party — the party that filed first — and a junior party. Enzo filed its application first, but the patent filing was delayed and amended over the years before being accepted by the patent office late last year. Caltech filed its application in 1994. According to patent experts, this ruling puts Caltech, and by extension ABI, at a distinct disadvantage.
“My understanding is that the senior party wins 97 percent of the time,” said Richard Warburg, an intellectual property attorney with Foley and Lardner. “It’s a huge disadvantage to be the junior party … because you have the burden to prove you had the invention beforehand. You have to prove you actually made the invention, or that you had a full concept of the invention prior to the other person,” he told GenomeWeb News sister publication BioCommerce Week.
The Caltech patent, No. 5,821,058, is entitled “Automated DNA sequencing technology,” and expires in 2015. According to the patent’s abstract, it covers “a process for the electrophoretic analysis of DNA fragments produced in DNA sequencing operations wherein chromophores or fluorophores are used to tag the DNA fragments produced by the sequencing chemistry and permit the detection and characterization of the fragments as they are resolved by electrophoresis through a gel.”
Caltech licensed the rights to that patent years ago to ABI, which derives more than a quarter of its revenue from the sales of DNA sequencing machines and reagents. ABI officials have predicted that DNA sequencing revenues would remain flat in 2007.
The interference review process usually takes about two years, according to people familiar with it.

The original version of this article appeared in BioCommerce Week, a GenomeWeb News sister publication.