By Mark Chael ---
On February 21, 2007, the Board of Patent Appeals and Interferences (BPAI) at the U.S. Patent and Trademark Office (USPTO) entered judgment in favor of Enzo Life Sciences, a subsidiary of Enzo Biochem, Inc., after Princeton University and Imclone Systems, Inc. requested adverse judgment in a prior filing in which they conceded priority to Enzo. The interference at issue was declared on August 7, 2006 between Enzo's pending U.S. Application No. 08/479,995 and Princeton's U.S. Patent Nos. 4,882,269 and 5,424,188, which are licensed to Imclone.
Because the '995 application was filed before January 1, 1998 (see here) - and, therefore, before the publication rules took effect - the '995 application has not been made publicly available. However, an analysis of the '269 and '188 patents indicates that the technology involved in the interference relates to the detection of target nucleic acids in a sample by amplifying the signal generated during the detection event, as opposed to amplifying the target nucleic acid itself. In this type of signal-amplified nucleic acid detection, a primary probe that hybridizes to the target nucleic acid in the sample is added to the reaction mix, and then a family of signal-generating secondary probes that hybridize to different segments of the primary probe are added. By hybridizing multiple signal-generating secondary probes to the primary probe, one is able to generate an enormous amplification of the signal generated by the primary hybridization event. One advantage of using signal amplification in nucleic acid detection is the ability to use less toxic signal generating molecules (e.g., radionuclides). As is readily apparent, this technology is widely applicable to a broad range of disciplines, including medical diagnostics, criminal forensics, and pharmaceutical research and development.
One of the more interesting aspects of this interference is that both of the patents involved in the interference expired while the
interference was pending. Surprisingly, however, the expiration of the '188 patent
was not promptly brought to the BPAI's attention – an omission that will effectively
give Enzo a three-month extension of term should a patent issue from
the '995 application, since delays before the BPAI are not counted
against a patent's term.
More information about this proceeding can be found in Enzo's press release.
A quick note about interferences for our overseas readers: Since U.S. Patents are awarded to the "first to invent" rather than the "first to file," interferences may be initiated with respect to a particular U.S. patent application in order to determine the party that first invented a particular technology. According to the Manual of Patent Examining Procedures (MPEP), fewer than one percent of all patent applications become involved in an interference proceeding. However, with more than 900,000 patent applications currently pending in the U.S., there is the potential for approximately 9000 interferences, which may be one reason why there is a move afoot to change the U.S. patent system to a "first to file" system.
Comments