By Donald Zuhn --
On August 20, 2007, the Federal Circuit reversed an award of priority by the Board of Patent Appeals and Interferences to Drs. C. Richard Schlegel and A. Bennett Jenson (Schlegel), and instead awarded priority to Drs. Ian Frazer and Jian Zhou (Frazer). The Federal Circuit also remanded the case to the U.S. Patent and Trademark Office for appropriate further proceedings.
Frazer had appealed the Board's priority determination in an interference involving Frazer's U.S. Application No. 08/185,928 (the '928 application), entitled "Papilloma Virus Vaccine," and Schlegel's U.S. Application No. 08/216,506 (the '506 application), entitled "Papillomavirus Vaccine." The invention contested in the interference relates to human papillomavirus (HPV) vaccines comprising HPV-like particles - i.e., particles possessing the outer protein coat (capsid) of HPV but lacking HPV DNA.
On July 19, 1991, Frazer filed an Australian patent application disclosing that a vector "designed to coexpress the L1 and L2 late genes of human papillomavirus [yielded] HPV-like particles," and that such particles "could provide a safe source of material for the development of a vaccine." On July 20, 1992, Frazer filed an International application claiming the benefit of the Australian application, and on January 19, 1994, filed the '928 application claiming the benefit of the International and Australian applications. On June 25, 1992, Schlegel filed the '506 application.
The count established in the interference essentially recites an HPV-like particle made by "constructing a recombinant DNA molecule that contains a sequence encoding a papillomavirus L1 protein; transfecting a host cell with the recombinant DNA molecule; expressing papillomavirus virus-like particles from the transfected host cell." The Board awarded priority to Schlegel, determining that Frazer was not entitled to the benefit of the Australian application because at the time the Australian application was filed "Frazer believed that both the L1 and L2 genes had to be expressed together from the same plasmid," and Frazer's "later work shows that only L1 protein was necessary." As a result, the Board found that Frazer's Australian application "did not provide a described and enabled anticipation under 35 U.S.C. § 102(g) of the subject matter of the count."
The Federal Circuit determined that the Board erred in denying Frazer the benefit of the Australian application, stating that "[t]he Australian application contained complete details of the method that is the subject of the interference count, and depicts the papillomavirus-like particle of the count with full disclosure of how to produce it." While the CAFC acknowledged that Frazer's Australian application discloses the expression of both the L1 and L2 genes, "his later discovery that either the L1 protein or both the L1 and L2 proteins led to capsid formation does not negate or contradict his disclosure and constructive reduction to practice of the method of the count that produced the papillomavirus-like particle of the count." The Federal Circuit therefore concluded that "the description [in the Australian application] of the procedures used, and the successful production of the virus-like particles there achieved and reported, disclose and enable a species within the count."
Frazer v. Schlegel (Fed. Cir. 2007)
Panel: Senior Circuit Judge Friedman and Circuit Judges Newman and Rader
Opinion by Circuit Judge Newman
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