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« White House Unveils BRAIN Initiative | Main | A Primer on Claim Construction -- Comments on Dr. Mason's Response »

April 10, 2013


I'm not trying to be rude, but could somebody please explain to Dr. Mason the difference between a patent application publication and an issued patent? And also how claim construction works? It's unfortunate that authors don't try harder to understand their subject matter before they publish.

Kevin and Don,

I am waiting to see what you say about Dr. Mason's response. You always have great opinions.

"[Ed. At Dr. Mason's request, his response has been revised to indicate that US 20130030040 A1 and US 20130041209 A1 are published patent applications rather than patents as Dr. Mason stated in the original version of his response."

LOL. I only saw this post after the revision, so thanks for including that editorial note, which pretty much says it all.

If the claims of these two patent APPLICATIONS make it out of the USPTO, then Dr. Mason can cite to them in support of his contentions. Until then...

This is a awkward. While much could be said, just a few very limited observations. For example, the claim of the '040 publication: "14. An isolated nucleic acid molecule the sequence set forth in SEQ ID NO:1 or SEQ ID NO:2." is defective in that it doesn't specify whether the isolated DNA comprises, consists of, or consists essentially of the specified SEQ ID. Not the best example, but nonetheless, it's clear that SEQ IDs 1 and 2 are 5.2kb and 6.1kb DNAs,respectively. There is no claim to anything less than a 5,266 bp polynucleotide here, and 15-mers are just not encompassed by this claim.
It doesn't matter if the specification also "discloses" shorter fragments, because "disclosing" something and "claiming" it are very different concepts in patent law, which should not be confused. It is not sound to make broad pronouncements about our impending loss of genomic liberty based on "patents that claimed 15-mers in their construction." A patent that explicitly claims an isolated 5,000 bp DNA doesn't "constructively claim" a 15-mer.
One thing is clear, though. Dr. Mason appears to understand such claims in ways that don't match the conventions used by patent examiners, judges, and patent practitioners. Accordingly, he gives them an almost infinitely broader meaning than a patent examiner (or judge) would. It's true that we're trying to communicate across a broad divide here, but nothing I've seen allows the kinds of conclusions Rosenfeld and Mason are drawing in their paper.

@how to put this? Bump.

For more information on Dr. Mason, See here.

Does anyone know where he went to law school or what his reg no. is? I couldn't find it on his bio.

Also, I am not a searching wiz, but could someone identify any patent or application that he is listed as an inventor?

I can appreciate his effort to engage in a conversation here, but it is just troubling that an amount of his argument regarding "what is claimed" is actually in no way found in any of the issued claims. Regarding any inappropriately broad claims to isolated DNAs in pending patent applications, the prior art will do a fine job of dispensing with them.

And the siRNA claims of the '442 patent - even if you ignore the functional language requiring that the molecule "mediates RNA interference" (which you can't) - the claims are directed to chemically modified RNA, which can in some instances be DNA, but that provides a mixed RNA/DNA molecule. And each strand is 18-24 NTs in length. I'm quite happy and content that no aspect of this claim encompasses any my genes.

At least it'll all be over next week, and sometime in the summer we'll be able to direct our snide comments to the SCt opinion holding that isolated DNA is not patent eligible because, "it's old and natural". I need a drink.

Um, I don't get it. If the claims can really be construed as broadly as Dr. Mason claims (which strikes me as an absurdly twisted interpretation of the claim language), then they claims aren't valid. End of story. Even if the claims he is worried about as encompassing thousands of molecules are actually novel and nonobvious over the relevant prior art, they could be shot down as "overly broad" under section 112.

It's missteps like this that only reinforce the notion that those in the sciences without an understanding of law should not try to make a legal position, even one that concerns science.

Let's turn the 15-mer argument on its head, using the BRCA1 Myriad patent as an example.
As has been suggested by Dr Mason, let's assume that there are 15-mer sequences in the BRCA1 coding sequence that are also present in other genes. Let's further assume that the sequencing of some of these other genes is prior art to the BRCA1 discovery and the '282 patent. Could Myriad enforce in court '282 claims 5 or 6 against a 15-mer that could have been derived from previously known sequences? I would think not, since it's well within the standard practice of molecular biology to pull shorter sequences out of a gene sequence.

Truth be told, I think that '282 claim 16 is much more broad and dangerous. It claims to cover any PCR primer pair that amplifies all or a portion of the BRCA1 gene. It could be construed as covering almost any sequence on that chromosome, including sequences not disclosed in the patent filing. I could imagine a court invalidating this claim if it were challenged.

Fair warning - I'm a scientist with a small amount of understanding of the law. Criticism is welcome.

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