Seequence handling for patent applications
edlynsimmons@mmd.com
Wed, 28 Feb 96 16:16 GMT
Anna Maria Caranci asks if it's necessary to register
biosequence data with GenBank before filing a patent
application. The answer is that the patent offices
treat sequence data entirely differently from the way
they treat microorganisms. Microorganisms have to be
deposited with ATCC or a similar agency because there's
no way to enable a reader of the patent specification to
practice the invention without having a viable sample
or the organism. Sequences, on the other hand, are
fully described by the sequence itself - the sequence
should be reproducible by anyone who knows the proper
techniques (which must either be state-of-the-art or
be described in the patent specification). The USPTO
has regulations for the format used to disclose a
sequence in a patent application. In addition to
using the correct format in the disclosure of the
patent, applicants are required to submit a computer-
readable sequence listing. Rules for submitting
patent applications containing sequence info are
described in Chapter 2400 of the Manual of Patent
Examining Procedures, which can be obtained from
the Government Printing Office or downloaded from
the USPTO's bulletin board or website.
As for registering the sequence with GenBank before
filing an application, I don't know enough to give
advice. If GenBank adds sequences to the publicly
accessible database when the information is received,
that would be a publication that would serve as a
bar to claiming that sequence in a patent application
filed thereafter. If GenBank is willing to hold the
information unpublished until your patent application
is published, their receipt date would help to establish
priority of invention if an interference is declared
in the U.S. (I neglected to point out that publication
within a year before filing in the U.S. isn't a bar
to patentability if you can prove the invention was
made before publication. I assume your company is
interested in filing in other countries as well, and
the other countries won't have such a grace period.)
The rule for publication of anything that might be
claimed in a patent application is to wait until the
application has been filed; many companies even wait
until the patent application has been published.
Edlyn Simmons
Hoechst Marion Roussel, Inc.