[Pharm-policy] article on PTO's new proposed guidelines for DNA patents

[James Love]

http://www.ljx.com/cgi-bin/f_cat?prod/ljextra/data/texts/2000_0108_59.html

PTO's new guide to DNA info 

Scientific community is in conflict on free use of early research. 

                        BY VICTORIA SLIND-FLOR 

                 NATIONAL LAW JOURNAL STAFF REPORTER 

The National Law Journal (p. B06)
Monday, January 17, 2000 

In response to some scientists' concerns about the rush to patent DNA
segments, the U.S. Patent and Trademark Office (PTO) on Dec. 21 posted a
new set of proposed examinations guidelines on its Web site. 

Jeffrey P. Kushan, a partner in the Washington, D.C., office of
Atlanta's Powell, Goldstein, Frazer & Murphy L.L.P., said that these new
utility guidelines should catch the attention of scientists and
academics who espouse the purist view that very small DNA segments
shouldn't be patented. 

The proposed change would affect the way examiners look at the "utility"
of an invention, determining whether or not it serves some particular
practical purpose. The PTO is accepting written comments on these
guidelines until March 22. 

   
Claims as 'landfill' 

Under the new guidelines, examiners will look for "specific and
substantial utility" in inventions. Mr. Kushan said that the PTO is
addressing the proliferation of applications filed for very small DNA
sequences in which the inventors merely claim the usefulness of a
particular segment in that it helps researchers find other DNA segments.
Some companies, he notes, are submitting as many as 6,000 applications
for these separate small DNA segments. Mr. Kushan was a staff member at
the PTO for 10 years and was a member of
the office's 1992 Advisory Commission on Patent Law Reform. 

The guidelines use harsh language in discussing vague utility claims.
The PTO says that "throwaway," "insubstantial" and "nonspecific"
utilities claims for complex inventions are  no more than "landfill." 

  
   [snip]



-- 
James Love
http://www.cptech.org
mailto:love@cptech.org
voice 1.202.387.8030