Patent Baristas

In another challenge to patents it just doesn’t like, the nonprofit organization Public Patent Foundation (PUBPAT) got the U.S. Patent and Trademark Office (USPTO) to grant a request for reexamination of four crop science-related patents held by Monsanto. PUBPAT seems to be on a roll after successfully getting reexams of patents on Pfizer’s Lipitor, WARF’s stem cells., and Gilead Sciences.

Basically, Monsanto sells genetically modifies seeds, e.g., canola, soybeans, corn, cotton, that are herbicide-resistant. The seeds are only good for one generation, so the company sells new seeds, plus the herbicide, to farmers every year and producing increased crop yields.

PUBPAT requested ex parte reexamination under 35 U.S.C. §§ 302-307 and 37 C.F.R. § 1.510 claiming they are all invalid under 35 U.S.C. §§102 and 103 and their existence is causing significant public harm and impeding scientific progress. In its Office Actions rejecting each of the patents, the USPTO held that evidence submitted by PUBPAT, in addition to other prior art located by the Patent Office’s Examiners, showed that Monsanto was not entitled to any of the patents.

Monsanto will not get a lot of sympathy from farmers who know Mansanto to be heavy-handed in filing dozens of patent infringement lawsuits asserting the four challenged patents, often for saving seed from one year’s crop to replant the following year, which is not allowed under patent law. PUBPAT argues that Monsanto is using them to harass, intimidate, sue – and in some cases literally bankrupt – American farmers.

The lawsuits filed by Monsanto against American farmers include Monsanto Company v. Mitchell Scruggs, et al, 459 F.3d 1328 (Fed. Cir. 2006), Monsanto Company v. Kem Ralph individually, et al, 382 F.3d 1374 (Fed. Cir. 2004) and Monsanto Company v. Homan McFarling, 363 F.3d 1336 (Fed. Cir. 2004).

The patents involved here are U.S. Patents 5352605, 5164316, 5196525, and 5322938, all of which assert claims to the CaMV 35S promoter, double 35S enhancer, and/or constructs containing them:

5,164,316 describes a plant cell comprising a DNA construct having as components, (a) a duplicated CaMV 35s enhancer sequence comprising an AluI-EcoRV fragment of a CaMV 35S upstream region; and (ii) a promoter comprising an RNA polymerase binding site and an mRNA initiation site; (b) a nucleotide sequence of interest for transcription to mRNA; and (c) a termination region;

5,196,525 provides for a DNA construct having as components, (a) a transcription initiation region including (i) a tandemly duplicated CaMV 35S enhancer sequence comprising an AluI-EcoRV fragment of a CaMV 35S upstream region; (ii) a promoter comprising an RNA polymerase binding site and an mRNA initiation site; (b) a nucleotide sequence of interest for transcription to mRNA; and (c) a termination region ;

5,322,938 provides for transcription initiation regions that provide for enhanced transcription or a DNA sequence, particularly a plant sequence; and

5,352,605 relates to the use of viral promoters in the expression of chimeric genes in plant cells. It also relates to chimeric genes which are capable of being expressed in plant cells, which utilize promoter regions derived from viruses which are capable of infecting plant cells. One such virus comprises the cauliflower mosaic virus (CaMV). Two different promoter regions have been derived from the CaMV genome and ligated to heterologous coding sequences to form chimeric genes. These chimeric genes have been shown to be expressed in plant cells.

Monsanto, of course, will now have an opportunity to respond so it ain’t over till it’s over. The patent office grants over 90 percent of the requests for reexamination and many of those patents are issued with substantially the same claims as before reexamination. This issue could take years to resolve. In the end, the USPTO could allow the claims, reject only certain claims, or allow the claims in an amended form.

See the requests for reexamination and the office actions at PUBPAT here.

PatentLens provides an excellent breakdown of the claims relating to the 35S promoter and duplicated CaMV 35S enhancer sequences.