The USPTO has released an interim rule of practice that implements provisions of the CREATE Act that amended 35 U.S.C. 103(c). (Published at 70 FR 1818). The purpose of the Act is to promote cooperative research, such as between a university and start-up company by excluding prior art from obviousness (103) consideration if the prior art arose from a joint research agreement.

To overcome a rejection under 35 U.S.C. 103(a)based upon subject matter (whether a patent document, publication, or other evidence)which qualifies as prior art under only one or more of 35 U.S.C.102(e),(f)or (g) via the CREATE Act, the applicant must provide a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement within the meaning of 35 U.S.C.103(c)(3), and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. 35 U.S.C.103(c)(3) defines a “joint research agreement” as a written contract, grant,or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention, that was in effect on or before the date the claimed invention (under examination or reexamination) was made.

In addition to providing a statement, the applicant must also:

(1) Amend the specification to disclose the names of the parties to the joint research agreement;and

(2) either amend the specification to either set forth the date the joint research agreement was executed and a concise statement of the field of the claimed invention, or specify where (i.e., by reel and frame number) this information is recorded in the assignment records of the Office.

The new rules cannot be used to overcome rejections based on anticipation. Likewise, the PTO indicated that the new rules will likely not apply to reissue applications that were initially granted prior to December 10, 2004.  The PTO is asking for comments before issuance of the final rule.  Send comments to: by February 10, 2005.

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Splashlogo Girindus America is hosting an Oligonucleotide Technical Symposium being held in conjunction with the inauguration of their new commercial scale oligonucleotide facility. This symposium is co-sponsored by the Genomics Research Institute and the Cincinnati chapter of the American Chemical Society.

The Symposium will be March 9, 2005, at the Genomics Research Institute Auditorium in Cincinnati, Ohio. They have assembled an international team of oligonucleotide experts who will present during this one day symposium. There is no charge for the conference but there is a nominal charge for the ACS dinner that can be paid prior to the dinner.

There are a limited number of openings for the conference so reserve a place at the symposium by emailing your response to Ms. Rose Hawkins.

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I thought I’d post an update since I was making a donation today and thinking about the victims of the tsunami. The American Red Cross today announced a massive relief plan for those affected by the tsunamis, requiring an estimated $400 million to respond to both immediate and long-term needs now and years into the future. The plan calls for specialized relief in five areas, including food and safe water, healthcare and disease prevention, immediate family supplies, mental health counseling, and disaster preparedness and prevention measures.

The first priority for the American Red Cross is providing lifesaving help in the form of food, clean water, and sanitation, and other relief items like tents, hygiene kits and cooking utensils. Teams of American Red Cross experts have already been deployed to some of the affected areas, and are working hard to provide support to the ever-growing relief effort. Implementation of this plan has already begun in coordination with the International Federation of Red Cross and Red Crescent Societies and other important partners.

The American Red Cross will work in partnership with other relief organizations in a massive immunization campaign, while offering mental health services to those who have been so profoundly affected by this immense disaster.

Donate here.

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The New York Times ran an article promoting the idea of a risk-based protocol for safety evaluation that would greatly reduce the time and costs involved in developing most new gene-spliced crops. The author warns that alarmist warnings about the possible hazards of gene splicing have made the public extremely wary of this selective form of genetic modification even though such warnings have so far been groundless.

The article cites a telephone survey of 1,200 Americans released last October by the Food Policy Institute at Rutgers University, 43 percent thought, incorrectly, that ordinary tomatoes did not contain genes, while genetically modified tomatoes did. One-third thought, again incorrectly, that eating genetically modified fruit would change their own genes.

Most worrisome is that the European Union has banned imports of all foods produced through gene splicing, and it has kept many nations, including those afflicted with widespread malnutrition, from accepting even donated gene-spliced foods and crops by threatening to cut off products they export because they might become contaminated with introduced genes. Uganda has even prohibited the testing of a fungus-resistant banana created through gene splicing, even though the fungus is devastating that nation’s most important crop.

However, among foods developed through conventional methods to induce mutations, e.g., lettuce, beans, grapefruit, rice, oats and wheat, none had to undergo stringent testing and federal approval before reaching the market. Only those foods produced by the specific introduction of one or more genes into the organism’s DNA are subject to strict and prolonged premarketing regulations.

Read the article at here.

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The USPTO announced the 2004 top 10 private sector patent recipients. Listed below are the 10 corporations receiving the most patents for inventions in 2004, along with their 2003 ranking. Note that tech companies continue to outpace any of the bio-pharma companies in patent filings given the number of big companies that have shrinking pipelines. I’ll be looking to see who first, if it ever happens, breaks into the top ten.

Top 10 Private Sector Patent Recipients for 2004
Preliminary Rank in 2004  Preliminary Number of Patents in 2004  Organization  (Final Rank in 2003) (Final Number of Patents in 2003)
International Business Machines Corporation


Matsushita Electric Industrial Co., Ltd. 

(1,774 ) 

Canon Kabushiki Kaisha


Hewlett-Packard Development Company, L.P.  


Micron Technology, Inc.


Samsung Electronics Co., Ltd.


Intel Corporation


Hitachi, Ltd


Toshiba Corporation


Sony Corporation
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According to CXOToday, IBM today opened 500 key innovations to the Open Source community, believed to be the largest pledge ever of patents of any kind in the world. The pledge applies to any individual, community, or company working on or using software that meets the Open Source Initiative (OSI) definition of Open Source software. The move could change the way companies deal with patents and others are expected to follow suit.

IBM’s patent portfolio grew by more than 3,000 patents in 2004. According to the United States Patent and Trademark Office (USPTO), IBM had 1,314 more patents than any other company. This marks the fourth consecutive year IBM has received more than 3,000 U.S. patents, and IBM remains the only company to receive more than 2,000 patents in one year.

Read the article here.

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Advanced Cell Technology, Inc. (ACT) announced today the intent to appeal the decision of the Board of Patent Appeals and Interference, interference number 104,746, between itself and Geron Corporation (Nasdaq:GERN) to the U.S. District Court. Advanced Cell Technology disputes Geron Corporation’s claim that ACT’s patent at issue in the interference has been invalidated. An issued US patent is entitled to a presumption of validity until a final ruling. A final ruling in this case has not been made.

More here.

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The USPTO’s Patent Application Information Retrieval (PAIR) sytem now lists expirations due to failure to pay maintenance fees. Expired patents now have a status of "Patent Expired Due to Non-Payment of Maintenance Fees Under 37 CFR 1.362".  Patents can, of course, expire in other ways.  If a patent is subject to a terminal disclaimer relative to a previous patent and they cease to be commonly owned, for example.

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