Harvard’s US OncoMouse Patents are All Expired (For the Time Being)

By Dennis Crouch

Harvard College v. Kappos, 12-cv-1034 (E.D.Va. 2012)

Harvard’s patented OncoMouse has been a bestseller for cancer research here in the US. Two Harvard researchers took an available laboratory mouse and inserted a heritable cancer-causing gene into the creature’s DNA. In the US, Harvard owns three patents covering aspects of the mouse and its creation that are exclusively licensed to Du Pont. U.S. Patent Nos. 4,736,866, 5,087,571, and 5,925,803. The patents were filed pre-1995 and thus have a term that lasts for 17 years from the patent issuance. The first two 17-year terms have expired, but the third could last until 2016 – except for the terminal disclaimer discussed below.

In 2010, an anonymous third party requestor (TPR) filed a reexamination request for the ‘803 patent. Last June, the USPTO confirmed the patentability of the challenged claims. However, the USPTO agreed with the TPR that a broadly worded terminal disclaimer filed in the parent ‘571 application meant that the’803 patent also expired in 2005. Thus, it doesn’t matter whether the claims are valid over the prior art because they are expired. Because the patent had expired, the USPTO refused to allow Harvard to add additional claims to the patent during reexamination.

In the terminal disclaimer filed in the parent case, the patentee agreed to disclaim the term of the parent patent as well as any patent claiming benefit of the patent under 35 U.S.C. §120. Since the ‘803 patent claims priority to the parent under §120, that disclaimer seems to be effective to limit the ‘803’s term as well. However, the disclaimer was never particularly filed in the ‘803 case (only its parent). Further, nothing in the record indicates that the examiner acknowledged receipt of the disclaimer in the parent case and there is no evidence that the terminal disclaimer fee was actually paid. The examiner did, however, remove the double patenting rejection had been blocking the issuance of the parent case and the filed terminal disclaimer authorized payment of the fee.

In the reexamination, the USPTO gave full support the examiner’s decision that the terminal disclaimer limited the ‘803 patent term – finding that Harvard could have corrected the problems with the filing back when the patents were pending but that it is too late now.

It is only now that the non-standard disclaimer language of the terminal disclaimer filed in 1989 has an effect … [that] the patent owner [is] attempting to argue that ther terminal disclaimer had no legal effect. . . . [B]ecaues patent owner did not timely seek withdrawal of the terminal disclaimer from the parent patent as per the procedures in MPEP [at the time], patent owner cannot seek now to nullify the effect of the terminal disclaimer after the issued patent has reached its expiry date.

In response, Harvard has now filed a civil action in the Eastern District of Virginia asking the court to overturn the USPTO decision. For now, however, it appears that the mice are finally free although their title (OncoMouse) is still a registered trademark owned by DuPont.

Telegram for the Federal Circuit: Electronic Case Filing Is Now Available

By Andrew Dhuey

“I’m following your case at the Federal Circuit – would you please send me a PDF of the parties’ briefs? Thanks in advance.” Patent litigators and prosecutors throughout the nation have been sending emails with this request for years, relying on the kindness of strangers for a professional courtesy. They do this because there is usually no easy way for them to obtain Federal Circuit briefs. The reason for that is the Court – charged by Congress to resolve the most important technology disputes in the world – still does not have electronic case filing (ECF).

In the federal judiciary, ECF is now operational in all appellate and district courts, save two: the Supreme Court and the Federal Circuit. Some Supreme Court justices are comically unfamiliar with such cutting-edge technologies as texting and email, though the Chief Justice probably does know more about pagers than the typical 20-something today. Fortunately, the technological backwardness of the Supreme Court’s case filing system is of no consequence – you can get just about any petition or merits stage brief you might want from SCOTUSblog, the American Bar Association and other online sources.

At the Federal Circuit, however, odds are you have only three options when seeking a brief or motion: i) pay several hundred dollars for a messenger to go to the Court and copy it, ii) pay Westlaw or Lexis a similar amount to download it (if available) or iii) ask an attorney in the case for the favor of a PDF (tip: ask really nicely).

The Court’s long delay in implementing ECF is puzzling. In case after case, Federal Circuit judges and their law clerks demonstrate their ability to learn and analyze extremely complex technologies in widely disparate fields. Why then is the Court lagging behind every regional circuit court and all district courts in the nation when it comes to adopting technology in its own operations?

ECF is not a newcomer to the federal courts. District courts started using ECF in 2002; circuit courts in 2005. On June 28, 2007, then Chief Judge Michel announced that the Court hoped to utilize ECF in fall 2007. Since then, nothing. Well, slightly more than nothing. This message appears on Federal Circuit electronic docket sheets: “The following documents, filed after 8/13/07, are available for download: official caption, entry of appearance, certificate of interest. No other case documents are available electronically.” I can scarcely imagine any documents of less interest to others than captions, entries of appearances and certificates of interest, yet these are the ones you can obtain electronically.

The Federal Circuit’s lack of ECF is not merely a hassle for lawyers in search of briefs and motions. Scores of non-lawyers, including inventors, veterans, federal employees and vaccine-case claimants, represent themselves in Federal Circuit appeals. That rather challenging task would be less daunting if they had easy access to well-written appellate briefs of experienced counsel.

Federal Circuit judges, please consider this an amicus filing from someone who has great respect for you and the Court – it is time to roll out ECF.

A First Look at USPTO Petitions Data

Earlier this week, one of my excellent patent law students (Lawrence Higgins) plowed through 64 sets of recent USPTO petitions decisions. The decisions came from a group of randomly selected patent applications with application serial numbers 11/900,000 –  11/999,999. The vast majority of petitions were granted (78%) although about 20% were first rejected before being later granted after the applicant provided further information or argument. 

I categorized the petitions into groups.  The largest group consisted of petitions requesting revival of an abandoned application. 25% of the petitions were revival petitions with 94% being granted. 22% of the petitions involved the applicant attempting to establish a priority date. The next largest category of petitions were petitions to make special. In this group, all nine of the petitions to make special were based on the inventor's age (over 65 years) and all were granted. The remaining petitions involved a hodgepodge collection of issues such as attorney requests to withdraw representation, patent term adjustment corrections, refunds, corrections, and republication.  None of the petitions in our sample challenged a restriction requirement.

  • I'm working on a more complete study of the petitions decisions data.
  • Petitions are Available for Download Here


USPTO Petitions

[Updated] The USPTO has made a large set of its petitions decisions available via Google's Bulk Patent Download center. [Link]

I was browsing through them this morning and came across a lonely petition decision that was sent from the Office of Petitions on July 20, 2010.  The decision is a response to a petition filed July 16, 2006 requesting that the USPTO overturn a thirteen-way restriction requirement.   The meat of the decision reads as follows:

A Notice of Abandonment was mailed March 4, 2009. As the application is now abandoned, the petition to overturn the decision of the Technology Center Director is DISMISSED as moot.

As the quote suggests, this particular case involved a petition to the PTO Director following an unsuccessful petition to the Tech Center Director.  Although the first petition was decided fairly quickly, the timing of petitions decisions and the associated fees continue to make it somewhat impractical to challenge restriction requirements. 

Another recent petition decision was in Application No. 12/266,477 where the PTO granted Quantumsphere's petition to make the application “special” based upon the application's association with “green technologies.” Designating the application as “special” speeds the prosecution process.  The application claims a lower-energy method of synthesizing ammonia.