US 5077399

As mentioned earlier, the U.S. patent in this family has a very narrow scope given the broad claims of the PGS patents. Claims are limited to a phosphinothricin resistance gene isolated from the genus Alcaligenes (Proteobacteria: beta subdivision). The peptide sequence of this enzyme is 33% identical to the homolog isolated from Streptomyces, and 53% similar in terms of conservative amino acid exchanges.

Transgenic plants containing the gene or other applications of the gene expressed in microorganisms (e.g. the treatment of phosphinothricin-contaminated sewage) are not included in the granted claims of this patent, although these possibilities are mentioned in the specifications.

The dominant claim in this patent has the form of a “product by process” claim, i.e. it follows the basic form "a product X obtained by carrying out process Y". The question here is whether obtaining the same product using a different process would constitute infringement. In the United States this issue is yet to be considered at the Federal Circuit level. Meanwhile, some district courts are treating the sale or use of product X not produced by process Y as infringement. In the ongoing discussion by the courts, two issues are separated, i.e. determination of patentability and assessment of infringement. Patentability is dependent on novelty of the product. Inclusion of the process in the claims is allowed to facilitate the definition of the product (also contemplated by the European Patent Convention). Existing case law supports the notion that the scope was limited by the process stated. If this becomes the guiding principle, then, taking the above patent as an example, performing PCR on non-selected bacteria would not constitute an infringement of the patent.

The information contained in this page was believed to be correct at the time it was collated. New patents and patent applications, altered status of patents, and case law may have resulted in changes in the landscape. CAMBIA makes no warranty that it is correct or up to date at this time and accepts no liability for any use that might be made of it. Corrections or updates to the information are welcome. Please send an email to info@bios.net.

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