Genentech Loses Round in Patent Dispute

February 28, 2008
Patricia Van Arnum
ePT--the Electronic Newsletter of Pharmaceutical Technology

The US Patent and Trademark Office rejected the patentability of claims of a patent by Genentech that related to certain methods used to make antibodies and antibody fragments by recombinant DNA.

South San Francisco, CA (Feb. 25)-The US Patent and Trademark Office (USPTO) rejected the patentability of claims of a patent by Genentech that related to certain methods used to make antibodies and antibody fragments by recombinant DNA.

Genentech said in a company press release that it received notification from USPTO that a rejection was issued and mailed to Genentech over claims of its Cabilly patent (US Patent No. 6,331,415) (1). Genentech says it has not received the USPTO’s action but anticipates that it will file a response upon review of the document. Genentech says that it will appeal the decision if the rejection is maintained.

The patent remains valid and enforceable through the appeals process. The company estimates that the entire appeals process may take approximately one to two years or longer.

Genentech uses the technology described in the patent to make many of its own products and has confidential license agreements with several companies on the patent. Genentech and the City of Hope, a California-based biomedical research center receive revenue from such license agreements, including royalties on sales of products that are covered by one or more claims of the patent.

References

1. S. Cabilly et al., “Methods of Producing Immunoglobulins, Vectors and Transformed Host Cells for Use Therein,” US Patent No. 6,331,415, Dec. 18, 2001, accessible here.