Sep 29 2009
Precision BioSciences, Inc. today announced that the United States Patent and Trademark Office (PTO) has granted Precision’s requests for inter partes reexamination of U.S. Patent Nos. 6,610,545 (the ‘545 patent) and 7,309,605 (the ‘605 patent), which Cellectis SA (Alternext: ALCLS) has asserted against Precision in litigation. The two patents are owned by the Institut Pasteur and the Universite Pierre et Marie Curie, and licensed to Cellectis. Precision BioSciences previously announced that the PTO is reexamining related U.S. Patent Nos. 7,214,536 and 6,833,252.
Precision filed requests seeking inter partes reexamination of the ‘545 patent and the ‘605 patent on the grounds that the claims of these patents are obvious in view of a variety of references which had not been previously considered by the patent examiners. On September 17, 2009, the PTO granted Precision’s requests and issued initial rejections of all 21 claims for which Precision requested reexamination in the ‘545 patent, and all 17 claims of the ‘605 patent.
In initially rejecting the claims of the ‘605 patent, the PTO stated:
The term, "Group I intron encoded endonuclease" or "said endonuclease" is interpreted to mean a naturally-occurring enzyme encoded by a Group I intron that creates a site-directed double-stranded break at or near the insertion site for that intron, and to include the naturally-occurring enzymes ... but not to include genetically-engineered endonucleases with altered specificities or activities. (emphasis added.)
The PTO went on to state:
“Group I intron encoded endonuclease site" is interpreted to mean a segment of DNA having a sequence that is recognized by a Group I intron encoded endonuclease and, as shown in Figure 6 of the ‘605 patent, that includes the insertion site for the corresponding Group I intron. (emphasis added.)
The enzymes which are the basis of Precision’s Directed Nuclease Editor™ technology are genetically-engineered endonucleases with altered specificities. The recognition sites of these rationally-designed enzymes do not include the intron insertion site of a naturally-occurring Group I intron encoded endonuclease.
According to data released by the PTO for all inter partes reexaminations which had been concluded since the procedure was first introduced in 1999 through March 31, 2009, 73% of the reexaminations resulted in all issued claims being canceled, and 93% of the reexaminations resulted in at least some issued claims being canceled or amended.
Precision BioSciences is now evaluating whether or not it will request that the remaining patents in this family be reexamined.