Patent goon squad

The general idea would be for scientists (who might be so inclined) to actively keep an eye on new patent applications in their fields of interest in order to push back on overly-broad patents. I think there would be an interest in this sort of thing for synthetic biology at a minimum, but the feasibility is an open question :)

Discuss here

• Sign up for the Synthetic Biology Patent RSS feed !
  • The search terms were kindly provided by Paul Oldham.
  • Jason R. Kelly:In my experience is has a pretty good signal to noise ratio for catching SB patents.

Contentious Patent Applications

It might be an idea to post important patents and allow people to add prior art that they might know about.

Does anybody have suggestions for categories for synthetic biology patents? The patents that are posted now seem to fit into 'devices' and 'assembly'. If we could organize the patents into particular technology categories, we could then create an internal hierarchy of patents based on the breadth of the claims.

Jason R. Kelly: Well, we could just get a laundry list together, some are probably sub-categories of others. Also, we probably care about certain categories more than others.

• Devices - one or more biological parts that accomplish a specific function
• Chassis - organisms for operating synthetic systems
• Assembly - how to put parts together
• Synthesis - how to synthesize DNA de novo
• Part collections/libraries - the idea of collecting (and QCing?) parts
• others?

Part libraries

• US #6277632
• US #6495318

Synthesis

This seems to be difficult one...we need to define some search terms to find what we are looking for. Actually, identifying useful search parameters for all categories is a good idea

These are the patents over which Codon Devices Inc. is suing Blue Heron Biotechnology (links are press releases from each respective company).

• US #5459039
• US #5556750
• US #5679522
• US #5702894
• US #5750335

Assembly

• US patent application 2006/281113 date May 18, 2005
  • Some of the claims seem obvious to me such as using linker oligos to assemble parts together

Invitrogen Gateway cloning system

This is potentially an example of a cloning standard that is under proprietary control. However, Invitrogen has an open licensing policy (have not read the details).

According to Invitrogen, Gateway® Cloning Products and their use are the subject of one or more of U.S. Patent Nos. 5,888,732, 6,143,557, 6,171,861, 6,270,969, 6,277,608, and 6,720,140 and/or other pending U.S. and foreign patent applications owned by Invitrogen Corporation.

Devices

• Molecular Computing Elements Patent

• Genetic Inverter Patent Application

Prior Art (pre June 5,2003)

Weiss & Knight 1999 - see fig 1, a biological inverter based on gene expression.

Chassis

• Competent bacteria

Open questions

Please add/edit -- or answer!

• How hard is it to filter patents via existing search tools (e.g. into sub-fields)?
• What is the number of 'biology' patent applications submitted each day?
• Can you get access to the applications early enough in the process to effect the outcome?
• Is it better to go after existing patents (life the EFF patent busting project) or patent applications?
  • Response from EFF lawyer:

It's very hard to attack patent applications because there
is no formal opposition process and they often change during the
prosecution process so as to be a bit of a moving target.  Also,
we've chosen to go after patents that are actively being used to
attack; when they are at the application stage, it is harder to
predict which ones will be the worst and worth going after.  Good
luck in your effects, though.

• Is a law background is required to actually evaluate a patent?
  • Tutorial on prior art from the Peer To Patent Project
• Others?

Resources

• Paul Oldham's suggested search terms for synthetic biology patents (Patent Lens RSS feed)
• http://dnapatents.georgetown.edu/
• Memo on viability of patent review squad (word doc) - This is a great evaluation of the viability of this project by Hanna Breetz from MIT's Program on Emerging Technologies (PoET).
• Patent search tools meeting
• http://www.ip.com/prior-art-database/defensive-publishing.jsp -- "Defensive publishing", where companies publish patentable things that they don't want to patent, but that they don't want anyone else to patent either.

Background

• The US patent office sounds like it might be interested in this sort of community input (Washington Post).
  • The Peer to Patent Project homepage
  • more info
  • USPTO information about the program
• EFF Patent Busting Project - interesting parallel in the internet patent arena. EFF is digging up prior art on existing patents and then pursuing legal action for re-examination.
• Wikipatents - similar to the peer to patent process.

Participants

• Hanna Breetz, Technology and Policy Program at MIT
• Jason Kelly, BE at MIT
• Royd, CAMBIA