By Mark Chael —

On November 22, 2006, the Board of Patent Appeals and
Interferences (BPAI) at the U.S. Patent and Trademark Office
decided a patent interference in favor of Prof. J. Gregor Sutcliffe and
colleagues at the Scripps Research Institute related to hypocretins.

Hypocretins are a recently discovered family of
neuropeptide hormones comprising Hcrt 1 and Hcrt 2, derived from a common
precursor protein.  They are synthesized
by neurons located in the hypothalamus and may act in the CNS as
neurotransmitters, including possible roles in nutritional homeostasis and
narcolepsy, among others.

The interference was originally requested on December 12,
2000, in U.S. Patent App. No. 09/735,138 titled
"Hypothalamus-Specific Polypeptides," however the USPTO and the
applicants had to come to terms on allowable claims before the interference
could be declared, a process which took about three years.

Previously, on December 14, 1999, Drs. Bergsma and
Yanagisawa, the junior parties in the interference, were awarded U.S. Patent
No. 6,001,963, which is titled "Ligands of the Neuropeptide Receptor
HFGAN72."  That patent is
assigned on its face to SmithKline Beecham Corporation and the University of
Texas Southwestern Medical Center at Dallas.

In the interference, Drs. Bergsma and Yanagisawa filed a
concession of priority, thereby prompting the Board to rule in favor of Dr.
Sutcliffe and colleagues.  It was also
noted by the Board that a settlement agreement existed between the parties and
the Board directed the parties' attention to 35 U.S.C. § 135(c) and 37 C.F.R. §
41.205(a).  The Board ordered that the
inventors were not entitled to claims 1 and 3 of the '963 patent, which
corresponded to the only count in the interference (Count 2).

Bergsma v. Sutcliffe (B.P.A.I. 2006)
Panel: Administrative Patent Judges Schafer, Medley, and Moore
Opinion by Administrate Patent Judge Moore