•     By Christopher P. Singer

    Uspto_seal_2
    In a December 21, 2007 press release, the U.S. Patent and Trademark Office announced
    that the U.S. and Japan Patent Offices will implement the pilot Patent Prosecution
    Highway (PPH) program on a full-time basis, effective January 4, 2008.  The pilot program demonstrated the potential
    that the full-time program has for reducing application backlogs, eliminating
    redundant work, and examining applications more efficiently, according to USPTO Director Jon Dudas.

    Japanese_patent_office_jpo_seal
    The PPH gives an applicant the option of requesting a fast
    track examination of a JP or US application upon receiving a
    ruling from the JPO or the USPTO that at least one claim in the corresponding US or JP application is patentable.  The
    prosecution in the second office is based on the patentable results from the
    first office, and thus, applicants can expect to obtain patents in both offices
    faster.  Updated requirements for
    participation in the USPTO-JPO PPH will be published here.

  •     By Kevin E. Noonan

    Genentech
    Ophthalmologists and Genentech have forged a compromise over the availability of Genentech’s anticancer drug, Avastin®, for use in treating neovascular or "wet" age-related macular degeneration (AMD).

    Avastin_2
    The controversy arose when Genentech decided to ban compounding pharmacies from reformulating Avastin® (bevacizumab, a monoclonal antibody) to be used for treating AMD (see "Genentech Acts to Halt Off-label Use of Avastin® for Age-related Macular Degeneration").  This use of Avastin® is an off-label use; Genentech makes a related drug, Lucentis® (ranibizumab injection), that has been approved for AMD treatment.  The choice of the off-label use is related to the cost differential between the drugs:  Avastin® treatment costs from $20-60 per dose, while Lucentis® treatments cost $2,000/dose.  The cost differential is due to both differences in costs of the drugs per se (Avastin® is priced at only $600/vial) and because Avastin® is injected into the eye at such small doses (0.1cc) that each vial can deliver 30 doses ($20/dose).  This cost differential has even greater significance because neither drug is a cure for AMD, a condition that if untreated leads inexorably to blindness, so that patients require maintenance doses substantially for the remainder of their lives.

    Lucentis
    The decision outraged the ophthalmological community and their patients, who mounted a broad-based campaign against it.  These efforts were led by the American Association of Ophthalmologists (AAO) and the American Society of Retinal Specialists (ASRS), and included protests directed to (and at) Genentech, development of contingency plans for supplying the diluted Avastin® when the ban went into effect, and political efforts.  These efforts had an effect:  although Genentech initially defended their decision (see "Genentech CEO Defends Differential Cost for Avastin®/Lucentis® Treatment of Macular Degeneration"), more recently the company has responded in a more conciliatory way to the outrage, protests, and threats of political and legal action from its customers and their physicians (see "Age-related Macular Degeneration Patients Get a (Limited) Reprieve").  For example, the company expanded its dialog with ophthalmologists, explaining the actions of the Food and Drug Administration that prompted (in part) its decision, as well as rolling back the proposed implementation date of the ban from November 30th until the end of this year.  FDA concerns that were disclosed by Genentech to these professional societies related to sterility and packaging of the reformulated Avastin®, as well as concerns that Avastin® had not been "designed, manufactured or approved" for the off-label use.

    Despite this belated attempt to recapture its clients’ goodwill, more recently Senator Herb Kohl (D-WI) made it known that the economic consequences of the ban on the federal health care budget (estimated at $1 to 3 billion per year) had gotten his attention.  In a letter to Kerry Weems, Acting Administrator of the Centers for Medicare and Medicaid Services, the Senator stated that saving taxpayer dollars was of the "utmost importance" to him, and implied that he would take further action if he and the Senate’s Special Committee of Aging did not receive satisfactory answers (see "Genentech Beset with Avastin® Woes").

    Now, Genentech has substantially relented on its threat, and has agreed to a compromise that should permit ophthalmologists to have access to Avastin® for off-label use.  Compounding pharmacies will still not be permitted to purchase Avastin® directly; however, physicians will be permitted to make such purchases and direct the shipments to the compounding pharmacy of their choice for dilution to the concentration used for AMD treatments.  While the ban itself is little changed from what Genentech originally proposed, creation of this "loophole" will maintain access to the drug to AMD patients at the current, substantially-reduced prices over Lucentis®.

    American_society_of_retina_speciali
    This is good news for AMD patients.  It is also good news for Genentech, which has further distanced itself from any negative consequences of off-label use.  Since the company is not itself selling Avastin® to compounding pharmacies, it should receive some measure of insulation from FDA action based on purported deficiencies attendant upon using Avastin® to treat AMD.  The company has also further distanced itself from liability concerns, since it is no longer directly involved in selling the drug to compounding pharmacies (and, indeed, the compromise involves shipments to such pharmacies on a physician’s behalf not by Genentech itself but by "authorized distributors").  A further benefit for Genentech is that the AAO and ASRS agreed to increased efforts to "develop additional programs that will more efficiently facilitate and expedite patient access and physician reimbursement for Lucentis®," according to a joint press release on the societies’ and company’s websites.

    The compromise may not be such good news for ophthalmologists themselves.  These doctors have moved more squarely into whatever medical malpractice and product-liability crosshairs may exist relating to off-label use of Avastin® for treating AMD.  In addition, as the press release notes, the compromise may not be able to be implemented in the same way in each state, due to differences in different states’ laws.  The burden of determining whether there are any impediments in a state (and the liability for improperly implementing the compromise) will be borne by the physician, not Genentech.  This includes, presumably, the costs in deciding whether any such impediment exists:  the press release "recommend[s] that physicians check with their legal advisors when considering this new option."

    National_eye_institute_2
    Also missing from the announcement is whether Genentech will participate in, support or even provide Avastin® and Lucentis® for the clinical trial underway by the National Eye Institute, aimed at answering the scientific question of whether there is any difference in clinical outcome over use of the two drugs.  Genentech has not been inclined to support this study in the past (see "Lower Doses of Genentech’s Avastin® Effective in Treating Lung Cancer").

    For additional information on this topic, please see:

  • Holiday_stars
    The authors and contributors of Patent Docs wish their readers a Happy Holidays.  Publication of Patent Docs will resume on December 26th.

  •     By Donald Zuhn

    Senchmb
    On Tuesday, Senators Patrick Leahy (D-VT), the Chairman of the Senate Judiciary Committee, and Orrin Hatch (R-UT) engaged in a brief but enlightening discussion on the Senate floor regarding the state of Senate’s patent reform bill.  Senator Leahy, the sponsor of the Senate patent reform bill (S.1145), opened the discussion by noting that since the bill was introduced in the Senate last April, "a great many changes were made to improve and perfect the bill," including "changes on the key issues of enhancing patent quality, clarifying rules on infringement and compensation of inventors, and improving the ability of the Patent and Trademark Office to do its job well."

    Senator Hatch responded by observing that "[U.S. patent] law has not seen a major revision since 1952," and that "[m]uch has changed since then."  Senator Hatch added that while "[t]he courts have struggled valiantly to interpret the law in ways that make sense in light of change, . . . that piecemeal process has left many areas unclear and some areas of the law out of balance."

    The two Senators agreed that "now is the time to enact patent reform," with Senator Leahy requesting that the Senate bill be taken up "as early in the new year as possible."  The Senator recognized that a number of Judiciary Committee members had "expressed a strong view that the bill should be further perfected before it comes to a vote on the floor of the Senate," and committed to working closely with these members to make further improvements to the bill.

    Hatch_orrin
    Acknowledging that he was one of the Committee members seeking further improvements, Senator Hatch (at left) singled out the bill’s treatment of inequitable conduct as one of the areas in which the Senate bill required work.  Noting that Senator Leahy had done a good job "initiating" the process of develop an effective solution to "the problem of the inequitable conduct defense" during Judiciary Committee deliberations in July, Senator Hatch argued that "more must be done to change the use of this defense as an unfair litigation tactic."  The Senator contended that with further refinements to the bill’s inequitable conduct provision (as well as to the bill’s provisions on damages, post-grant review, and venue), the Senate bill would "garner even greater support."  Reflecting on his work on the Drug Price Competition and Patent Restoration Act (the Hatch-Waxman Act), Senator Hatch argued that the final Senate bill must "promote and protect a structure that fosters a strong and vibrant environment for innovators," or suffer the consequences of "fewer and fewer drugs."

    Leahy_patrick
    Senator Leahy (at right) concluded his remarks by stating that he intended "to seek and hear the views of any and all parties and to include all interested staff and Senators," while asserting that "[t]his will continue to be an open and deliberative process, with the goal of favorable Senate action as early as the floor schedule permits."  Senator Hatch closed the discussion by noting that while "some would like to play political football with this bill to pursue other agenda items," the Senate bill was "far too important and should not fall prey to such partisan tactics from either side."

    For additional information on this topic, please see:

  •     By Donald Zuhn

    It took a bit longer than many members of the patent bar expected, but the new continuation and claims rules, which were preliminarily enjoined on October 31st by Judge James Cacheris of the U.S. District Court for the Eastern District of Virginia, and the patent reform bills passed by the House and before the Senate, are finally starting to draw wider attention from those in the biotech and pharma community.  One example of the industry’s increased focus on the new rules is a report by Amy Coombs in this month’s issue of the journal Nature Biotechnology.

    Cover
    Although the article does a good job of introducing the new rules and patent reform issues to a non-legal audience, perhaps not surprisingly, it takes a few missteps along the way.  For example, in discussing the limit on continuations resulting from the benefit claims limits of new Rule 1.78(d) (see Patent Docs report), the article states that "[t]he main concern for drug developers is that limiting continuations will make it more difficult for them to establish utility," explaining that applicants may require more than two continuations in order to buy more time to, among other things, "collect additional clinical data."  However, as any biotech prosecutor who has had to overcome a utility rejection knows, if an application does not contain an assertion of a specific, substantial, and credible utility (or readily apparent well-established utility), post-filed data establishing patentable utility will be of very little use in overcoming the utility rejection.

    Glaxosmithkline_gsk
    In addition, by contending that the new rules, if implemented, will limit total claims to 25, independent claims to five, and the total number of continuations per application family to two, the article glosses over the U.S. Patent and Trademark’s strongest argument against a permanent injunction:  namely, that there are no hard and fast limits on claims or continuations.  By so describing the impact of the new rules, the article may provide those in the biotech and pharma industry with too rosy a picture of the final outcome in the consolidated cases of SmithKline Beecham Corp. v. Dudas and Tafas v. Dudas.  (While experienced patent prosecutors understand that the mechanisms provided by the new rules for securing additional claims and continuations – ESDs and petitions with a showing – are illusory, these mechanisms nevertheless allow the Patent Office to argue with a straight face that the new rules do not limit the number of claims an applicant can present or the number of continuations that an applicant can file.)

    Notwithstanding the missteps described above, the article provides some useful and interesting information.  With respect to the value of continuation applications in the biotech and pharma industry, the article notes that 41% of drug patents that issued between 1995 and 1999 were based on continuations, whereas only 22% of patents that issued in the mechanical engineering arts in this same time period were similarly based on continuations.  In addition, the article states that about 30% of the 467,000 applications filed in 2007 were continuations.

    The article also poses a question that has likely been on the tongues of all biotech and pharma prosecutors since the new rules were published on August 21, 2007:  what took the industry so long to realize that the new rules would create serious problems?  Outside of crediting the information technology industry’s lobbying efforts, however, the article does not offer any new insights into the biotech and pharma industry’s reluctance – until GSK entered the fray in October – to mount a strong attack on the new rules or, thus far, the patent reform bills passed by the House and before the Senate.

  •     By Kevin E. Noonan

    Keith Olbermann, former ESPN co-anchor of SportsCenter and for the past few years the host of MSNBC’s Countdown, has noted the correlation between bad political news for the Bush administration and heightening of terror threat warnings (see "The Nexus of Politics and Terror," Countdown, 10/12/2005).  While not in a position to allege a functional connection between politics and the politics of fear, the coincidences mentioned by Mr. Olbermann are intriguing, to say the least.

    Washington_post_2
    The power of our fear of terrorism to drive out (or at least suppress) rational decision-making has arisen again, this time concerning recent advances in synthetic biology.  An article in The Washington Post yesterday (see "Synthetic DNA on the Brink of Yielding New Life Forms") warns us that "safety concerns also loom large" with respect to this technology.  Some of these concerns are the traditional ones that have been with us from the earliest days of biotechnology; Jeremy Rifkin first came to national notice for spearheading passage by the Cambridge City Council of a (fortunately, short-lived) ban on recombinant DNA at the university laboratories in that city (see "Promotion Versus Precaution: The Evolution of Biotechnology Policy in the United States").  More recently, work to isolate the influenza virus from frozen corpses who died of the "Spanish flu" of 1918 (that killed millions worldwide) raised similar concerns, as has work with Ebola and smallpox.  Less well known is work to resurrect endogenous human retroviruses.  None of these efforts was without valid scientific validation.  The influenza work was aimed at identifying whether there was a specific configuration of the hemaglutinnin (H) and neuraminidase (N) gene alleles that made that flu particularly virulent, as a way of predicting (and perhaps addressing, whether by prophylaxis or treatment) the more recent Asian "bird flu" that is threatening to become another pandemic.  And the human retrovirus work is important for understanding why 8% of the human genomic DNA sequenced by the Human Genome Project encodes deactivated embodiments of ancient viruses believed to be important in human evolution (for example, the mammalian placenta; see "Darwin’s Surprise").

    Similar practical aims underlie the efforts to develop synthetic bacteria, notably by J. Craig Venter and others (see "Patenting Life (Really)" and "Patenting Life (Part II)").  As mentioned in The Washington Post article, the hope is that such synthetic bacteria will be useful for making chemical compounds, drugs, and biofuels more cheaply.  In many ways, this is an extension of the technology used to make human erythropoietin in hamster cells, or human growth hormone or insulin in bacterial cells.  The synthetic bacteria are expected to be superior, because their genomes will lack the plethora of native genes encoding other, non-essential proteins, and thus the synthetic machinery of the cell will be more focused on making the desired product.

    Etc_group
    These efforts are opposed by groups, like the Canadian Environment, Technology and Concentration, and up until now the argument has been over proprietary rights to synthetic biology technology.  These concerns are voiced by Dr. Tom Knight and Dr. Drew Eady of MIT, who believe that efforts by Dr. Venter’s group and others are an improper attempt to monopolize the field.  (While eminent scientists, it is important to note that these arguments are not, at present, supported by any legal principle or precedent.)  Jim Thomas and the ETC group are the first to play the terrorism card with regard to synthetic biology.  According to a recent report from the group, "[u]ltimately synthetic biology means cheaper and widely accessible tools to build bioweapons, virulent pathogens and artificial organisms that could pose grave threats to people and the planet."  According to the ETC report, "[t]he danger is not just bio-terror but bio-error," nicely combining the traditional Frankenstein (or, more recently, Franken-food) fears of technology outstripping human capacity to restrain it with the terror of terrorism.  ETC disdains the efforts made by all synthetic biologists to engineer these bacteria against errant introduction into the environment, asserting that "we’ve heard that before" when confronted with the enfeebled nature of these synthetic organisms.  After all, according to Jim Thomas, ETC’s program manager, genes engineered into crops have been found in other plants.  Ignored by this analogy is that recombinant organisms, by definition, are merely the native plant or animal that has been genetically-engineered to contain an additional gene encoding a desired gene product, and that under these circumstances the likelihood that they may "escape" into the environment is difficult to reduce to zero.  The synthetic organisms, in contrast, can be (and according to Dr. Venter, have been), so genetically crippled that they have multiple metabolic deficiencies that should prevent growth outside the laboratory environment.

    While the possibility that this technology could get out of hand is remote, the fact that it is not impossible makes it even more important that the threat not be exaggerated, and that policymakers and the public not be influenced by appeals to irrational fears.  In truth, bioweaponry exists in Tom Clancy novels (see "Rainbow Six" and "Executive Orders"), not in the real world, and the history of attempts to produce "weaponized" anthrax (an evolved, hardy, native bacterial species with a robust animal reservoir) and the failures of those efforts (see "Germs: Biological Weapons and America’s Secret War") make it clear that producing any bioweapon, much less one that uses a far-from-robust synthetic bacteria, are at best far-fetched.  Even more so is the provocative image of "’bio hackers’" working in garages" downloading genetic programs and making them into novel life forms attributed to unnamed "experts" in the article.  Calls for government regulation, while appealing, also are not particularly comforting.  After all, it was governments (including our own) that were at the forefront of developing biological weapons, and recent attempts to prevent or preclude specific lines of research by governmental fiat (such Keasling_3
    as the Bush administration’s ban on federal funding of stem cell research) have been disastrous.  Any similar ban for synthetic organisms is just as likely to be unavailing and to merely hurt innovation.  "The cat is out of the bag," according to Jay Keasling (at left), chief of synthetic biology at the University of California at Berkeley (although it is likely that Mr. Thomas and those who agree with him would prefer that we think that "the genie is out of the bottle").

    What is needed is what occurred at the first blush of biotechnology research:  an agreement, much like the Asilomar conference agreement (Berg et al., 1975, "Summary Statement of the Asilomar Conference on Recombinant DNA Molecules," Proc. Nat. Acad. Sci. U.S.A. 72:1981-84), to a set of standards in the industry for ensuring the highest levels of safety so that the benefits of the technology can be developed.  This is admittedly more difficult today, where so many of the participants are either commercial concerns or are funded by them.  Other industries have developed standards, however, so it is not impossible to do so even amongst intellectual property owners.  Given the diversity of the kinds of synthetic organisms that are being envisioned, and the impracticality of pursuing, much less expecting and even less likely obtaining, an overarching proprietary position in the current patenting climate, cooperation may turn out to be the economically-sensible position.  This approach would also permit government to play a role in regulating, rather than banning, specific applications of synthetic biology technology.

        For additional information on this topic, please see:

  •     By Christopher P. Singer

    Otsuka_logo
    In a December 17, 2007 press release, Otsuka Pharmaceutical Co., Ltd. and PDL BioPharma, Inc. announced a finalized agreement in which Otsuka acquires intellectual property related assets to IV Busulfex® (busulfan) from PDL.  Under the agreement, Otsuka obtains rights to trademarks, patents, and other Busulfex-related assets, in return for a $200 million cash payment.  IV Busulfex was approved by the FDA in 1999 and is an oncologic drug used in conditioning regimen prior to allogeneic hematopoietic progenitor cell transplantation (blood/bone marrow transplantation).  The drug is marketed in over forty countries with sales of just under $30 million from September 2006 to September 2007 (an increase of nearly 30% from the prior year).  According to the press release, IV Busulfex fits in well with Otsuka’s current efforts to develop Pdl_biopharma_logo
    oncology drugs in the United States, including drugs for treatment of severe pain related to cancer (phase II), oral mucositis, and leukemia (each in phase I).  This transaction is expected to close in the first quarter of 2008.

  •     By Kevin E. Noonan

    Eastern_district_of_virginia_seal
    Judge James C. Cacheris of the U.S. District Court for the Eastern
    District of Virginia today extended until December 27th the deadline
    for the parties to file summary judgment motions regarding the merits
    of plaintiffs’ complaint seeking a permanent injunction against
    implementation of the misguided "new rules" relating to continuation
    and claims limitation practices.  The deadline for amicus filings (for the amici who have already had their motions for leave to file an amicus brief granted) was also extended until the 27th.  No reason was given for the extension,
    which the court issued sua sponte, although it may be due to the on-going dispute over discovery in the case.

    Glaxosmithkline_gsk
    To date, motions for leave to file an amicus brief have been filed by
    the following entities, where the filing date and any limitation in the
    scope of the motion is indicated in parentheses: Pharmaceutical
    Research and Manufacturers of America (October 26); the Biotechnology
    Industry Organization (October 29): Elan Pharmceuticals, Inc. (October
    29 and December 6); Monsanto Co. (November 26); Intellectual Property
    Institute of William Mitchell College of Law (November 27); and the
    American Intellectual Property Lawyers Association (relating to the
    retroactive application of the new rules to pending applications;
    December 11).  Additional parties wishing to file amicus briefs should contact SMoore@KellyDrye.com, JDesmarais@Kirkland.com, and Lauren.Wetzler@usdoj.com and ask consent to file the brief and seek extension of time to December 27, and then file a motion for leave to file as amicus and for extension of time with the Court.

    At least a first decision is expected some time in the spring in this case.

    For additional information on this topic, please see:

  •     By Jason Derry —

    Affymetrix
    Affymetrix Inc. has announced today that it will acquire USB Corporation for approximately $75 million.  USB develops and sells molecular biology products, biochemical reagents, and DNA sequencing reagents, including enzymes and kits for molecular biology research applications.  Affymetrix is a leader in the field of microarray technology for genetic analysis.  The Usb
    products and technology acquired by Affymetrix will enable it to accelerate development of new genetic analysis products, and add value to its available product portfolio.

    Jason Derry, Ph.D., who graduated with honors from DePaul University
    College of Law, is a molecular biologist and founding author of Patent Docs.

  •     By Donald Zuhn

    Last week, we received two messages from a reader (aka: "Patent Warrior") regarding an article published in China Intellectual Property News on November 7, 2007, and the response to this article by U.S. Representatives Michael Michaud (D-ME) and Donald Manzullo (R-IL).  The article, which was only recently translated (a certified copy of the translation, as well as of the original article, can be obtained here), was written by Yongshun Cheng and Li Lin.

    7
    Mr. Cheng (at right), who is a former Senior Judge and Deputy Presiding Judge of the Intellectual Property Division of Beijing High People’s Court, and Mr. Lin spend the majority of their article outlining a number of the reforms contained in the House of Representatives’ bill.  However, the authors conclude the piece by discussing the bill’s impact, arguing that "the bill will weaken the right of patentees greatly, increase their burden, and reduce the remedies for infringement."  According to Mr. Cheng and Mr. Lin, the passage of the House bill, in the face of strong opposition, resulted from the lobbying efforts of "some of America’s largest and most influential companies," which desire "a weaker patent system, or one that benefits companies that do not rely on patent protection to obtain market dominance."

    In concurring with an opinion that has been previously expressed in this space (see "Patent ‘Reform’ Bill Passes House of Representatives"), the authors contend that reforming the U.S. patent system to accommodate IT inventions would yield an "unfair outcome" when that system is applied to biotechnological inventions, since biotech companies depend more heavily on patents to protect their inventions and IT companies frequently combine a larger number of patented features in a single product.  Mr. Cheng and Mr. Lin assert that "patent reform should not only benefit a small group, but promote the patent protection as a whole."

    Ultimately, Mr. Cheng and Mr. Lin conclude that the House bill "is friendlier to the infringers than to the patentees in general as it will make [U.S.] patent[s] less reliable, easier to be challenged and cheaper to be infringed."  In particular, the authors see the House bill as creating an environment in which Chinese companies, and companies from other developing countries, will find it easier to enter the U.S. market as the fear of facing patent infringement actions or large damages awards lessens.  Interestingly, Mr. Cheng and Mr. Lin conclude their article by noting that the House bill "conflicts with the attitude of the US Government of pressuring the Chinese Government to strengthen the protection on IP rights."

    Logo
    According to the Beijing Intellectual Property Institute (BIPI) website, Mr. Cheng is the current director of the Institute, and in 2003, was nominated by Managing Intellectual Property as one of the fifty most influential IP figures worldwide and one of the top three IP figures in China.

    Michaud_michael
    In a second e-mail, Patent Warrior alerted us to a letter that U.S. Representatives Michael Michaud (at right) and Donald Manzullo (at left) sent on Friday to other Members of Congress.  Representatives Michaud and Manzullo noted in their letter that during debate on the House bill, several Representatives argued that "the bill would weaken U.S. patent protections and  thereby encourage developing nations to do likewise."  The Representatives now point Manzullo_donald_5
    to the China Intellectual Property News article as providing support for this position.  Representatives Michaud and Manzullo conclude their letter by noting that the Senate bill could be voted on in early 2008, and urging other Members of the House "to carefully consider [the bill’s] implications for international patent rights and impact on U.S. competitiveness" if a conference report on patent reform returns to the House for consideration.

    For additional information on this topic, please see: