The Harvard Oncomouse Patent Reexamination, Over Before it Started?

The Harvard Oncomouse Patent Reexamination, Over Before it Started?

The Harvard "oncomouse" in case you have never heard of it, is a strange little laboratory rodent genetically modified at Harvard to grow a human ear on its back. (I've spared you the actual photographs that are readily available on the web).

As no surprise this bit of genetic engineering was patented back in the 80's and early 90's (5,925,803 as well as other related patents) setting off quite a debate as to the metes and bounds of patentable subject matter, not only in the U.S., but around the globe. More recently, the '803 Patent has been subject to a request for ex parte reexamination.

Of particular interest in this request for reexamination is the assertion by the Third Party that the patent is expired. Of course, anyone familiar with patent reexamination realizes that an expired patent may be subject to reexamination if it is still enforceable (i.e., within a 6 year window of expiration). The real surprise here is that the Third Party argued that the '803 Patent expired based on an overly broad terminal disclaimer of a parent application. In the filing, the Third Party requested comment from the USPTO on their terminal disclaimer theory; the USPTO surprisingly obliged. In doing so, the USPTO not only ended the reexamination before it started, but may have invited a lawsuit on the Office best fought by industry. 

The Third Party's disclaimer theory argues that despite the fact that the '803 Patent appears entitled to a 2016 expiration (based upon the issue date), that a terminal disclaimer filed in a parent application (U.S. Patent No. 5,087,571) disclaims any term beyond mid 2011. This is because the disclaimer in the parent patent included language stating that the patentee agreed to disclaim term of the parent patent and any patent claiming benefit of the parent under 35 U.S.C. § 120 (which would include the '803 Patent).

In the Third Party request, SNQs are presented relative to prior art, including proposed art rejections under 35 U.S.C 103, and obviousness-type double patenting rejections. Tellingly, in the request the Third Party specifically asked that the Office weigh in on the disclaimer theory, even if the SNQs were denied. In other words, the Office was asked for an advisory opinion (the issue need not be addressed relative to reach the merits of the proposed SNQs). So, by addressing the issue favorably to the Third Party, the Office effectively lopped 5 years of patent term off the '803 Patent.

In this regard, the reexamination Order noted:

Consequently, due to the Terminal Disclaimer filed in parent application Serial No. 07/171,806 (the parent '571 patent), U.S. Patent No. 5,925,803, which is currently under reexamination and which claims benefit and is entitled to the filing date of the grandparent patent, also expired on 04/12/2005. (emphasis in original)

With ex parte reexamination pendency at roughly 24 months (longer in most cases involving appeals), and the Office taking the position that the patent expired 4/12/2005, the 6 year deadline of enforceability will arrive long before this reexamination even gets to appeal, let alone exhausts all appeals. So, as it stands the USPTO will lose jurisdiction over the dispute within the year.

You won't need an extra ear on your back to hear the outcry to come on this issue. 

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