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Geron and Novocell set for stem cell tech patent battle

By Charlotte Lobuono, 21-Dec-2009

Related topics: Excipients, raw materials and intermediates, Ingredients

Geron says the USPTO appeals board granted a request to declare “interference” between a patent application owned by the firm and one issued to Novocell in March.

The patent filings describe technology used for the differentiation of human embryonic stem cells into the precursors of different types of endoderm cells, including pancreatic islet cells.

Geron is developing hESC-derived pancreatic islet cells for the treatment of diabetes, as part of its pipeline of hESC-derived therapies.

In a statement, David Earp, Geron’s chief patent counsel, said: “The subject matter claimed in the ‘876 patent was disclosed in a Geron patent application filed more than two years before the corresponding series of Novocell applications. We filed the request for interference because we believe that Geron is entitled to claim this subject matter.

Geron believes that interference claim for the ‘876 patent will also call into question the validity of other patents issued to Novocell from the same patent application family. Geron’s patent portfolio comprises patents claiming the most widely used method for producing islet cells from hESCs.

In addition, Geron is exclusively licensed for the production and therapeutic use of hESC-derived islet cells under the foundational hESC patents assigned to the Wisconsin Alumni Research Foundation.

Geron has pioneered the development of hESC technologies over the last decade, and we have been diligent to protect that technology and the underlying investment, by building a dominant patent position,” Earp said.

For its part, Novocell Director of Intellectual Property and Corporate Development Liz Bui told Outsourcing-pharma.com that, “Novocell believes that it alone invented the technology covered by the '876 patent and that we have been monitoring the case and Geron's request for an interference.

She added that: “Novocell has retained counsel and stands ready to defend its rights to the patent. We're confident that we can succeed on the merits.

In the case of a patent interference, the US Patent and Trademark Office (USPTO) determines which party invented the technology first and awards the patent to that party. The party with the earliest patent application filing date is designated the “senior party” and those with later filing dates are “junior parties.”

In this case, Geron has been designated the senior party and Novocell has been designated the junior party. As such, Novoell must bear the burden of proof, and demonstrate that it invented the technology in the ‘876 patent before Geron.