Replies to post #6504 on Biotech Values

[Biowatch]

Re: GTCB’s nuclear-transfer IP

Do you know how often GTCB uses nuclear transfer versus microinjection? The latter is now almost "old fashioned" in the scheme of things biotech, but has been used successfully for a long time. Also, would they have to pay royalties to anyone when they use microinjection?

And of course, try to find out how much they have to pay in royalties. (e.g., what percent)

>> [This USPTO decision affects GTCB indirectly because GTCB licensed its nuclear-transfer technology from Advanced Cell Technology (ACT). Thus, GTCB may now owe license fees/royalties to GERN instead of to ACT.

Importantly, the USPTO action does not affect GTCB’s lead, drug, ATryn, because the goat herd for ATryn was created using microinjection rather than nuclear transfer.] <<

[DewDiligence]

Advanced Cell Technology Appeals Nuclear Transfer Patent Interference Decision

[Not exactly a surprising development.]

http://biz.yahoo.com/bw/050110/105422_1.html

>>
WORCESTER, Mass.--(BUSINESS WIRE)--Jan. 10, 2005--Advanced Cell Technology, Inc. (ACT) announced today the intent to appeal the decision of the Board of Patent Appeals and Interference, interference number 104,746, between itself and Geron Corporation (Nasdaq:GERN - News) to the U.S. District Court.

"Advanced Cell Technology is focused on the human medical applications of stem cell technology. This interference relates to patent claims for non-human animal cloning and therefore does not relate to our core product focus. However, we have numerous commercial partners utilizing ACT's patented animal cloning technology and we intend to defend the patents vigorously," said William M. Caldwell, CEO of Advanced Cell Technology. "We believe our intellectual property relating to the human medical application of nuclear transfer, not part of the 104,746 interference, is strong."

Advanced Cell Technology disputes Geron Corporation's claim that ACT's patent at issue in the interference has been invalidated. An issued US patent is entitled to a presumption of validity until a final ruling. A final ruling in this case has not been made.

"It has always been clear to us that the animal cloning patent licensed to Geron from the Roslin Institute and that licensed to ACT from the University of Massachusetts describe distinct technologies and that the patent claims do not interfere," said Michael D. West, ACT's President and Chief Scientific Officer. "We believe that the original decision by the US patent office to issue this patent was the correct one and that the patent will remain valid as a result of the appeal process."

Advanced Cell Technology is a biotechnology company focused on discovering and commercializing advances in stem cell technology for application in regenerative medicine.
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[DewDiligence]

Re: GTCB IP (from Yahoo board)

>>
Nuclear-transfer and microinjection IP:
by: DewDiligence
07/19/05 08:31 am
Msg: 21335 of 21335

>>Dew, are you at all worried about this issue? "The U.S. Patent Office has entered a judgment in an interference proceeding in favor of Geron Corporation on all counts as to the priority of Geron’s patents over ACT’s U.S. Patent No. 5,945,577, which we license. ACT has also announced that it intends to appeal that decision in a proceeding in U.S. District Court."<<

GTCB’s position is that it is unencumbered by the patent dispute between ACT and GERN. Whether IP royalties for nuclear transfer are paid to ACT or to GERN does not affect GTCB’s profits or losses to any material degree. Moreover, according to Tom Newberry, nuclear-transfer IP might end up falling into the public domain if ACT’s patents were ultimately ruled invalid, and this would eliminate GTCB’s royalty obligations for products employing nuclear transfer.

ATryn is not affected whatsoever by any of the above because the ATryn herd was produced uses microinjection rather than nuclear transfer.

[Posted as a reply to: Msg 21328 by aslan2772]
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Please see the thread at #msg-5027284 for additional background.