USPTO issues non-final Actions Closing Prosecution for 6,833,252 and 7,214,536 patents

Mar 8 2010

Precision BioSciences, Inc., today announced that the United States Patent and Trademark Office (PTO) has issued non-final Actions Closing Prosecution in the reexamination proceedings for U.S. Pat. Nos. 6,833,252 (“the ‘252 patent”) and 7,214,536 (“the ‘536 patent”) that are owned by the Institut Pasteur and the Universite Pierre et Marie Cure (UPMC), and licensed to Cellectis, SA (ALCLS). For the second time, the PTO has rejected all claims under consideration as lacking novelty and/or as obvious in view of a variety of references, including many that were not provided to the patent examiners during prosecution by the patent applicants.

“Although we believe that Precision BioSciences’ DNE technology clearly doesn’t infringe the claims of either the ‘252 patent or the ‘536 patent, Precision made the decision to seek reexamination of these patents because Cellectis has asserted two related patents against us”

“Although we believe that Precision BioSciences’ DNE technology clearly doesn’t infringe the claims of either the ‘252 patent or the ‘536 patent, Precision made the decision to seek reexamination of these patents because Cellectis has asserted two related patents against us,” said Matthew Kane, CEO of Precision BioSciences. Cellectis has asserted U.S. Pat. Nos. 6,610,545 (“the ‘545 patent”) and 7,309,605 (“the ‘605 patent”), which are related to the ‘252 patent and the ‘536 patent, in litigation against Precision. Precision also requested reexamination of the ‘545 and ‘605 patents, and those reexamination proceedings are on-going.

“After Cellectis instigated this litigation, Precision identified a variety of prior art references which, we believe, anticipate or render obvious the claims of many of the Institut Pasteur/UPMC patents licensed by Cellectis, including the ‘252 patent, the ‘536 patent, the ‘545 patent, the ‘605 patent, and others,” stated Derek Jantz, VP of Scientific Development at Precision. “We are pleased to see that the examiners at the PTO, in issuing the various rejections of the claims of the ‘252 patent and the ‘536 patent under reexamination, seem to have agreed, and we expect that the same prior art references will lead to similar rejections of all of the claims of the ‘545 patent and the ‘605 patent asserted in the litigation,” Dr. Jantz continued.

Precision BioSciences is evaluating whether to request the reexamination of additional U.S. patents owned or licensed by Cellectis.

The patent owners have the right to file comments on these Actions Closing Prosecution in an effort to persuade the patent examiners to reconsider their positions. If the examiners maintain the rejections, the patent owners can appeal the decisions to the PTO’s Board of Patent Appeals and Interferences. Interested parties can find copies of the PTO’s Actions Closing Prosecution at: www.precisionbiosciences.com/news.

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