Genentech Tries to Calm Cabilly Worries

Genentech (DNA) said the U.S. Patent and Trademark Office issued an initial action on Sept. 13 rejecting the claims of what's known as the "Cabilly" patent, but the biotech company added that it remains valid and enforceable while a re-examination is pending.

The move was "a routine and expected next step" in the process, Genentech said in a press release issued early Wednesday. The company plans to respond to the decision within 60 days of its mailing date.

The patent office action came about after another party asked for a re-examination of the patent in May. Genentech said the final resolution of the re-examination might take anywhere from several months to several years.

Genentech, based in South San Francisco, Calif., licenses the patent to other companies and collects royalties from those agreements. Examples of Genentech products that use the technology covered in the patent include the breast cancer treatment Herceptin and the non-Hodgkin's lymphoma drug Rituxan.

The patent in the matter was first filed in 1983, when Celltech filed an application in the U.K. that dealt with the methods used to produce antibodies by recombinant DNA technology. Celltech submitted a similar filing in the U.S. for what came to be called the "Boss" patent, after Michael Boss and other inventors.

That same year, Genentech filed an application on a similar patent, known as the Cabilly patent for inventor Shmuel Cabilly and others.

Celltech and Genentech eventually became involved in a dispute that lasted for several years but has now been settled. As a result of that agreement, Genentech received a new patent in 2001 that isn't set to expire until 2018. Prior to the agreement, the old Cabilly patent and the Boss patent, both granted in 1989, were due to expire in 2006.